Petition for Writ of Certiorari — ESIP Series 2, LLC, Petitioner v. Puzhen Life USA, LLC

No.

In the

Supreme Court of the United States

ESIP SERIES 2, LLC,

Petitioner,

v.

PUZHEN LIFE USA, LLC,

Respondent.

-----------------------------------------ON PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

------------------------------------------

APPENDIX TO CORRECTED

PETITION FOR WRIT OF CERTIORARI

------------------------------------------

Gordon K. Hill

Counsel of Record

Alma J. Pate

PATE BAIRD

36 West Fireclay Avenue

Salt Lake City, UT 84107

(801) 284-7000

ghill@patebaird.com

Counsel for Petitioner

GibsonMoore Appellate Services, LLC

206 East Cary Street ♦ Richmond, VA 23219

804-249-7770 ♦ www.gibsonmoore.net

ia

TABLE OF CONTENTS

Appendix to Petition

Page:

Opinion

U.S. Court of Appeals for the Federal Circuit

ESIP Series 2, LLC v. Puzhen Life USA, LLC

(No.2019-1659)

entered May 19, 2020 ........................................ 1a

Patent Board Decision and Order

entered February 27, 2019 .............................. 15a

Order Denying Petition for Panel

Rehearing and Rehearing en Banc

U.S. Court of Appeals for the Federal Circuit

ESIP Series 2, LLC v. Puzhen Life USA, LLC

(No.2019-1659)

entered July 13, 2020 ...................................... 81a

Relevant Constitutional and

Statutory Provisions:

U.S. Const. amend. V ...................................... 83a

Title 5 USC ...................................................... 83a

Title 35 USC .................................................... 84a

1a

[ENTERED: May 19, 2020]

United States Court of Appeals

for the Federal Circuit

_____________________________

ESIP SERIES 2, LLC,

Appellant

v.

PUZHEN LIFE USA, LLC,

Appellee

_____________________________

2019-1659

_____________________________

Appeal from the United States Patent and

Trademark Office, Patent Trial and Appeal Board in

No. IPR2017-02197.

_____________________________

Decided: May 19, 2020

_____________________________

GORDON K. HILL, Pate Baird, Salt Lake City, UT,

argued for appellant. Also argued by

ALMA JOHN PATE.

MARK A. MILLER, Dorsey & Whitney LLP, Salt

Lake City, UT, argued for appellee. Also represented

by ELLIOT HALES; GREGORY STUART SMITH,

Law Offices of Gregory S. Smith, Washington, DC.

_____________________________

Before LOURIE, REYNA, and HUGHES, Circuit

Judges.

REYNA, Circuit Judge.

2a

ESIP Series 2, LLC, appeals a decision of the

Patent Trial and Appeal Board that certain claims of

ESIP’s patent are invalid as obvious. ESIP also

contends that the Board should not have instituted

inter partes review because appellee Puzhen failed

to identify “all real parties in interest” as required by

35 U.S.C. § 312. We find no error in the Board’s

obviousness determination, and the Board’s decision

to institute inter partes review is final and nonappealable. We affirm.

BACKGROUND

A. The ’130 Patent

ESIP Series 2, LLC, (“ESIP”) owns U.S. Patent

No. 9,415,130 (“the ’130 patent”), which relates to “a

novel system and method for combining germicidal

protection and aromatic diffusion in enclosed

habitable spaces.” ’130 patent at 1:7–10. Products of

this type are commonly known as “vaporizers” or

“diffusers.” Figure 2 of the ’130 patent, shown below,

depicts an embodiment of the claimed invention with

a diffusion module (45) contained within a housing

(12).

3a

The ’130 patent states that it overcomes “a

number of problems” in the prior art that stem from

the diffusion of “[o]verly large particles.” ’130 patent

at 4:15–28. It teaches that overly large particles cause

waste and reduce effectiveness: “rather than

remaining in the air until they have evaporated or

been incorporated into the atmosphere, they may

instead settle out relatively quickly, onto surfaces,

furniture, floors, into HVAC systems, or the like.” Id.

To avoid these problems, the claimed invention

recites “a micro-cyclone for quiet, well diffused flow

of ultra-fine droplets.” ’130 patent at 4:15–28. Figure

12, shown below, depicts components of the diffusion

module (45), including: a “reservoir” (52), an

“atomizer” (46), and a “micro-cyclone” (90). The

micro-cyclone contains a “spiral channel” (91) that

“begins below a central plane . . . defined by a plate”

(96). Id. at 16:57–17:4. The micro-cyclone causes “the

comparatively larger particles in the stream of air . . .

to smash and coalesce against the inside of the outer

4a

wall of the [spiral] channel,” leaving only “the

comparatively smallest range of droplets [to be]

passed out to the nozzle.” Id. at 17:26–31. After

coalescing, the larger droplets “drip back into the

atomizer . . . to be re-atomized.” Id.

Claim 1, reproduced

claimed invention:

below,

illustrates

the

1. A method for introducing a scent into

breath- able air, the method comprising;

providing a system comprising a reservoir,

eductor,

and

separator

operably

connected to one another;

providing a liquid constituting an aromatic

substance selected by an operator for

the scent to be introduced into the

breathable air;

drawing a first portion of the liquid from

the reservoir by the eductor passing a

flow of air;

entraining the first portion of the liquid

into the flow;

5a

forming droplets of the first portion by at

least one of restricting an area through

which the flow passes and the

entraining;

separating out a second distribution of

the droplets by passing the flow

through a wall between a first chamber

and a second chamber, the flow path

spiraling axially and circumferentially,

simultaneously

and

continuously,

through an arcuate channel formed

through the wall; and passing a first

distribution of the droplets out of the

separator into the breathable air.

’130 patent at 23:22–41 (emphases added).

B. IPR Proceeding

Puzhen Life USA, LLC, (“Puzhen”) filed a

petition for inter partes review of claims 1, 3, and 17

of the ’130 patent. Puzhen challenged the claims as

obvious (i) in view of Sevy 1 and Cronenberg 2; and (ii)

in view of Sevy and Giroux 3.

Sevy relates to “novel systems and methods for

inte- grating air supplies, reservoirs and atomizers

into an inte- grated system.” Sevy at 1:6–8. Sevy

relies on “direction change and momentum of impact

to further comminute [] droplets into a more finely

atomized mist.” Id. at 2:13–19. Sevy teaches that

larger droplets are separated from the mist because

they “cannot move with the airflow, typically

1 U.S. Patent No. 7,878,418 (“Sevy”).

2 U.S. Patent No. 4,243,396 (“Cronenberg”).

3 U.S. Patent No. 8,001,963 (“Giroux”).

6a

because . . . they will not be able to quickly turn to

follow the flow of air.” Id. at 8:64–9:4.

