Philip Morris Products, S.A.

Patent Trials and Appeals Board

Nov 9, 2021

IPR2021-00826 (P.T.A.B. Nov. 9, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: November 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

R.J. REYNOLDS VAPOR COMPANY,
Petitioner,
v.
PHILIP MORRIS PRODUCTS S.A.,
Patent Owner.

IPR2021-00826
Patent 9,814,265 B2

Before GRACE KARAFFA OBERMANN, JAMES J. MAYBERRY, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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Patent 9,814,265 B2
2
I. INTRODUCTION
A. Background and Summary
R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) seeking an inter partes review of claims 1, 3–5, 8, and 17 (the
“challenged claims”) of U.S. Patent No. 9,814,265 B2 (Ex. 1001, “the
’265 Patent”). Philip Morris Products, S.A. (“Patent Owner”) filed a
Preliminary Response. Paper 8 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter
partes review may not be instituted “unless . . . the information presented in
the petition . . . and any response . . . shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a). After considering
the parties’ arguments and evidence, we determine that the reasonable
likelihood standard is not met. Accordingly, we deny institution of inter
partes review.
B. Related Matters
The parties indicate that the ’265 Patent is being asserted in the
following district court action: RAI Strategic Holdings, Inc. v. Altria Client
Services LLC, No. 1:20-cv-00393-LO-TCB (E.D. Va. Filed May 28, 2020).
Pet. 72; Paper 4, 1.
C. The ’265 Patent (Ex. 1001)
The ’265 Patent is titled, “Permeable electric thermal resistor foil for
vaporizing fluids from single-use mouthpieces with vaporizer membranes”
and relates to an electronic cigarette or e-cigarette. Ex. 1001, code (54),
1:14–16, 4:36–43, 5:38–42.
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The ’265 Patent describes “a vaporizer device for vaporizing
substances containing active and/or aroma materials.” Ex. 1001, 5:47–50.
The vaporizer device comprises: (1) a heating device comprising a
permeable thermal resistor foil configured as a dual coil and/or sinuous line;
and (2) a permeable vaporizer membrane in large-area contact with the
thermal resistor. Id. at 4:51–54, 5:50–56. According to the ’265 Patent, the
large contact area between the thermal resistor foil and the vaporizer
membrane “achieves not only a very high vaporizing efficiency but also the
highest possible degree of vaporization uniformity.” Id. at 5:59–64.
Figure 1 of the ’265 Patent is reproduced below.

Figure 1 shows two variants of a heating device that includes thermal
resistor 1, where the heating device is produced from a single piece of metal
foil. Ex. 1001, 7:21–25. In Figure 1a, thermal resistor 1 takes the form of
dual coil 101, and in Figure 1b, thermal resistor 1 takes the form of sinuous
line 102. Id. at 7:26–28.
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Figure 2 of the ’265 Patent is reproduced below.

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Figure 2 shows a vaporizer device, including thermal resistor 1, insulation
foil 2, mouthpiece 3, and voltage source 4, among other structures.
Ex. 1001, 7:29–41, 8:56–9:20 (Table 1). In Figure 2a, mouthpiece 3 is
shown in an inactive storage condition with voltage source 4 not yet
attached, and in Figure 2b, mouthpiece 3 is shown in an activated condition
of use with voltage source 4 attached. Id. at 7:42–47.
D. Illustrative Claim
Petitioner challenges claims 1, 3–5, 8, and 17 of the ’265 Patent. Pet.
1, 17. Claims 1 and 17 are independent claim. Claim 1 is reproduced
below.
1. A vaporizer device for vaporizing a substance containing at
least one active and/or aroma material, comprising:
a mouthpiece, having at least one fluid inlet and at least
one fluid outlet; and
a heating device, configured to be connected to the
mouthpiece, comprising:
a thermal resistor comprising a metallic foil or a thin
sheet in a shape of a dual coil and/or sinuous line, having two
ends and dimensions substantially the same as a cross-section
of a cigarette or a cigar,
wherein interspaces of the shape are configured to
allow a flow of fluid therethrough;
at least one contact tab including a first contact tab and
a second contact tab being connected to respective opposed
ends of the dual coil and/or sinuous line of the thermal
resistor, the first contact tab and the second contact tab not
being in direct contact with each other; and
at least one vaporizer membrane disposed in contact
with the thermal resistor and being permeable to the flow of
fluid, and which is wetted or can be wetted with the substance
containing the at least one active and/or aroma material,
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wherein the thermal resistor and the at least one
vaporizer membrane are arranged orthogonally or at an angle
to a direction of the flow of fluid in the mouthpiece.
Ex. 1001, 9:23–50.
Claim 17 is identical to claim 1, except for minor differences in the
final “wherein” clause. Ex. 1001, 12:20–23; see Pet. 50–51 (side-by-side
comparison of “wherein” clauses of claims 1 and 17).
E. Asserted Grounds and Evidence
Petitioner asserts the following grounds of unpatentability under
35 U.S.C. § 103(a):1
Claims Challenged References
1, 4, 5, 8, 17 Alarcon,2 Rabin3
1, 3, 5, 17 Alarcon, Harwig4
1, 3, 5, 17 Alarcon, Johnson5
Pet. 17. Petitioner relies on the Declaration of Jeffrey C. Suhling, Ph.D. to
support its challenges. Ex. 1010.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the ’265 Patent has an effective filing date before this date,
the pre-AIA version of § 103 applies. Ex. 1001, code (22).
2 Ex. 1002, Alarcon et al., US 9,439,455 B2, issued Sept. 13, 2016.
3 Ex. 1003, Rabin et al., US 7,920, 777 B2, issued Apr. 5, 2011.
4 Ex. 1004, Harwig et al., US 6,909,840 B2, issued June 21, 2005.
5 Ex. 1005, Johnson, US 2012/0193343 A1, published Aug. 2, 2012.
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II. ANALYSIS
A. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
(requiring a petition for inter partes review to identify how the challenged
claim is to be construed and where each element of the claim is found in the
prior art patents or printed publications relied upon).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) when presented, objective evidence of
nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
by employing “mere conclusory statements,” but “must instead articulate
specific reasoning, based on evidence of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Relying on Dr. Suhling’s testimony, Petitioner contends that a person
of ordinary skill in the art (“POSA”) would have had a bachelor of science
degree in mechanical engineering, electrical engineering, materials science,
physics, or have completed a similar technical program or coursework, along
with one to two years of experience designing, developing, or working with
materials and structures used in electronic products incorporating thermal
resistors or other types of heaters. Pet. 15 (citing Ex. 1010 ¶ 97). Petitioner
asserts that a higher level of education could substitute for a lesser amount of
experience, and vice versa. Id.
Patent Owner does not dispute Petitioner’s contention regarding the
level of ordinary skill in the art. Prelim. Resp. 7.
We find that Petitioner’s definition of a POSA is consistent with the
scope and content of the ’265 Patent and the asserted prior art, and we apply
this definition for purposes of this Decision.
C. Claim Construction
In an inter partes review, we apply the same claim construction
standard as would be used by a district court to construe a claim in a civil
action involving the validity or infringement of a patent. 37 C.F.R.
§ 42.100(b). Under that standard, claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
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skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. Id.; Phillips
v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
For purposes of this proceeding, the parties do not dispute the
meaning of any claim term. See Pet. 17 (asserting that no terms require
express construction for purposes of this proceeding and that, in the related
litigation, the Court held that no claim terms required construction); Prelim.
Resp. 7 (asserting that, “[f]or purposes of its Preliminary Response [ ],
Patent Owner accepts Petitioner’s position that no terms require
construction”). Accordingly, we do not need to resolve any claim
construction disputes for purposes of this Decision. See Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
terms need be construed that are in controversy, and only to the extent
necessary to resolve the controversy.”); see also Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of inter partes review).
D. Petitioner’s First Obviousness Ground: Alarcon and Rabin
Petitioner contends that claims 1, 4, 5, 8, and 17 are unpatentable as
obvious in view of Alarcon and Rabin. Pet. 29–51. Patent Owner opposes
this challenge. Prelim. Resp. 7–21. We provide an overview of the
references before turning to the parties’ contentions and our analysis.
1. Alarcon (Ex. 1002)
Alarcon discloses an electronic smoking device (ESD) having an
elongated shape similar to a conventional cigarette. Ex. 1002, codes (54),
(57); 1:15–18, 5:11–14, Fig. 2A.
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Figure 1A of Alarcon is reproduced below.

