Challenges of patents in Inter Partes Reviews (IPRs) at the Patent Trial and Appeal Board (PTAB) must be based on anticipation or obviousness over printed prior art (35 U.S.C. § 311(b)). However, it is important that the petitioners carefully choose the proper prior art to be relied on before filing the petitions. This post discusses a decision of the PTAB to deny institution of an IPR because the petition relied on duplicative prior art. The case is Nu Mark LLC v. Fontem Holdings 1, B.V. (Case IPR2016-01309; Decision Denying Institution entered December 15, 2016) concerning Patent No. 8,863,752 B2 ("the '752 patent"). At the end of this post, strategies to avoid the denial of IPR institution in a similar situation or to deal with the denial will be discussed.
The '752 patent concerns electronic cigarettes. A petition was filed to institute an IPR for some of the claims of the '752 patent on the grounds that the challenged claims were obvious over two prior art references, Brooks I (US 4,947,874) and Whittemore (US 2,057,353). The claims were directed toward an atomizer assembly for an electronic cigarette, and are summarized below without reproduction of every claim element for brevity sake. The claimed atomizer assembly for an electronic cigarette comprises
- a housing containing an atomizer in contact with a liquid storage;
- a screw thread electrode on one end of the housing;
- a through-hole centered on the screw thread electrode; and
- a flow passageway from the atomizer to an outlet.
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