Takeaway: To establish the unpatentability of a challenged claim, a petitioner must provide evidence that the features disclosed in the prior art are arranged in the same manner set forth in the challenged claim.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that challenged claims 1-10, 12, 15-26, and 33-38 are unpatentable, but that Petitioner did not establish the unpatentability of claim 11.

The ‘944 patent “relates generally to an aerosol electronic cigarette that contains nicotine, but not tar” for replacing cigarettes and helping smokers quit smoking. Challenged claims 1 and 10 are independent claims, with claims 2-9 depending from claim 1 and claims 11, 12, 15-6, and 33-38 depending from claim 10.

Turning to claim construction, the Board stated that claims in an unexpired patent are interpreted according to their broadest reasonable construction. The Board first addressed the parties’ arguments related to the construction of the term “run-through atomizing chamber,” disagreeing with Patent Owner’s proposal as improperly importing limitations from the specification.  Thus, the Board construed the term so as not to require that the chamber be “unblocked,” as argued by Patent Owner.  Next, the Board construed the term “porous component,” disagreeing again with Patent Owner’s proposal as being too narrow and inconsistent with the broadest reasonable construction.

Turning to the asserted grounds of unpatentability, the Board first addressed the alleged anticipation of claims 1, 2, 5-8, 10, 33, 35, 37, and 38 by Liu. The Board was persuaded that the challenged claims were anticipated by Liu, rejecting Patent Owner’s arguments as being based on claim constructions for the terms “run-through atomizing chamber” and “porous component” that were not adopted.

With respect to the alleged obviousness of claims 1-4, 8-12, 15-26, 33, 34, 36, and 38 over Hon ’494 and Liu, the Board first stated that it was persuaded that the independent claims would have been obvious. In this regard, the Board noted that it was persuaded that Liu alone discloses the elements of claims 1 and 10.  Turning to the dependent claims, the Board was similarly persuaded that the claims would have been obvious, with the exception of claim 11.

Regarding claim 11, the Board found that Petitioner did not establish that the feature of “a restriction component” that “is detachably set on one end of the said porous component” was disclosed by the prior art. In particular, Petitioner relied upon a feature disclosed in Hon ’494 as allegedly corresponding to the “restriction component” of claim 11.  However, the Board agreed with Patent Owner that the prior art feature was “spaced apart from the porous component,” and Petitioner did not establish that it would have been obvious to move that feature to “one end of the said porous component,” as recited in claim 11.

CB Distributors, Inc. and DR Distributors, LLC v. Fontem Holdings 1 B.V., IPR2013-00387
Paper 43: Final Written Decision
Dated: December 24, 2014
Patent: 8,156,944 B2
Before: Jacqueline Wright Bonilla, Brian J. McNamara, and Trenton A. Ward
Written by: Bonilla
Related Proceedings: Reexamination proceeding 95/002,235; Ruyan Investment (Holdings) Ltd. v. CB Distributors, Inc., No. CV12-5456 (C.D. Cal.); Ruyan Investment (Holdings) Ltd. v. Fin Branding Group, LLC, No. CV12-5468 (C.D. Cal.); Ruyan Investment (Holdings) Ltd. v. Sottera, Inc., No. CV12-5454 (C.D. Cal.)