Alarcon Figure 1A shows ESD 100, including air inlet 120, air flow
path 122, vaporizing chamber 124, smoke outlet 126, container 140,
dispensing control device 141, and heater 146. Ex. 1002, 3:49–51, 5:18–21.
Heater 146 is a solid state heater and is located in vaporizing chamber 124.
Id. at 5:39–41. Fig. 5. Container 140 contains smoking liquid and is
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connected to vaporizing chamber 124. Id. at 5:41–42. Dispensing control
device 141 is connected to container 140 and controls the flow of smoking
liquid from container 140 to vaporizing chamber 124. Id. at 5:48–50,
13:12–16.
According to Alarcon, dispensing control device 141 may be a micro
liquid screen, such as a micro-etched screen or a micromesh screen having a
micro aperture pattern that keeps smoking liquid from seeping out when
ESD 100 is not in use and allows smoking liquid to flow through when the
user sucks on ESD 100. Ex. 1002, 5:58–6:8, Figs. 3, 4.
Alarcon discloses that dispensing control device 141 and heater 146
are “located adjacent to each other with a very small gap therebetween, in
order to efficiently vaporize the smoking liquid.” Ex. 1002, 6:26–30, Fig. 6.
When a user’s action for smoking is detected, heater 146 is turned on,
smoking liquid is dispensed from container 140, and smoking liquid is
mixed with air from flow path 122 and vaporized by heat from heater 146
within vaporizing chamber 124. Id. at 6:45–58. “The resultant vapor (i.e.,
smoke) is pulled out from [ ] vaporizing chamber 144 via smoke outlet 126
for the user’s oral inhalation.” Id. at 6:58–61, Fig. 1A.
2. Rabin (Ex. 1003)
Rabin discloses a “capillary force vaporizer for use in vaporizing
liquids and emitting pressurized vapors.” Ex. 1003, codes (54), (57);
1:10–11; 2:17–20. According to Rabin, a capillary force vaporizer is a
device for generating pressurized vapor from unpressurized liquid and for
releasing vapor at a velocity greater than zero. Id. at 4:8–19; 6:28–38.
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Figure 3 of Rabin is reproduced below.

Rabin Figure 3 shows capillary force vaporizer 300 including porous
member 102 and heater component 104. Ex. 1003, 5:58–66. In Figure 3,
“liquid enters the device at liquid feed surface 302, and vapor is ejected from
the device at one or more orifices 116.” Id.
Rabin discloses that the porous member functions both as a vaporizer
component and an insulation layer to shield heat from reaching the liquid
feed to the device. Ex. 1003, 2:65–3:1, 3:22–24. According to Rabin, the
porous member is a plate or tube that allows liquid to enter on one surface
and vapor to be generated and released from another surface and is made of
low thermal conductivity ceramic, such as a sintered alumina or zirconia
powder compact. Id. at 3:32–46.
Rabin discloses that heater component 104 is “in direct heat-
exchanging contact with porous member 102.” Ex. 1003, 6:23–25.
According to Rabin, “[v]aporization of liquid takes place within a region of
porous member 102 at or near the interface of porous member 102 and
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heater 104.” Id. at 6:26–28. Rabin discloses that heater component 104
comprises an electric resistance heater comprised of a metal wire or etched
metal foil in a coiled or zig-zag configuration. Id. at 6:39–40, 7:59–64.
3. Independent claim 1
Claim element 1b recites: “a heating device, configured to be
connected to the mouthpiece, comprising: a thermal resistor comprising a
metallic foil or a thin sheet in a shape of a dual coil and/or sinuous line,
having two ends and dimensions substantially the same as a cross-section of
a cigarette or a cigar, wherein interspaces of the shape are configured to
allow a flow of fluid therethrough.” Pet. 38; Ex. 1001, 9:30–33.
Addressing claim element 1b, Petitioner contends that Alarcon’s
heater 146 is “a heating device configured to be connected to the
mouthpiece.” Pet. 38–39 (citing shown in Ex. 1002, Figs. 2A, 2B, 5).
Petitioner contends that Alarcon’s heater 146 is “in a shape of a . . . sinuous
line” and has “two ends,” “dimensions substantially the same as the cross-
section of a cigarette,” and “interspaces . . . configured to allow a flow of
fluid therethrough.”6 Id. 39 (citing Ex. 1002, Figs. 1A, 2A, 2B, 5).
Petitioner contends that, in view of Alarcon and Rabin, it would have been