Cronenberg relates to “[a] separator adapted for

use as part of a fluid dispenser system for supplying

inhalable flu- ids.” Cronenberg at Abstract.

Cronenberg teaches that the “separator is adapted to

be positioned within the fluid dis- penser system so

that the mixture of liquid and gas passes along [a]

tortuous passageway,” causing “the larger drop- lets

of liquid [to be] removed from the mixture.” Id. at

2:48–55. In this way, the separator “achieve[s] the

desired vapor and avoid[s] the presence of liquid

droplets in the gas and liquid mixture.” Id. at 1:20–

22.

Giroux relates to “a novel integrated nebulizer and

particle dispersion chamber” that “provides for

delivery of a vortical flow of nebulized particles to

the nostrils.” Giroux at Abstract. To achieve the size

and velocity characteristics that are important for

effective drug delivery, Giroux teaches forcing the

particles to flow through a “baffle” that is in a

“generally serpentine or helix shape,” which

“create[s] motion of the nebulized particles in a

vortex as they exit the dispersion chamber.” Id. at

13:32–42.

Based on the prior art and expert testimony, the

Board determined that the challenged claims would

have been obvious in view of Sevy and Cronenberg

and in view of Sevy and Giroux. J.A. 40, 47. The

Board found that Sevy discloses every element of the

challenged claims except for the “arcuate channel”

limitation of the “separating” claim element. J.A. 23–

31. The Board found that both Cronenberg and

7a

Giroux disclose the “arcuate channel” limitation. The

Board explained:

[N]either reference, considered by itself,

teaches forming an arcuate channel through a

wall for the purpose of separating liquid

droplets out of a mixed air-droplet flow. Sevy’s

separator passes flow through a wall, but not

using an arcuate passage- way. Cronenberg

[and Giroux] teach[] accomplishing the same

type of separation using an arcuate

passageway, but not one passing through a

wall.

J.A. 27, 43. The Board determined that a skilled

artisan would have been motivated to combine the

teachings of each reference with Sevy to arrive at the

claimed invention.

The Board also addressed in its final written

decision ESIP’s argument that Puzhen’s petition was

barred from institution because Puzhen failed to

identify “all real par- ties in interest” as required by

35 U.S.C. § 312(a)(2). J.A. 849. According to ESIP,

Puzhen’s petition failed to identify two real parties

in interest: doTERRA International, LLC, and

Puzhen Life Co., Ltd. J.A. 5. After considering

ESIP’s asserted evidence, the Board determined that

neither party was a real party in interest within the

meaning of 35 U.S.C. § 312(a)(2) and that Puzhen’s

petition was not barred from institution. J.A. 11, 14.

ANALYSIS

Obviousness is a question of law with underlying

factual findings relating to the scope and content of

the prior art; differences between the prior art and

the claims at issue; the level of ordinary skill in the

8a

pertinent art; the presence or absence of a

motivation to combine or modify prior art with a

reasonable expectation of success; and any objective

indicia of non-obviousness. Persion Pharms. LLC

Alvogen Malta Operations Ltd., 945 F.3d 1184, 1189

(Fed. Cir. 2019). We review factual determinations

for substantial evidence. Id. Substantial evidence is

“such relevant evidence as a reasonable mind might

accept as adequate to support a conclusion.” Consol.

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). We

review the Board’s legal conclusions de novo.

Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.

2003).

A. Obviousness

ESIP challenges four fact findings underlying the

Board’s conclusion that the ’130 patent claims would

have been obvious. We determine that all four fact

findings are supported by substantial evidence, and

we affirm the Board’s conclusion.

First, with respect to the “separating” claim

limitation, ESIP challenges the Board’s finding that

Sevy teaches separating droplets by passing the flow

through an orifice in a wall. Appellant Br. 27–28.

ESIP argues that Sevy’s orifice—aperture 99, shown

in Figure 7 below—“does not function as a separator”

because it “cannot discriminate with regard to the

size of a particle passing through it. It’s a hole.” Id.

at 28. We disagree. In support of its finding, the

Board relied on Sevy’s disclosure that “separator

plate 98 passes the flow of air from the atomizer 16

through apertures 99” and that droplets with “too

large a size and mass will not be able to quickly turn

to follow the flow of air, and will strike the walls of

the opening 100 or the separator plate 98.” J.A. 26

9a

(citing Sevy at 8:64–9:2). The Board also relied on

the testimony of Puzhen’s expert, Mr. Smith, who

testified that the separator plate (98) in Sevy

“segregate[s]” atomizer droplets. Id. (citing J.A.

634–635).

We find no error in the Board’s decision to credit

the opinion of one expert over another, and we do not

reweigh evidence on appeal. Impax Labs. Inc. v.

Lannett Holdings Inc., 893 F.3d 1372, 1382 (Fed. Cir.

2018). Substantial evidence supports the Board’s

finding that Sevy teaches separating droplets by

passing the flow through an orifice in a wall.

Second, also with respect to the “separating” claim

limitation, ESIP challenges the Board’s finding that

Giroux discloses a “vortex” that separates large

droplets from the air flow. ESIP argues that the

10a

circulation of particles through Giroux’s “vortex”

“does not result in the larger droplets being

separated from the vortex or separated from the air

flow.” Appellant Br. at 35. For support, ESIP cites

only the testimony of its expert, Dr. Bell, which the

Board found to be “conclusory and unsupported” and

thus “un- helpful and unpersuasive.” J.A. 29. In

support of its finding that Giroux’s vortex separates

large droplets from the airflow, the Board relied on

the expert testimony of Mr. Smith and Giroux’s

teaching that the swirl of droplets in Giroux’s

“vortex” “sends the larger droplets to the outside

rings and . . . keeps the smaller [] droplets in the air

stream for a longer period of time.” J.A. 43 (quoting

Giroux at 8:60–62, 12:33-37; J.A. 643–644).

Substantial evidence therefore supports the Board’s

finding that Giroux teaches a vortex that separates

larger droplets from the air flow. See Impax, 893

F.3d at 1382.