6 Petitioner does not show sufficiently that Alarcon’s solid state heater 146
has “interspaces . . . configured to allow a flow of fluid therethrough,” as
recited in claim element 1b. See Ex. 1002, Fig 1A (showing air flowing
around, not through heater 146); id. at Fig. 5 (showing solid state heater 146
with no interspaces). In any event, Petitioner does not appear to rely on this
contention, and instead asserts that it would have been obvious to replace
Alarcon’s solid state heater with one that allows fluid to flow through the
heater. Pet. 33–34, 40–41. We address Petitioner’s obviousness contention
below.
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obvious for the thermal resistor to comprise a metallic foil. Id. at 40 (citing
Ex. 1003, 6:23–25, 6:39–40, 7:59–64, Figs. 5A, 5B).
Claim element 1d recites: “at least one vaporizer membrane disposed
in contact with the thermal resistor and being permeable to the flow of fluid,
and which is wetted or can be wetted with the substance containing the at
least one active and/or aroma material.” Pet. 43; Ex. 1001, 9:42–46.
Addressing claim element 1d, Petitioner contends that Alarcon’s
dispensing control device 141 is a “vaporizer membrane” that is “permeable
to the flow of fluid, and which is wetted or can be wetted with the substance
containing the at least one active and/or aroma material.” Pet. 43–44 (citing
Ex. 1002, 5:18–21, 5:48–50, 5:58–6:5, Figs. 1A, 3, 4). Petitioner contends
that it would have been obvious to dispose Alarcon’s dispensing control
device 141 in contact with Alarcon’s heater 146 in view of Rabin.
Pet. 32–33, 45–46 (citing Ex. 1003, 3:32–37, 7:44–58, 6:23–25, 9:13–14,
Fig. 3).7
Patent Owner argues that a POSA would not have been motivated to
look to Rabin to improve Alarcon and would not have been motivated to
modify Alarcon to bring its heater in contact with the dispensing control
device or to use the Rabin heater. Prelim. Resp. 14–21.
After considering both parties’ arguments and evidence, we agree
with Patent Owner that Petitioner has not adequately established a non-
hindsight biased rationale for combining the teachings of Alarcon and Rabin.
Alarcon discloses an electronic cigarette that generates a vapor for
oral inhalation by a user when he sucks on the device. Ex. 1002, 1:20–25,

7 Petitioner’s contention that Alarcon discloses the “in contact with”
limitation of claim element 1d (Pet. 45) is addressed below in Section II.F.2.
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5:39–39, 5:65–6:5, 6:45–61. Rabin, on the other hand, relates to a capillary
force vaporizer “designed to vaporize liquids and release the resulting vapor
under pressure” for “applications in which a pressurized vapor stream is
desired.” Ex. 1003, 1:10–22. Such devices produce vapor that exits the
device “as a high velocity jet.” Id. at 1:31–37. Rabin’s capillary force
vaporizer generates pressurized vapor from unpressurized liquid and releases
vapor at a velocity greater than zero. Id. at 4:8–19; 6:28–38. Rabin
discloses exemplary embodiments that use a 200 watt power supply and a
“maximum exterior surface temperature at top of device” of 69 degrees
Celsius—over 150 degrees Fahrenheit. Ex. 1003, 15:53-55, 16:23–25
(Table 1).
Petitioner’s rationale for combining Alarcon and Rabin does not
account adequately for these fundamental differences between Alarcon’s
electronic cigarette and Rabin’s capillary force vaporizer. Petitioner
contends that Rabin is in the same field as the ’265 Patent—vaporization of
liquid using a heating element—and addresses the same problem as the ’265
Patent—providing efficient vaporization. Pet. 32. In our view, however,
Petitioner’s characterization of the field of the ’265 Patent and the problem
addressed by the ’265 Patent are overly broad. The ’265 Patent states that
the invention relates “to a device for optimized smoke-free inhalation of
nicotine and/or additives with electronic cigarettes.” Ex. 1001, 1:14–16.
The problems, drawbacks, and disadvantages of the prior art discussed in the
’265 Patent all relate to electronic cigarettes. Id. at 1:40–4:32. According to
the ’265 Patent, the object of the invention is to provide an electronic
cigarette that “guarantees vaporization of nicotine and/or additives without
reusable components that come into contact with the fluid to be vaporized”
and to achieve “a substantial reduction of costs and ecological damage by
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reducing the amount of material used and by optimizing machine
processability.” Id. at 4:36–43.
Petitioner asserts that “[i]t would have been obvious to utilize
techniques for efficient vaporization disclosed in Rabin in an electronic
cigarette, such as Alarcon’s ESD 100.” Pet. 32. Petitioner does not,
however, address the pressure and velocity of the vapor generated by
Rabin’s capillary force vaporizer. Nor does Petitioner adequately address
the differences between generating a vapor when a user sucks on an
electronic cigarette to pull vapor (i.e., smoke) out of a vaporizing chamber
for inhalation, as disclosed in Alarcon, and generating a pressurized vapor
that is released at a velocity greater than zero, as disclosed in Rabin.
Ex. 1002, 1:20–25, 6:45–61; Ex. 1003, 4:8–19; 6:28–38.
Even if a POSA would have considered Rabin as relevant to an
electronic cigarette, however, Petitioner has not shown sufficiently that it
would have been obvious in view of Rabin to arrange Alarcon’s heater 146
“in direct heat-exchanging contact with” Alarcon’s dispensing control
device 141. Pet. 33 (quoting Ex. 1003, 6:23–25). Petitioner contends that
its proposed modification would have been motivated by a desire for
“efficient vaporization.” Pet. 32–33. Petitioner does not, however, make a
threshold showing that placing Alarcon’s heater 146 in contact with
Alarcon’s dispensing control device 141 would have made Alarcon’s
vaporization process more efficient. Instead, Petitioner simply directs us to
comparative advantages disclosed in Rabin, without explaining adequately
how or why those advantages, relevant to Rabin’s capillary force vaporizer,
would have led a POSA to modify Alarcon’s electronic cigarette, which
relies on the user’s own sucking force and an internal heater to generate a
vapor. Rabin discloses improvements to a different type of vaporizer than
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Alarcon. Petitioner ignores these differences and does not show sufficiently
that Alarcon would be improved in the same way as taught by Rabin.
First, Petitioner asserts that “Rabin teaches that it is advantageous to
apply heat directly to porous member 102 because ‘there is minimal heating
of unnecessary thermal mass.’” Pet. 33 (quoting Ex. 1003, 7:44–49).
Petitioner does not, however, show that Rabin’s teaching is applicable to
Alarcon’s electronic cigarette. We agree with Patent Owner, on this record,
that it is not. Prelim. Resp. 17–18.
Petitioner selectively quotes from the following disclosure in Rabin:
Another advantage of the embodiment of the present
invention illustrated at 300 is that heat is applied directly to
porous member 102. The result is that there is minimal heating
of unnecessary thermal mass, with the concomitant effect that
response times of the device are improved as compared with
prior art capillary pumps.
Ex. 1003, 7:44–49 (emphasis added). Rabin’s “thermal mass” advantage
relied upon by Petitioner (Pet. 33) is “as compared with prior art capillary
pumps.” Ex. 1003, 7:44–49. Rabin explains that, in prior art capillary pump
devices, “heat was conducted from outside the device via the device housing
to the vaporizer component.” Ex. 1003, 7:23–27; see also id. at 1:66–2:9
(discussing prior art capillary force vaporizers “having an excess mass in
contact with the vaporization member that must be heated or cooled before a
change in the vaporization rate can take place”). According to Rabin, these
devices are improved by situating the heater “in heat-exchange contact with
the vaporization member” and not in direct contact with the housing. Id.
at 7:27–29. Rabin discloses that, with this arrangement, the housing “no
longer needs to act as a heat transfer component,” and fins or posts that
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served to conduct heat from an upper surface of prior art capillary pumps to
the porous member are “eliminated entirely.” Id. at 7:23–25, 7:30–33.
Petitioner does not attempt to show that Rabin’s disclosed advantage
is applicable to Alarcon’s electronic cigarette. Instead, Petitioner selectively
quotes from Rabin’s disclosure of “minimal heating of unnecessary thermal
mass” and asserts that it would have been obvious to arrange Alarcon’s
heater 146 “in direct heat-exchanging contact with” Alarcon’s dispensing