Third, ESIP challenges the Board’s finding that a

skilled artisan would have been motivated to replace

the aperture in Sevy with the arcuate passageway of

Cronenberg. The Board found that Sevy and

Cronenberg teach two alternative methods for

achieving the separation of droplets from the mixed

dropletair flow, and that a skilled artisan would have

been motivated to substitute one method for the

other. J.A. 26–27. ESIP argues that Sevy and

Cronenberg “achieve different results” and that

combination of these two references would require

“substantial reconstruction.” Appellant Br. 28–29.

Again, ESIP relies solely on the discredited

testimony of Dr. Bell. In reaching its finding, the

Board relied on the disclosures of Sevy and

Cronenberg, and the expert testimony of Mr. Smith,

11a

who testified that a skilled artisan “would [have]

replace[d] [Sevy’s] aperture(s) in plate 98 with the

helical pathway of Cronenberg.” J.A. 26 (citing Sevy

at 8:64–9:2; Cronenberg at 3:12–21, 5:37–43; J.A.

634–635). Substantial evidence therefore supports

the Board’s finding that a skilled artisan would be

motivated to combine Sevy and Cronenberg. See

Impax, 893 F.3d at 1382.

Fourth, ESIP challenges the Board’s finding that

a skilled artisan would have been motivated to

combine Sevy with Giroux. Appellant Br. 36. ESIP

asserts that the Board “failed to articulate the

required explication as to why Giroux’s helical baffle

would be ‘formed through a wall’ as required by the

subject claims.” Id. We disagree. The Board found

that “both Sevy and Giroux teach methods for

removing large droplets from [the] mixture of air and

liquid droplets,” and thus a skilled artisan would

have been motivated to “substitute a channel defined

by a helical baffle, as taught by Giroux, for the

straight orifice in Sevy’s plate.” J.A. 44–45. In

reaching that determination, the Board relied on the

disclosures of Sevy and Giroux, and the expert

testimony of Mr. Smith, who testified that a skilled

artisan “would have had a reason to com- bine the

teachings of Sevy with those of Giroux.” Id. (citing

Sevy at 8:64–9:2; Giroux at 8:60–62, 12:33–37; J.A.

643–644). Substantial evidence therefore supports

the Board’s finding that a skilled artisan would be

motivated to com- bine Sevy and Giroux. See Impax,

893 F.3d at 1382.

ESIP also argues that the Board committed

numerous legal errors when rendering its

obviousness determination. For example, ESIP

claims that the Board legally erred by failing to

12a

expressly define the applicable level of ordinary skill

in the art. Appellant Br. 19–20. Yet ESIP fails to

make the requisite showing that there are “any

meaningful differences” between the parties

proposed definitions or that “the outcome of [the]

case would have been different based on which

definition the Board used.” Genzyme Therapeutic

Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d

1360, 1371–72 (Fed. Cir. 2016). Similarly, ESIP

challenges the Board’s construction of “wall,” yet

ESIP “fail[s] to clearly explain what result would

occur if this court adopted [the appellant’s] proposed

claim construction[].” Fresenius USA, Inc. v. Baxter

Int’l, Inc., 582 F.3d 1288, 1304 (Fed. Cir. 2009)

(holding that the appellant “gave this court little

guidance and cited no record support regarding why

a modified claim construction would affect the [judgment]. For that reason alone, we may decline to

consider

Fresenius’s

claim

construction

arguments.”).

We

find

ESIP’s

arguments

unpersuasive.

Because the Board’s obviousness conclusion is not

legally erroneous and the fact findings are supported

by substantial evidence, we affirm the determination

that claims 1, 3, and 17 would have been obvious in

view of Sevy and Cronenberg and in view of Sevy and

Giroux.

B. Real Party in Interest

Under 35 U.S.C. § 312(a), a petition “may be

considered only if” it includes: (1) payment of fees;

(2) identification of all real parties in interest; (3)

identification “with particularity” of each claim

challenged, the grounds of each challenge, and the

supporting evidence; (4) other information the

13a

Director requires by regulation; and (5) copies of

these documents for the patent owner. ESIP argues

that Puzhen failed to identify all “real parties in

interest” and thus the Board erred when it

considered institution of inter partes review. For the

reasons stated below, the Board’s § 312(a)(2) realparty-in-interest determination is final and nonappealable.

In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.

2131 (2016), the Supreme Court held that this Court

is precluded from reviewing Board decisions

concerning the “particularity” requirement under §

312(a)(3). The Court explained that § 314(d) bars

appellate review of “questions that are closely tied to

the application and interpretation of statutes related

to the Patent Office’s decision to initiate inter partes

review.” Id. at 2141–42. The Court further explained

that “where a patent holder grounds its claim in a

statute closely related to that decision to institute

inter partes review, § 314(d) bars judicial review.”

Id.

More recently, in Thryv, Inc v. Click-To-Call

Techs., LP, 140 S. Ct. 1367 (2020), the Supreme

Court held that § 314(d) also precludes judicial

review of the agency’s decision whether to apply the

one-year time bar set forth in § 315(b)). The Court

explained that “§ 315(b)’s time limitation is integral

to, indeed a condition on, institution,” and that “a

contention that a petition fails under § 315(b) is a

contention that the agency should have refused ‘to

institute an inter partes review.’” Id. at 1373–74

(quoting 35 U.S.C. § 314(d)). The Court concluded

that a challenge to a petition’s timeliness under §

315(b) raises “an ordinary dispute about the

14a

application of” an institution-related statute and is

barred from appellate review by § 314(d). Id.

In view of Cuozzo and Click-to-Call, we find no

principled reason why preclusion of judicial review

under § 314(d) would not extend to a Board decision

concerning the “real parties in interest” requirement

of § 312(a)(2). ESIP’s contention that the Board

failed to comply with § 312(a)(2) is “a contention

that the agency should have re- fused to institute an

inter partes review.” See Click-To-Call, 140 S. Ct. at

1373–74. Indeed, ESIP expressly argues that the

agency should have refused to institute inter partes

review because of Puzhen’s failure to identify all

“real parties in interest.” E.g., Appellant Br. at 5

(“[I]t was improper for the Board to ‘consider’ the

IPR Petition and institute an IPR.”). Accordingly, we

hold that ESIP’s challenge to the Board’s “real parties

in interest” determination “raises ‘an ordinary

dispute about the application of’ an institutionrelated statute,” and that § 314(d) precludes our

review of that determination. Click-To-Call, 140 S.

Ct. at 1373–74 (quoting Cuozzo, 136 S. Ct. at 2141–

42).