control device 141. Pet. 33 (quoting Ex. 1003, 6:23–25). That lack of
explanation appears on this record as a classic exercise of impermissible
hindsight reconstruction.
Petitioner does not identify any “unnecessary thermal mass” in
Alarcon’s electronic cigarette. In contrast to the prior art capillary force
vaporizers Rabin seeks to improve, Alarcon’s electronic cigarette includes
no housing or other heat transfer component between heater 146 and
dispensing control device 141. Alarcon teaches that heater 146 is positioned
in close proximity to dispensing control device 141, which results in
efficient vaporization of the dispensed liquid. Ex. 1002, 6:26–30 (“[T]he
dispensing control device 141 and the heater 146 may be located adjacent to
each other with a very small gap therebetween, in order to efficiently
vaporize the smoking liquid.”); id. at 6:54–58 (“When the smoking liquid is
dispensed from the container 140 and the heater 146 is turned on, the
smoking liquid may be mixed with the air from the flow path 122 and
vaporized by the heat from the heater 146 within the vaporizing
chamber 124.”). Thus, Petitioner does not show sufficiently that Rabin’s
disclosed advantage of “minimal heating of unnecessary thermal mass”
would have led a POSA to modify Alarcon’s electronic cigarette.
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Next, Petitioner asserts that “Rabin teaches that it is advantageous to
apply heat directly to porous member 102 . . . because ‘heater 104 is in more
intimate contact with . . . the liquid held within porous member 102,’ the
power required is reduced, which ‘improves heater reliability and lifetime,
and increases overall energy efficiency.’” Pet. 33 (quoting Ex. 1003,
7:49–57). We agree with Patent Owner that Petitioner has not shown
sufficiently that Rabin’s disclosure of increased energy efficiency would
have prompted a POSA to modify Alarcon’s electronic cigarette. Prelim.
Resp. 19–20.
Petitioner selectively quotes from the following disclosure in Rabin:
Another advantage of the embodiment shown at 300 is that heater
104 is in more intimate contact with the heat sink, that is, the
liquid held within porous member 102 by capillary force. The
result is that the maximum heater temperature reached during
operation of device 300 at a given power density, that is, for a
given output flow rate, is reduced as compared to prior art
capillary pumps. This improves heater reliability and lifetime,
and increases overall energy efficiency of device 300. See the
comparative Examples and the data in Table 1, below.
Ex. 1003, 7:49–58 (emphasis added). Rabin’s “energy efficiency”
advantage relied upon by Petitioner (Pet. 33) is “as compared to prior art
capillary pumps” in which “heat was conducted from outside the device via
the device housing to the vaporizer component.” Ex. 1003, 7:23–27,
7:49–58; see also id. at 1:66–2:9 (discussing prior art capillary force
vaporizers having “limited energy efficiency” and “undesirable energy loss
to the surrounding environment” as “a consequence of having to conduct
heat from a heat source external to the device and far from the vaporization
zone”). The examples Rabin relies upon to show an increase in energy
efficiency compare Rabin’s capillary force vaporizer with a prior art
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capillary pump in which “[a]n identical heater was used to provide heat
externally to the comparative prior art device.” Ex. 1003, 7:57–58,
15:51–52; see also id. at 15:17–16:35 (Example 1 and Table 1).
Petitioner does not explain how Rabin’s teaching about increased
energy efficiency as compared to prior art capillary pumps would have led a
POSA to modify Alarcon’s electronic cigarette. Rabin teaches that
positioning a heater in “intimate contact with . . . the liquid held within [a]
porous member” results in increased energy efficiency, as compared with a
prior art capillary force vaporizer having an external heater. Ex. 1003,
1:66–2:9, 7:49–58, 15:17–16:35. Alarcon’s heater 146 is not external—it is
located within vaporization chamber 124. Ex. 1002, 5:39–41, Fig. 1A. Here
again, we detect the taint of impermissible hindsight reconstruction.
Moreover, Alarcon teaches that efficient vaporization is achieved by
locating heater 146 adjacent to dispensing control device 141 “with a very
small gap therebetween” and by controlling the amount of liquid dispensed
to vaporizing chamber 124 and heated by heater 146. Ex. 1002, 6:26–30,
Fig. 6; see also id. at 5:48–50 (“dispensing control device 141 may be
connected to the container 140 in order to control flow of the smoking liquid
from the container 140 to the vaporizing chamber 124”); id. at 6:23–26 (“an
active dispensing device 142 may be connected to the container 140 in order
to consistently dispense substantially the same amount of smoking liquid to
the vaporizing chamber 124 each time”); id. at 6:54–58 (“When the smoking
liquid is dispensed from the container 140 and the heater 146 is turned on,
the smoking liquid may be mixed with the air from the flow path 122 and
vaporized by the heat from the heater 146 within the vaporizing
chamber 124.”). Petitioner does not make a threshold showing that a POSA
would have expected to increase the energy efficiency of Alarcon’s already
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21
efficient vaporization method by eliminating the deliberate gap between
heater 146 and dispensing control device 141.
Next, as support for its contention that it would have been obvious to
dispose Alarcon’s dispensing control device 141 “in contact” with
heater 146, Petitioner asserts that “Rabin discloses that advantages of
applying heat directly to porous member 102 include that: (a) ‘there is
minimal heating of unnecessary thermal mass, with the concomitant effect
that response times of the device are improved’ and (b) ‘the maximum
heater temperature . . . at a given power density . . . is reduced.’” Pet. 45–46
(quoting Ex. 1003, 7:44–55). Petitioner’s excerpts from Rabin are selected
from the passages block quoted above. As already discussed, Rabin’s
disclosed advantages are “as compared with prior art capillary pumps” that
have an external heater and a thermally conductive housing and fins or posts
to conduct heat from the external heater to a liquid-containing porous
member. Ex. 1003, 1:66–2:9, 7:23–48, 7:44–58, 15:17–16:35. In contrast,
Alarcon’s electronic cigarette has an internal heater located within a
vaporization chamber with a small gap between the heater and the liquid-
dispensing membrane. Ex. 1002, 5:39–41, 6:23–30, Figs. 1A, 6. Petitioner
does not explain how or why eliminating this intentional gap would
minimize heating of unnecessary thermal mass, improve response times, or
reduce the maximum heater temperature in a device, such as Alarcon’s, that
produces vapor by an entirely different mechanism, namely, using the force
of a user’s sucking action to draw liquid through a membrane and into
contact with a heater in a vaporization chamber, as compared to Rabin’s
capillary pump feature. It is not enough merely to quote the comparative
advantages disclosed in Rabin without explaining why a POSA would have
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expected to achieve similar improvements when modifying a different
device—an electronic cigarette—disclosed in Alarcon.
Petitioner also does not provide sufficient reasoning to support its
contention that it would have been obvious to incorporate features of
Rabin’s heater 104 in Alarcon’s electronic cigarette. Pet. 33–34, 39–41.
Petitioner asserts that “[t]he design features of Rabin’s heater 104 would be
well-suited for use in Alarcon’s ESD 100, because they would provide
efficient heating while still allowing vapor to flow through ESD 100.”
Pet. 33–34. Petitioner, however, articulates no rational reason why there
would have been a need to provide a heater that allows vapor to flow
through ESD 100 in Alarcon’s electronic cigarette in the absence of
Petitioner’s modification of the heater location. In Alarcon’s unmodified
device, air flow path 122 extends into vaporization chamber 124 and around
heater 146, as shown by curved dotted arrows in Figure 1A. Ex. 1003, 5:30–
32 (“The air flow path 122 may . . . extend to the vaporizing chamber 124.”);
id. at 5:35–39 (“When a user sucks . . . the ESD 100, air . . . may be pulled
in and moved to the vaporizing chamber 124 via the air flow path 122, as
indicated by the dotted arrows in FIG. 1A.”); id. at 5:39–41 (“The heater 146
may be . . . located in the vaporizing chamber 124.”). In Alarcon’s
unmodified device, vapor flows around the heater and does not need to flow
through the heater in order to reach the outlet. Therefore, absent Petitioner’s
modification of the heater location, a further modification to allow vapor to
flow through the heater is unnecessary. Petitioner does not provide
sufficient reasoning to support its proposed modification of moving
Alarcon’s heater location to place it in contact with the liquid permeable
membrane and, further, Petitioner provides no separate or independent
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reasoning to support its proposed substitution of a heater that allows vapor to
flow through the heater.
We have considered the paragraphs of the Suhling Declaration relied
upon by Petitioner for its challenge to claim 1 based on Alarcon and Rabin
(Ex. 1010 ¶¶ 101–143), and we find that they are essentially the same as the
Petition (Pet. 29–49) and are deficient for the same reasons.
4. Dependent claims 4, 5, and 8
Claims 4, 5, and 8 each depend from claim 1. Ex. 1001, 9:56–61,
10:5–8. Petitioner contends that claims 4, 5, and 8 would have been obvious
in view of Alarcon and Rabin. Pet. 49–50. We find that Petitioner’s
arguments and evidence for dependent claims 4, 5, and 8 fail to remedy the
deficiencies in Petitioner’s arguments and evidence for independent claim 1.
5. Independent claim 17
Claim 17 includes the same recitations as claim elements 1b and 1d.
Compare Ex. 1001, 9:30–33, 9:42–46 (claim 1), with id. at 12:3–6, 12:15–19
(claim 17). For these claim elements, Petitioner relies on the same showing
for claim 17 as it presents for claim 1. Pet. 51. We determine that
Petitioner’s arguments and evidence for claim 17 are insufficient for the
same reasons as discussed above for claim 1.
E. Petitioner’s Second Obviousness Ground: Alarcon and Harwig
Petitioner contends that claims 1, 3, 5, and 17 are unpatentable as
obvious in view of Alarcon and Harwig. Pet. 51–61. Patent Owner opposes
this challenge. Prelim. Resp. 21–29. We provide an overview of Harwig
before turning to the parties’ contentions and our analysis.
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1. Harwig (Ex. 1004)
Harwig discloses “an apparatus . . . for rapid flash-like volatilization
of high and low vapor pressure components from liquid or solid emanators
which is in contact with a point or localized heat source.” Ex. 1004,
code (57), 1:11–14. According to Harwig, the apparatus “is primarily
directed towards the treatment of residential air for fragrancing, odor
elimination, treatment of insects or pests, air sanitization, air and surface
antibacterial or antimicrobial treatment, or other ambient air or surface
modification by way of gas or vapor distribution.” Id., code (57), 1:20–24.
Harwig discloses that “[t]he apparatus includes an electro-resistive
heating element such as a wire, thin film, or thick film resistive heater
touching or affixed to an emanating surface from which a volatile compound
can be vaporized by heat generated from pulsed electrical input.” Ex. 1004,
2:40–45. Harwig discloses a portable cyclic localized heater having a pair of
emanators. Id. at 8:14–17, 8:66, Figs. 1, 2. Each emanator comprises a wick
and a wire heating element. Id. at 8:66–9:1. A lower end of the wick is
received within a reservoir containing a solution of an active volatile fluid
such as an insecticide, pesticide, or fragrance. Id. at 9:1–6. An upper end of
the wick has a relatively flat tip across which wire heating elements extend.
Id. Harwig discloses that, as active fluid is drawn upwardly by capillary
action through the wicks, the solution is volatized when current is passed
through the wires resulting in heating of the solution and vaporization of the
active fluid. Id. at 9:6–9. According to Harwig, “[t]he preferred wicking
material is ceramic, in part because of its high temperature tolerance” and
the preferred resistive heating element is either a 49 gauge Nichrome wire or
vapor-deposited thin film of tin oxide. Id. at 11:32–34, 12:21–23, 12:64–66.
Harwig discusses properties important to the selection of a resistive heating
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element, including “their effectiveness at volatilizing solutions and their
energy efficiency” and susceptibility to mechanical failure. Id. at 12:23–36,
12:66–13:16, 13:30–50.
Figures 4a–4f of Harwig are reproduced below.