CONCLUSION

We have considered ESIP’s other arguments and

find them unpersuasive. We affirm the Board’s

determination that claims 1, 3, and 17 of the ’130

patent are invalid as obvious.

AFFIRMED

15a

[ENTERED: FEBRUARY 27, 2019]

UNITED STATES PATENT AND

TRADEMARK OFFICE

_________________________________________

BEFORE THE PATENT TRIAL

AND APPEAL BOARD

_________________________________________

PUZHEN LIFE USA, LLC,

Petitioner,

v.

ESIP SERIES 2, LLC,

Patent Owner.

_________________________________________

Case IPR2017-02197

Patent 9,415,130 B2

_________________________________________

Before CHRISTOPHER L. CRUMBLEY, JON B.

TORNQUIST, and CHRISTOPHER M. KAISER,

Administrative Patent Judges.

KAISER, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 318; 37 C.F.R. § 42.73

INTRODUCTION

A. Background

Puzhen Life USA, LLC (“Petitioner”) filed a

Petition (Paper 1, “Pet.”) requesting an inter partes

review of claims 1, 3, and 17 of U.S. Patent No.

9,415,130 B2 (Ex. 1001, “the ’130 patent”). ESIP

16a

1

Series 2, LLC (“Patent Owner”) filed a Preliminary

Response (Paper 5, “Prelim. Resp.”). On March 9,

2018, we instituted trial on all challenged claims and

all grounds asserted in the Petition. Paper 10 (“Inst.

Dec.”). During the trial, Patent Owner filed a

Response (Paper 15, “PO Resp.”), and Petitioner filed

a Reply (Paper 17). In addition, Patent Owner filed a

motion to exclude certain evidence and pleadings

(Paper 19), to which Petitioner filed an Opposition

(Paper 20) and Patent Owner filed a Reply (Paper

22). We held a hearing, the transcript of which has

been entered into the record. Paper 23 (“Tr.”).

We have jurisdiction under 35 U.S.C. § 6, and we

issue this Final Written Decision pursuant to 35

U.S.C. § 318(a) and 37 C.F.R. § 42.73. We conclude

that Petitioner has established by a preponderance

of the evidence that claims 1, 3, and 17 of the ’130

patent are unpatentable.

B. Related Matters

The parties note that the ’130 patent is at issue

in ESIP Series 1, LLC v. doTERRA Int’l, LLC, Case

No. 2:16-cv-01011 (D. Utah). Pet. 3; Paper 4, 2.

1 The Petition names Earl Sevy, the inventor of the ’130 patent,

as the Patent Owner. Pet. 1. Patent Owner made of record in

this proceeding an instrument purporting to assign “[t]he

entire right, title and interest in” all “Patents granted” on the

application that issued as the ’130 patent. Ex. 2004, 1. The

assignee named in that assignment is “ESIP, LLC, Series No.

2,” which Patent Owner consistently refers to as “ESIP Series

2, LLC.” Id.; Prelim. Resp. 1; PO Resp. 1. We assume, without

deciding, that Patent Owner’s nomenclature is correct.

17a

C. The Asserted Grounds of Unpatentability

Petitioner contends that claims 1, 3, and 17 of the

’130 patent are unpatentable based on the following

grounds (Pet. 17–60): 2

Statutory Basis

Ground

§ 103

§ 103

§ 103

§ 103

Challenged

Claims

Sevy 3 and Cronenberg 4 1, 3, and 17

Sevy and Giroux 5

1, 3, and 17

Sevy and Kato 6

1, 3, and 17

Sevy and Stroia 7

1, 3, and 17

D. The ’130 Patent

The ’130 patent, titled “Industrial, Germicidal,

Diffuser Apparatus and Method,” issued on August

16, 2016. Ex. 1001, at [45], [54]. The ’130 patent

relates to “[a] modular, integrated, combination air

purification and aroma diffuser” that makes use of “a

micro-cyclone for quiet, well diffused flow of ultrafine droplets.” Ex. 1001, at [57].

The diffusion of “[o]verly large particles” poses “a

number of problems,” including wasting the aromatic

product and causing the particles to settle out of the

air too quickly. Id. at 4:15–28. To avoid these

2 Petitioner

also relies on a declaration from Fred P. Smith,

P.E., CSP. Ex. 1007.

3 Sevy, U.S. Patent No. 7,878,418 B2, issued Feb. 1, 2011 (Ex.

1003, “Sevy”).

4 Cronenberg, U.S. Patent No. 4,243,396, issued Jan. 6, 1981

(Ex. 1004, “Cronenberg”).

5 Giroux, U.S. Patent No. 8,001,963 B2, issued Aug. 23, 2011

(Ex. 1005, “Giroux”).

6 Kato et al., U.S. Patent No. 6,236,042 B1, issued May 22,

2001 (Ex. 1006, “Kato”).

7 Stroia et al., U.S. Patent No. 6,029,913, issued Feb. 29, 2000

(Ex. 1009, “Stroia”).

18a

problems, the ’130 patent describes using a “microcyclone” to separate “the comparatively larger

particles from the flow” of air containing atomized

droplets of the liquid product to be diffused. Id. at

4:3–14. This micro- cyclone “contains a spiral

channel” that “begins below a central plane” that is

“defined by a plate.” Id. at 16:65–17:4. The channel

spirals along a “circular route . . . from below the

plate” to above it. Id. at 17:18–20. In use, this

micro-cyclone causes “the comparatively larger

particles in the stream of air . . . to smash and

coalesce against the inside of the outer wall of the

channel,” leaving only “the comparatively smallest

range of droplets [to be] passed out to the nozzle.” Id.

at 17:26–31. After coalescing, the larger droplets

“drip back into the atomizer . . . to be re-atomized.”

Id. at 17:28– 29.

E. Illustrative Claim

Claims 1 and 17 of the ’130 patent are independent,

and claim 1 is illustrative; it recites:

1. A method for introducing a scent into

breathable air, the method comprising;

providing a system comprising a reservoir,

eductor, and separator operably connected to

one another;

providing a liquid constituting an aromatic

substance selected by an operator for the scent

to be introduced into the breathable air;

drawing a first portion of the liquid from the

reservoir by the eductor passing a flow of air;

entraining the first portion of the liquid into

the flow;

19a

forming droplets of the first portion by at least

one of restricting an area through which the

flow passes and the entraining;

separating out a second distribution of the

droplets by passing the flow through a wall

between a first chamber and a second

chamber, the flow path spiraling axially and

circumferentially,

simultaneously

and

continuously, through an arcuate channel

formed through the wall; and

passing a first distribution of the droplets out

of the separator into the breathable air.