Harwig Figures 4a through 4f “illustrate various resistive wire heater designs
showing a wire heating element 123a-123f touching an emanating surface
124a-124f located at the tip of a ceramic wick 125a-125f, respectively.”
Ex. 1004, 12:37–40. For example, Figure 4b “illustrates a simple or single
serpentine wire heating element 123b touching the flat emanating surface
124b at the tip end of ceramic wick 125b.” Id. at 12:44–46. Figure 4c
“illustrates a multi-serpentine design for wire heating element 123c touching
the flat emanating surface 124c at the tip end of wick 125c.” Id.
at 12:47–49.
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Figures 5a–5e of Harwig are reproduced below.

Harwig Figures 5a through 5e “illustrate various resistive thin film heater
designs showing a thin film heating element 126a-126e located at the tip of a
ceramic wick 127a-127e, respectively.” Ex. 1004, 13:51–54. For example,
Figure 5d “illustrates a grid-shaped thin film heating element 126d deposited
on the flat tip end of wick 127d.” Id. at 13:64–65. Harwig discloses that
“various other designs could be deposited on the flat tip end or on the
circumference of wick 127d, e.g. a mesh, a spiral, a polygonal-shaped grid
or some other network of spaced lines.” Id. at 13:65–14:2.
2. Independent claim 1
For claim elements 1b and 1d, Petitioner relies on its contentions
about Alarcon as presented for ground one. Pet. 54, 57. Addressing claim
element 1b, Petitioner contends that, in view of Alarcon and Harwig, it
would have been obvious for the thermal resistor to comprise “a metallic foil
or a thin sheet” and to have the “shape of a dual coil” or a “sinuous line.”
Pet. 54–56 (citing Ex. 1004, 2:40–45, 11:67–12:6, 12:44–49, 13:50–53,
13:65–14:2, Figs. 4b, 4c, 5a–5e).
Addressing claim element 1d, Petitioner contends that, in view of
Alarcon and Harwig, it would have been obvious to arrange Alarcon’s heater
146 “in contact with” Alarcon’s dispensing control device 141. Pet. 52–53,
57–60 (citing Ex. 1004, 1:11-14, 2:40–45, 2:59–61, 3:6–10, 4:24–30,
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4:62–63, 5:53–55, 5:65–67, 6:2–5, 6:29–35, 6:39–45, 9:1–9, 12:37–63,
13:51–14:4, 13:65–14:2, Figs. 4a–4f, 5a–5e).
Patent Owner argues that a POSA would not have been motivated to
modify Alarcon to arrange its heater “in contact with” the dispensing control
device or to use Harwig’s heating element. Prelim. Resp. 24–29.
After considering both parties’ arguments and evidence, we agree
with Patent Owner that Petitioner has not adequately established a non-
hindsight biased rationale for combining the teachings of Alarcon and
Harwig.
Petitioner has not shown sufficiently that it would have been obvious
in view of Harwig to arrange Alarcon’s heater 146 “in contact with”
Alarcon’s dispensing control device 141. Pet. 53. Petitioner contends that
its proposed modification would have been prompted by a desire for
“efficient vaporization.” Pet. 52–53, 57–58. Petitioner does not, however,
make a threshold showing that placing Alarcon’s heater 146 in contact with
Alarcon’s dispensing control device 141 would have made Alarcon’s
vaporization process more efficient. Instead, Petitioner simply directs us to
benefits Harwig discloses for its design, without showing sufficiently how or
why those benefits would have led a POSA to modify Alarcon’s electronic
cigarette.
First, Petitioner directs us to Harwig’s teachings that “vaporization is
a surface event, and it is singly the process of vaporizing the liquid that is
desired” and that “surface heating provides the most efficient method to
transfer heat to surface molecules” and “increase energy efficiency of the
system.” Pet. 53, 58 (quoting Ex. 1004, 4:24–30). Petitioner does not,
however, show sufficiently that Harwig’s teachings are applicable to
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Alarcon’s electronic cigarette. We agree with Patent Owner, on this record,
that they are not. Prelim. Resp. 25–26.
Petitioner selectively quotes from the following disclosure in Rabin:
By recognizing that vaporization is a surface event, and it is
singly the process of vaporizing of the liquid that is desired, then
surface heating provides the most efficient method to transfer
heat to surface molecules and minimizing the transfer of heat to
bulk liquid and degradation processes. Such a mechanism of
vaporization can increase energy efficiency of the system.
Submerging a heater results in equivalent energy transfer, but the
energy within the liquid is subsequently dissipated.
Ex. 1004, 4:24–32 (emphasis added). In this passage and elsewhere, Harwig
discloses the benefits of surface heating, as compared with heating a bulk
liquid, not as compared with heating liquid periodically dispensed through a
membrane into a vaporization chamber, as disclosed in Alarcon. Ex. 1002,
5:65–6:9, 6:45–58. More specifically, Harwig discloses that localized and
pulsed heating reduces changes in emanation effluent composition and
molecular degradation that result when a bulk solution is heated to a
constant temperature. Ex. 1004, 3:26–67. Harwig explains that “the
constant application of heat accelerates concentration change as the high
vapor pressure constituents will emanate more rapidly than the lower vapor
pressure constituents,” which “cause[s] a continuous change in the solution
concentration and create[s] a change in the desired composition of the
effluent.” Id. 3:34–40. According to Harwig, “[t]he constant application of
heat also places constituents at higher temperature and molecular energy that
accelerates the kinetics toward molecular degradation.” Id. at 3:41–43.
Harwig discloses that localized pulsed heating “reduce[s] possible effluent
degradation and increase effluent stability over time,” as compared with
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maintaining a bulk solution at a constant elevated temperature. Id.
at 3:28–34, 4:1–14.
We agree with Patent Owner, on this record, that a POSA “would
have recognized that Alarcon already solved the bulk liquid problem
addressed by Harwig, and avoids heating the bulk liquid in a different
manner than Harwig.” Prelim. Resp. 25. Petitioner does not attempt to
show, however, that Alarcon’s electronic cigarette suffers from the bulk
liquid heating problem addressed in Harwig. Like Harwig, Alarcon
minimizes the transfer of heat to bulk liquid. Alarcon accomplishes this by
controlling the amount of liquid dispensed to the vaporization chamber,
turning on the heater only when a user’s action for smoking is detected, and
heating just the amount of liquid that is dispensed to the vaporizing chamber.
Ex. 1002, 1:67–2:3, 5:48–50, 5:65–6:9, 6:23–26, 6:45–58, 13:12–16.
Petitioner relies on Harwig’s disclosure that “surface heating provides
the most efficient method to transfer heat to surface molecules” and
“increase energy efficiency of the system.” Pet. 53, 58 (quoting Ex. 1004,
4:24–30). But Petitioner does not show sufficiently that placing Alarcon’s
heater 146 in contact with dispensing control device 141 would increase the
efficiency of its vaporization method. Alarcon teaches that heater 146 is
positioned in close proximity to dispensing control device 141, which results
in efficient vaporization of the dispensed liquid. Ex. 1002, 6:26–30,
6:54–58. Petitioner does not make a threshold showing that a POSA would
have expected to increase the energy efficiency of Alarcon’s already
efficient vaporization method by eliminating the gap between heater 146 and
dispensing control device 141.
Next, Petitioner relies on Harwig’s teaching that “[s]urface heating
i[s] central to the design of a portable, low energy heat source,” asserting
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that it allows “a heater [to] be specified that allows for . . . battery power
with desirable battery life and heater performance characteristics.” Pet. 53,
58 (quoting Ex. 1004, 4:62–63, 6:2–5). According to Petitioner, “Harwig
discloses other benefits of its design, such as improved portability and
smaller size.” Pet. 53 (citing Ex. 1004, 2:59–61, 3:6–10, 4:62–63, 5:53–55,
5:65–67, 6:2–5, 6:33–35). Petitioner does not explain adequately how these
teachings would have led a POSA to arrange Alarcon’s heater in contact
with its dispensing control device. Alarcon already discloses a portable,
compact electronic cigarette having a low energy heat source powered by a
rechargeable battery. Ex. 1002, 1:15–18, 5:11–14, 5:39–41, 6:31–36,
6:40–44, Figs. 2A, 2B. Petitioner does not make a threshold showing that
Petitioner’s proposed modification would have been expected to improve the
portability, compact size, battery life, or heater performance characteristics
of Alarcon’s electronic cigarette.
Next, Petitioner relies on Harwig’s disclosure that an “advantage of a
thin film heating element is that there can be an increase in surface area,”
which “allows for increased liquid contact with the heating element to create
more efficient thermal transfer and volatilization of the solution.” Pet. 59
(quoting Ex. 1004, 13:30–34). Petitioner does not explain how Harwig’s
disclosure about increased surface area and increased liquid contact supports
Petitioner’s proposed modification of Alarcon that would eliminate the
deliberate gap between Alarcon’s heater and its dispensing control device.
Petitioner also does not provide sufficient reasoning to support its
contention that it would have been obvious to incorporate other features of
Harwig’s electro-resistive heating element into Alarcon’s electronic
cigarette. Pet. 53–34, 54–56. Petitioner asserts that “Harwig’s thin-film
heating element is well-suited for use in Alarcon’s ESD 100 because, when
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deposited on Alarcon’s dispensing control device 141, it allows vapor to
flow through ESD 100 via the space not occupied by the heating element.”
Pet. 54 (citing Ex. 1004, Figs. 4b, 4c, 5d). For the same reasons discussed
above for Petitioner’s Alarcon-Rabin combination, however, Petitioner does
not establish adequately that there would have been any need to provide a
heater that allows vapor to flow through ESD 100 in Alarcon’s electronic
cigarette in the absence of Petitioner’s modification of Alarcon’s heater
location. See page 22, supra. Petitioner does not provide sufficient
reasoning to support its proposed modification of moving Alarcon’s heater
location to place it in contact with the liquid permeable membrane and,
further, Petitioner provides no separate or independent reasoning to support
its proposed substitution of a heater that allows vapor to flow through the
heater.
We have considered the paragraphs of the Suhling Declaration relied
upon by Petitioner for its challenge to claim 1 based on Alarcon and Harwig
(Ex. 1010 ¶¶ 158–185), and we find that they are essentially the same as the
Petition (Pet. 29–49) and are deficient for the same reasons.
3. Dependent claims 3 and 5
Claims 3 and 5 each depend from claim 1. Petitioner contends that
claims 3 and 5 would have been obvious in view of Alarcon and Harwig.
Pet. 60–61. We find that Petitioner’s arguments and evidence for dependent
claims 3 and 5 fail to remedy the deficiencies in Petitioner’s arguments and
evidence for independent claim 1.
4. Independent claim 17
Petitioner presents no arguments or evidence for claim 17 separate
from its arguments and evidence for claim 1. Pet. 61. We determine that
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Petitioner’s arguments and evidence for claim 17 are insufficient for the
same reasons as discussed above for claim 1.
F. Petitioner’s Third Obviousness Ground: Alarcon and Johnson
Petitioner contends that claims 1, 3, 5, and 17 are unpatentable as
obvious in view of Alarcon and Johnson. Pet. 61–69. Patent Owner
opposes this challenge. Prelim. Resp. 30–31. We provide an overview of
Johnson before turning to the parties’ contentions and our analysis.
1. Johnson (Ex. 1005)
Johnson discloses a portable rechargeable battery-powered flameless
cigar lighter having a sheet-like resistance heating element. Ex. 1005,
codes (54), (57), ¶ 2.
Figure 2 of Johnson is reproduced below.

Johnson Figure 2 shows lighter 10 including rectangular enclosure 12 and
battery-powered resistance heating element 80. Ex. 1005 ¶¶ 26, 28, 37.
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Figure 8 of Johnson is reproduced below.

Johnson Figure 8 shows heating element 80, including first terminal 82,
second terminal 84, and heat generating body 86, which has “an articulate
shape, resembling a wound spiral coil configuration.” Ex. 1005 ¶¶ 41, 42.
As shown in Figure 8, “[t]he heat generating body 86 provides an electrical
resistance current path (P), indicated by the solid arrows, between the first
terminal 82 and the second terminal 84.” Id. ¶ 42. Johnson discloses that
heating element 80 is cut from flat sheet metal using, e.g., a laser, and is
made from a nickel and chromium based alloy. Id. ¶¶ 44, 46.
According to Johnson, heating element 80 “provides a greater contact
surface 88 area for an abutting end of a cigar when compared to similar
constructions made from a standard round wire heating element . . . of
similar length and cross-sectional area.” Ex. 1005 ¶ 45. Johnson states that
the greater contact surface 88 area results in improved ignition properties of
heating element 80 and that planar contact surface 88 provides directional
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heating, dissipating a majority of the heat orthogonally away from contact
surface 88. Id.
2. Independent claim 1
For claim elements 1b and 1d, Petitioner relies on its contentions
about Alarcon as presented for ground one. Pet. 64, 68. Addressing claim
element 1b, Petitioner contends that, in view of Alarcon and Johnson, it
would have been obvious for the thermal resistor to comprise “a metallic foil
or a thin sheet” and to have the “shape of a dual coil” or a “sinuous line.”
Pet. 64–66 (citing Ex. 1005 ¶¶ 41–44, Fig. 8).
For claim element 1d, Petitioner does not rely on any teaching or
suggestion in Johnson, which does not disclose a vaporizer membrane.
Instead, Petitioner asserts that claim element 1d is “disclosed by Alarcon.”
Pet. 68; see also id. at 45 (“A POSITA would understand the ‘adjacent’
dispensing control device 141 and heater 146 to be ‘disposed in contact’
with each other even though ‘a very small gap’ may exist.” (citing Ex. 1010
¶ 135)); id. at 61 (“[A] POSITA would understand Alarcon’s ‘adjacent’
dispensing control device 141 and heater 146 to be ‘disposed in contact’
with each other.”).
Patent Owner argues that Alarcon does not disclose the “in contact
with” limitation of claim element 1d. Prelim. Resp. 8, 11–13, 31.
After considering both parties’ arguments and evidence, we agree
with Patent Owner that Petitioner has not shown that Alarcon discloses or
suggests a “vaporizer membrane disposed in contact with the thermal
resistor,” as recited in claim element 1d.
Alarcon discloses that dispensing control device 141 and heater 146
“may be located adjacent to each other with a very small gap therebetween,
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in order to efficiently vaporize the smoking liquid.” Ex. 1002, 6:26–30; see
also id. Figs. 1A, 6 (illustrating gap between dispensing control device 141
and heater 146). Petitioner asserts that Alarcon’s dispensing control
device 141 (also referred to as micro liquid screen 141) corresponds to the
recited “vaporizer membrane” (Pet. 44) and that a “thermal resister” is
taught by Alarcon’s heater 146 in view of Johnson’s heat generating body 86
(Pet. 64–66). Because Alarcon teaches a deliberate “gap” between
dispensing control device 141 (the alleged “vaporizer membrane”) and
heater 146 (the alleged “thermal resistor”), the vaporizer membrane is not
“disposed in contact with” with the thermal resistor, as recited in claim
element 1d. Ex. 1002, 6:26–30, Figs. 1A, 6. All disclosed embodiments of
Alarcon depict this intentional “gap” between dispensing control device 141
and heater 146, which promotes efficient vaporization of smoking liquid
dispensed to the vaporizing chamber. Id.; see also id. at 2:36–42, 5:48–50,
5:65–6:9, 6:23–26, 6:45–58, 13:12–16 (discussing vaporization, including
dispensing of smoking liquid to vaporization chamber and activation of
heater).
Petitioner does not provide evidence or analysis sufficient to support
its assertion that a POSA “would understand the ‘adjacent’ dispensing
control device 141 and heater 146 to be ‘disposed in contact’ with each other
even though ‘a very small gap’ may exist.” Pet. 45; id. at 61 (similar
assertion). Although Petitioner cites the Suhling Declaration (Pet. 45 (citing
Ex. 1010 ¶ 135); Pet. 61 (citing Ex. 101 ¶ 196)), the cited testimony merely
parrots the Petition, with no explanation and no analysis sufficient to support
this bare assertion. Ex. 1010 ¶¶ 135, 196.
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3. Dependent claims 3 and 5
Petitioner contends that dependent claims 3 and 5 would have been
obvious in view of Alarcon and Johnson. Pet. 68–69. We find that
Petitioner’s arguments and evidence for dependent claims 3 and 5 fail to
remedy the deficiencies in Petitioner’s arguments and evidence for
independent claim 1.
4. Independent claim 17
Petitioner presents no arguments or evidence for claim 17 separate
from its arguments and evidence for claim 1. Pet. 69. We determine that
Petitioner’s arguments and evidence for claim 17 are insufficient for the
same reasons as discussed above for claim 1.
G. Discretion under 35 U.S.C. § 314(a) and Fintiv8
Patent Owner argues that the Board should exercise its discretion to
deny the Petition under 35 U.S.C. § 314(a) and Fintiv. Prelim. Resp. 31–44.
In view of our determination that Petitioner has not met the threshold for
instituting review on the merits, we need not consider Patent Owner’s
arguments for a discretionary denial of institution.
III. CONCLUSION
For the above reasons, we determine that Petitioner has not
established a reasonable likelihood that it would prevail in showing that
claims 1, 3–5, 8, and 17 of the ’265 Patent are unpatentable on the grounds
asserted in the Petition.

8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
(precedential).
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IV. ORDER
It is
ORDERED that, the Petition is denied, and no trial is instituted.
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FOR PETITIONER:
Matthew W. Johnson
David Cochran
JONES DAY
mwjohnson@jonesday.com
dcochran@jonesday.com

FOR PATENT OWNER:

Jonathan M. Strang
Clement Naples
Lawrence J. Gotts
Surendra K. Ravula
Razi Safi
LATHAM & WATKINS LLP
jonathan.strang@lw.com
clement.naples@lw.com
lawrence.gotts@lw.com
surendrakumar.ravula@lw.com
razi.safi@lw.com