Ex. 1001, 23:22–41.

ANALYSIS

A. Real Parties in Interest

A petition for inter partes review “may be

considered only if . . . the petition identifies all real

parties in interest.” 35 U.S.C. § 312(a)(2). Here, the

Petition identifies Petitioner and Puzhen, LLC as

real parties in interest (“RPIs”). Pet. 3. Patent

Owner argues that this identification is incomplete

and that both Puzhen Life Co., Ltd. (“Puzhen Life

HK”)

and

doTERRA

International,

LLC

(“doTERRA”) should have been identified as RPIs as

well. PO Resp. 1–6.

1. Legal Principles

Petitioner bears the overall burden to prove that

all real parties in interest have been identified.

Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242

(Fed. Cir. 2018) (applying this rule in the context of

35 U.S.C. § 315(b)). Thus, we evaluate the evidence

adduced at trial to determine whether Petitioner has

20a

borne its burden. In doing so, although there are

many ways in which a non-party can become a real

party in interest, we need only focus on the

arguments raised by Patent Owner. Id. (“an IPR

petitioner’s initial identification of the real parties in

interest should be accepted unless and until

disputed by a patent owner” by “produc[ing] some

evidence to support its argument that a particular

third party should be named a real party in

interest”); Wi-Fi One, LLC v. Broadcom Corp., 887

F.3d 1329, 1338 n.3 (Fed. Cir. 2018) (“the Board

properly focused on the factors [the patent owner]

raised in its argument”).

“[A]t a general level, the ‘real party-in-interest’ is

the party that desires review of the patent.” Office

Patent Trial Practice Guide, 77 Fed. Reg. 48,756,

48,759 (Aug. 14, 2012) (“Trial Practice Guide”).

“Whether a party who is not a named participant in a

given proceeding nonetheless constitutes a ‘real partyin-interest’ . . . to that proceeding is a highly factdependent question” with no “bright line test,” and is

assessed “on a case- by-case basis.” Trial Practice

Guide, 77 Fed. Reg. at 48,759 (citing Taylor v. Sturgell,

553 U.S. 880, 893–95 (2008)). “Determining whether a

non- party is a ‘real party in interest’ demands a

flexible approach that takes into account both

equitable and practical considerations, with an eye

toward determining whether the non-party is a clear

beneficiary that has a preexisting, established

relationship with the petitioner.” Applications in

Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351

(Fed. Cir. 2018). Not just any relationship will be

sufficient. Instead, Congress intended the term “real

party in interest” to have its “common-law meaning,”

id., and, “when it comes to evaluating the relationship

21a

between a party bringing a suit and a non-party, the

common law seeks to ascertain who, from a ‘practical

and equitable’ standpoint, will benefit from the redress

that the chosen tribunal might provide.” Applications,

897 F.3d at 1349 (quoting Trial Practice Guide, 77 Fed.

Reg. at 48,759).

2. Application to Puzhen Life HK

Patent Owner argues that Puzhen Life HK should

have been named as “a real party-in-interest because

[it] is a parent company controlling [Petitioner] and

owning the substantive, U.S. intellectual property

rights.” PO Resp. 2. 8 The record developed at trial

establishes the following facts. Puzhen Life HK is a

Chinese company with two directors, Song BaoJie

and Li DongSheng. Ex. 2005, 2, 5, 9. Petitioner is a

New York limited liability company. Ex. 2006, 7.

From its founding on March 24, 2011, until 2013,

Petitioner’s sole member was Song BaoJie, one of the

directors of Puzhen Life HK. Ex. 2009, 15 (Response

to Interrogatory No. 10). Since then, Petitioner’s sole

member has been Li DongSheng. Id. A website exists

for Puzhen in general. Ex. 2008. That website was

registered by a third entity altogether, Puzhen Life

LLC. Ex. 2007. The contact information on the

8 Patent Owner’s only argument on the trial record is contained

in the Patent Owner Response. The Preliminary Response

forms no part of the record of the trial in this proceeding. Paper

11, 3 (“any arguments . . . not raised in the response will be

waived,” with no exclusion from this rule for arguments raised

in the preliminary response); see Cook Group Inc. v. Boston Sci.

Scimed, Inc., Case IPR2017-00135, slip op. at 49 (PTAB Nov.

15, 2018) (Paper 82) (“we generally do not allow Patent Owner

to carry over arguments from the Preliminary Response”). In

any case, the argument Patent Owner presented in the

Preliminary Response was identical to the argument it

presented during trial. Compare Paper 5, 3, with PO Resp. 2.

22a

website lists Petitioner and Puzhen Life HK as the

United States and Hong Kong offices, respectively, of

Puzhen generally. Ex. 2008, 2. A power of attorney for

Petitioner in this proceeding was signed by Bao Jie

Song, who is a director of Puzhen Life HK and who

identifies herself on the power of attorney as the chief

executive officer of Petitioner. Paper 8. Petitioner is

not the assignee of any United States patents or

trademarks, but Puzhen Life HK is. Ex. 2010; Ex.

2011. Finally, during an appeal to the Federal

Circuit, Petitioner filed a Certificate of Interest

identifying Puzhen Life HK among its “[p]arent

corporations and publicly held companies that own

10% or more of stock in the party.” Ex. 2022.

As Patent Owner argues, these facts at most

establish that Puzhen Life HK is a parent company

of Petitioner. Some of the individual facts, however,

are not consistent with a finding that Puzhen Life

HK is the parent company of Petitioner. For

example, Puzhen’s website appears to identify

Petitioner and Puzhen Life HK as sister companies

operating in different countries. Ex. 2008, 2. And the

sole owners—referred to as members in the context

of a limited liability company—of Petitioner are and

always have been individual people, not Puzhen Life

HK. Ex. 2009, 16. Nevertheless, given the other

established

facts,

particularly

Petitioner’s

identification of Puzhen Life HK as a parent

company of Petitioner in the Federal Circuit

Certificate of Interest, we find that the evidence as a

whole establishes that Puzhen Life HK is a parent

company of Petitioner. Ex. 2022.

Without more, we generally have not treated a

non-party who is the parent company of the

petitioner as a real party in interest who must be

23a

named under 35 U.S.C. § 312(a)(2). Par Pharm., Inc.

v. Jazz Pharms., Inc., Case IPR2015-00546, slip op.

at 13–19 (PTAB July 28, 2015) (Paper 25). We do not

interpret Applications as having changed this rule

such that all parent companies of petitioners for

inter partes reviews are per se RPIs. First, the

traditional rule is that mere status as a corporate

parent is insufficient to render an entity a real party

in interest (or even as falling within the broader

category of a privy), and Applications preserved the

common-law meaning of “real party in interest.” 897

F.3d at 1351; see IPR2017-02197 Taylor v. Sturgell,

553 U.S. 880, 893–95 (2008) (summarizing the

common- law rule as recognizing six types of

relationships that constitute privity, but not

including a parent-child corporate relationship

among them); Trial Practice Guide, 77 Fed. Reg. at

48,759 (even some parties qualifying as privies do

not need to be identified as real parties in interest).

Second, Applications did not involve a corporate

parent who was unnamed as an RPI. 897 F.3d at

1339 (describing the unnamed, alleged RPI as “one

of [the petitioner’s] clients”). Thus, we are not

persuaded that Puzhen Life HK’s status as the

parent company of Petitioner, by itself, is sufficient

to render Puzhen Life HK an RPI in this proceeding.

Something more is required.

Under Applications, relevant factors for

determining whether a non- party is an RPI include

the non-party’s relationship with the petitioner, the

non-party’s relationship to the petition, and the

nature of the entity filing the petition. 897 F.3d at

1351. Here, none of these factors suggests that

Puzhen Life HK is a “clear beneficiary” with a

24a

sufficient “preexisting, established relationship with

the petitioner.” Id.

As discussed above, the relationship between

Puzhen Life HK and Petitioner is that of parent and

subsidiary companies. Although it could be argued

that the parent company of the petitioner always

“has a preexisting, established relationship with the

petitioner” and is likely to benefit when and to the

degree that its subsidiary benefits, the preservation

of the common- law meaning of RPI in Applications

suggests that the mere establishment of parentcompany status is insufficient to render a non-party

an RPI. As the Federal Circuit has held in the

context of privity, “control of a party . . . through

stock ownership or corporate officership is not

enough to create privity, absent a showing that the

corporate form has been ignored.” Gillig v. Nike, Inc.,

602 F.3d 1354, 1362 (Fed. Cir. 2010). We see no

reason why this rationale does not apply equally to

the determination of whether a relationship is

sufficient to give rise to an RPI. As there is no

evidence before us that Petitioner and Puzhen Life

HK have ignored the corporate form, we do not

conclude

that

the

mere

parent-subsidiary

relationship alleged here is sufficient to make

Puzhen Life HK an RPI.

We have been directed to no evidence of record

relating to Puzhen Life HK’s relationship to the

present Petition. PO Resp. 2–5. Accordingly, there is

no evidence that Puzhen Life HK directed or assisted

in the preparation and filing of the Petition. 9 Absent

9 Patent Owner did not seek any additional discovery into the

question of what role, if any, Puzhen Life HK may have played

in preparing or filing the Petition.

25a

such evidence, we do not presume that Puzhen Life

HK’s status as a parent of Petitioner means that

Puzhen Life HK was involved in preparing or filing

the Petition.

Finally, we note that this is not a case in which,

even if it had been established that Puzhen Life HK

sought to use Petitioner as a proxy to file and litigate

what should be Puzhen Life HK’s Petition, Puzhen

Life HK has achieved any clear benefit it would not

have achieved by filing and litigating the Petition

itself. In some cases, the non-party is barred by 35

U.S.C. § 315(b) from filing a Petition for inter partes

review because it has waited too long after being

served with an infringement complaint, and the nonparty seeks to file a petition through a proxy. This is

not one of those cases. Puzhen Life HK has never

been accused of infringing the challenged patent, but

Petitioner has. Ex. 1030, 23 (identifying doTERRA,

Petitioner, and Puzhen, LLC as “Defendants”), 33–

34 (accusing only “Defendants” of infringing the ’130

patent). On this record, it does not appear that

Puzhen Life HK would have had anything to gain by

hiding behind Petitioner as a proxy.

Because the relationships Puzhen Life HK has to

Petitioner, to the Petition, and to this proceeding are

not sufficiently close, and because the benefits of this

proceeding to Puzhen Life HK are not sufficiently

great, we conclude that the record supports a

conclusion that Petitioner’s RPI identification is not

incomplete for failure to identify Puzhen Life HK.

3. Application to doTERRA

Patent Owner argues that doTERRA should have

been named as a real party in interest because it has

“agree[d] to be bound by the determination of issues

26a

in an action between others.” PO Resp. 5. Specifically,

Patent Owner argues that doTERRA and Petitioner

“are co-defendants in an underlying, related [piece of]

litigation,” in which doTERRA has “stipulated to the

same estoppel applicable to Petitioner [arising] from

this proceeding.” Id. at 6. Patent Owner also notes

that, at the time the present Petition was filed, only

doTERRA, not Petitioner, was accused of infringing

the ’130 patent. Id.

Patent Owner cites Taylor as supporting a

conclusion that doTERRA’s agreement to be bound

by the estoppel arising from the present proceeding

renders it a real party in interest. Id. at 5 (citing

Taylor, 128 S. Ct. at 2164). But the rule established

in Taylor is not that anyone who agrees to be bound

by the determination of issues in an action between

others is an RPI. Instead, the rule is that “[a] person

who agrees to be bound by the determination of

issues in an action between others is bound in

accordance with the terms of his agreement.” Taylor,

553 U.S. at 893 (quoting 1 Restatement (Second) of

Judgments § 40, p. 390 (1980)). Here, under the

agreement in question, doTERRA stated that it was

“willing to be bound by the same estoppel that would

apply [to] Puzhen based on the final result (after all

appeals) of the [present] IPR.” PO Resp. 6 (quoting

Ex. 2013, 7). Under Taylor, doTERRA is bound by

the terms of this agreement, meaning that it is

bound by any estoppel applicable to Petitioner, and a

later tribunal may preclude doTERRA from pursuing

similar challenges in a subsequent proceeding. The

terms of the agreement, however, do not apply to the

present proceeding, because no estoppel has yet

attached to Petitioner (and none will until the entry

of this Decision). See 35 U.S.C. § 315(e).

27a

Under Applications, relevant factors for

determining whether a non- party is an RPI include

the non-party’s relationship with the petitioner, the

non-party’s relationship to the petition, and the

nature of the entity filing the petition. 897 F.3d at

1351. Here, none of these factors suggests that

doTERRA is a “clear beneficiary” with a sufficient

“preexisting, established relationship with the

petitioner.” Id.

According to Patent Owner, the relationship

between doTERRA and Petitioner is that of customer

and supplier. Ex. 1030, 27. A standard customersupplier relationship does not render the absent

member of the relationship an RPI. WesternGeco LLC

v. ION Geophysical Corp., 889 F.3d 1308, 1321 (Fed.

Cir. 2018) (“ION and PGS had a contractual and fairly

standard

customer-manufacturer

relationship

regarding the accused product,” which “does not

necessarily suggest that the relationship is sufficiently

close . . . that the parties were litigating . . . the IPRs

as proxies for the other.”). Thus, the customersupplier relationship between doTERRA and

Petitioner does not render doTERRA an RPI.

The case is similar with respect to the

relationship of doTERRA and Petitioner as codefendants in an infringement lawsuit. Without

more, mere status as a co-defendant is insufficient to

render a non-party an RPI per se. Panties Plus, Inc.

v. Bragel Int’l, Inc., Case IPR2017-00044, slip op. at

7 (PTAB Apr. 12, 2017) (Paper 6).

We have been directed to no evidence of record

relating to doTERRA’s relationship to the present

Petition. PO Resp. 5–6. Accordingly, there is no

evidence that doTERRA directed or assisted in the

28a

preparation and filing of the Petition. 10 Absent such

evidence, we do not presume that doTERRA’s status

as a co-defendant in the related infringement

lawsuit means that doTERRA was involved in

preparing or filing the Petition.

Finally, as was the case with Puzhen Life HK,

there is no evidence that doTERRA has achieved any

clear benefit from Petitioner filing the Petition that

doTERRA would not have achieved by filing and

litigating the Petition itself. The complaint asserting

infringement of the ’130 patent was dated September

29, 2016, so it could have been served no earlier than

that date. Ex. 1030, 37. The Petition in the present

proceeding was filed September 28, 2017, which was

less than one year later, at which time no party

served with the infringement complaint would have

been barred by § 315(b). Pet. 61. Additionally,

doTERRA has agreed to be bound by whatever

estoppel arises against Petitioner from this

proceeding, so, to the extent that doTERRA sought

to use Petitioner as a proxy, doTERRA did not avoid

becoming subject to the consequences of this

proceeding. Ex. 2013, 7.

Because the relationships doTERRA has to

Petitioner, to the Petition, and to this proceeding are

not sufficiently close, and because the benefits of this

proceeding to doTERRA are not sufficiently great,

we conclude that the record supports a conclusion

10 Patent Owner did not seek any additional discovery into the

question of what role, if any, doTERRA may have played in

preparing or filing the Petition

29a

that Petitioner’s RPI identification is not incomplete

for failure to identify doTERRA. 11

B. Claim Construction

In an inter partes review, we construe claim terms

in an unexpired patent according to their broadest

reasonable construction in light of the specification of

the patent in which they appear. 12 37 C.F.R. §

42.100(b) (2016). Claim terms generally are given

their ordinary and customary meaning, as would be

understood by one of ordinary skill in the art in the

context of the entire disclosure. In re Translogic

Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

Petitioner proposes construing two terms: “wall”

and “included circumferential angle.” Pet. 10–11.

Patent Owner disagrees with Petitioner’s proposed

construction of “wall” but does not dispute the

construction of “included circumferential angle.” PO

Resp. 14–16.

11 Because there is no allegation of a time bar under 35 U.S.C. §

315(b), it may be that Petitioner would be permitted to correct its

Petition to remedy any incomplete identification of RPIs under

35 U.S.C. § 312(a)(2). See Lumentum Holdings, Inc. v. Capella

Photonics, Inc., Case IPR2015-00739, slip op. at 3–6 (PTAB Mar.

4, 2016) (Paper 38) (precedential) (holding that Ҥ 312(a) is not

jurisdictional” and that a petitioner therefore may have an

opportunity to correct a failure to comply with § 312(a)(2)).

Because we decide that Petitioner’s RPI identification is not

incomplete for failure to identify either Puzhen Life HK or

doTERRA as an RPI, however, we need not reach the question of

whether such correction is permitted here.

12 A recent amendment to this rule does not apply here, because

the Petition was filed before November 13, 2018. See “Changes

to the Claim Construction Standard for Interpreting Claims in

Trial Proceedings Before the Patent Trial and Appeal Board,” 83

Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt.

42).

30a

1. “Wall”

The term “wall” appears in all three challenged

claims. Specifically, claims 1 and 3 require

“separating out a second distribution of the droplets

by passing the flow through a wall between a first

chamber and a second chamber, the flow path

spiraling

axially

and

circumferentially,

simultaneously and continuously, through an

arcuate channel formed through the wall,” and claim

17 requires “providing a separator” by “creating a

flow path for the flow spiraling axially while passing

in a circumferential direction at a substantially

constant radius around an included angle through a

wall traversed by a spiral channel.” Ex. 1001, 23:22–

41, 23:44–45, 24:39–64. Petitioner argues that “wall”

should be interpreted as “a barrier substantially

separating two spaces.” Pet. 10–11. Patent Owner

argues instead that “wall” should be interpreted as

“‘wall,’ or perhaps ‘wall or plate.’” PO Resp. 14–16.

Both parties agree that the term “wall” includes

the structure described in the Specification of the

’130 patent as flange, plate, or plane 96 of Figure 12.

Pet. 11; PO Resp. 14–15. The difference in the

parties’ positions relates to how far beyond the

structure of Figure 12 the term “wall” may reach.

Patent Owner argues that “wall” should be limited to

“a structure equivalent to the plate 96 described in

the Specification.” PO Resp. 15. There are two

problems with this argument. First, it asks us to

import limitations from the Specification of the ’130

patent.

Although “understanding the claim

language may be aided by explanations contained in

the written description, it is important not to import

into a claim limitations that are not a part of the

claim,” so we decline the invitation to do so here.

31a

Superguide Corp. v. DirecTV Enterprises, Inc., 358

F.3d 870, 875 (Fed. Cir. 2004). In addition, even if it

were proper to import limitations from the

Specification, it would not be appropriate to limit the

claim term “wall” to a “plate” on the basis of the

description of plate 96 in Figure 12 and the

accompanying portion of the Specification of the ’130

patent, because the Specification does not describe

structure 96 solely as a “plate.” Instead, the

Specification describes this structure sometimes as a

“plate,” sometimes as a “plane,” and sometimes as a

“flange.” Ex. 1001, 16:65– 17:17, 18:13–21.

Accordingly, if a “wall” is “a structure equivalent to

the plate 96,” as Patent Owner argues it is, “wall”

must be interpreted at least broadly enough to

encompass a “plane” or a “flange” in addition to a

“plate.”

Patent Owner also argues that a wall cannot be

Petitioner’s

proposed

“barrier

substantially

separating two spaces,” because claim 1 requires the

wall to be “between a first chamber and a second

chamber.” PO Resp. 15. Patent Owner is correct

that, in claim 1, the wall must be located between

two chambers, rather than two spaces. Ex. 1001,

23:22–41. Independent claim 17, on the other hand,

does not specify what type of spaces the wall

separates. Id. at 24:39–64. Accordingly, to the extent

that “chamber” is narrower than “space,” construing

“wall” as incorporating all the limitations of claim 1

would result in an impermissibly narrow

interpretation of the scope of claim 17. Instead, the

proper approach is to acknowledge that, as

Petitioner argues, a wall may separate any two

spaces, but that claim 1 is not satisfied unless those

two spaces are both chambers.

32a

Patent Owner also argues that a wall cannot

“substantially separate two spaces in just any

manner,” because claim 17 requires “a wall

traversed by a spiral channel.” PO Resp. 15–16.

Patent Owner is correct that claim 17 recites “a wall

traversed by a spiral channel.” Ex. 1001, 24:39–64.

Claim 1, on the other hand, requires “an arcuate

channel formed through the wall.” Id. at 23:22–41.

To the extent there is any difference between the

“spiral channel” of claim 17 and the “arcuate

channel” of claim 1, it would be error to limit a wall

to only structures that contain one or the other type

of channel. The better course is to treat a wall as a

barrier that can be traversed by a channel, with

claim 1 satisfied only if there is an arcuate channel

traversing the wall and claim 17 satisfied only if

there is a spiral channel traversing the wall.

Petitioner’s proposed construction is supported by

the language of the claims and written description of

the ’130 patent. Whatever form the structure labeled

96 in Figure 12 takes (flange, plate, or plane), the

purpose of that structure is to define a space below

and a separate space above, with the flow passing

from one space to the other via a channel passing

through the structure. Ex. 1001, 17:15–20 (discussing

flow passing “from below the plate 96 to above the

plate 96”), Fig. 12. Claim 1 makes this purpose clear,

specifying that the wall separates “a first chamber

and a second chamber.” Id. at 23:22–41. For these

reasons, we adopt the construction of “wall” proposed

by Petitioner, and we interpret “wall” as “a barrier

substantially separating two spaces.”

33a

2. “Included Circumferential Angle”

The term “included circumferential angle”

appears in the challenged claims only in claim 3.

Specifically, claim 3 recites a limitation requiring

that “the included circumferential angle [be] from 90

degrees to 360 degrees.” Ex. 1001, 23:44–45.

Petitioner argues that we should construe “included

circumferential angle” as “a measure of degree of

revolution around a longitudinal axis from the

beginning to the end of the channel disclosed in

claim 1.” Pet. 10. Patent Owner makes no argument

regarding how to construe this term. PO Resp. 14–

16. The parties do not disagree about the scope of

claim 3 with respect to the term “included

circumferential angle.” Accordingly, we conclude

that this term does not require express construction.

See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200

F.3d 795, 803 (Fed. Cir. 1999) (“only those terms

need be construed that are in controversy, and only

to the extent necessary to resolve the controversy”).

C. Obviousness over Sevy and Cronenberg

Petitioner argues that the subject matter of

claims 1, 3, and 17 would have been obvious to a

person of ordinary skill in the art given the

teachings of Sevy and Cronenberg. Pet. 17–35.

1. Sevy

Sevy “relates to . . . novel systems and methods

for integrating air supplies, reservoirs and atomizers

into an integrated system.” Ex. 1003, 1:6–8.

According to Sevy, “it would be an advance in the art

to provide an atomizer that provides a better

atomization or a smaller mean or average size of

droplet in the distribution of atomized droplets

34a

compared with prior art devices capable of

atomizing.” Id. at 1:66–2:3.

Sevy discloses

accomplishing this by “rel[ying] on direction change

and momentum of impact to further comminute the

droplets into a more finely atomized mist, while

separating out comparatively larger droplets in a

comparatively very short distance.” Id. at 2:13–19. In

particular, Sevy discloses that large droplets “cannot

move with the air flow, typically because they . . .

will not be able to quickly turn to follow the flow of

air,” causing them to “strike the walls of the

opening.” Id. at 8:64–9:4. Sevy’s disclosed separator

is part of a larger system that is illustrated in Figure

7, reproduced below:

Figure 7 of Sevy depicts “a partially-exploded

perspective view of the atomizer portion of [Sevy’s]

apparatus.” Id. at 4:60–62. In Figure 7, air passed

through nozzle 92 creates a vacuum at siphon 96,

35a

causing liquid to be drawn from reservoir 18. Id. at

8:28–44. This liquid “is partially atomized by the

flow of air through the nozzle.” Id. Figure 7 also

illustrates a separator that “is formed by the main

walls of” atomizer 16 and separator plate 98,

containing aperture 99. Id. at 8:55–63. The flow of

air from the atomizer passes through aperture 99.

Id. at 8:64–65. Large droplets “cannot move with the

air flow” and “will not be able to quickly turn to

follow the flow of air,” causing them to “strike the

walls of the opening . . . or the separator plate.” Id.

at 8:65–9:4. The remaining smaller droplets of liquid

pass into the environment through distributor 17,

while the large droplets of liquid removed by the

separator agglomerate and “drip back into” the

reservoir. Id. at 9:5–43.

2. Cronenberg

Cronenberg relates to “[a] separator adapted for

use as part of a fluid dispenser system for supplying

inhalable fluids.” Ex. 1004, at [57]. “The separator is

adapted to be positioned within the fluid dispenser

system so that the mixture of liquid and gas passes

along [a] tortuous passageway,” causing “the larger

droplets of liquid [to be] removed from the mixture.”

Id. at 2:48–55. This allows the separator “to achieve

the desired vapor and avoid the presence of liquid

droplets in the gas and liquid mixture.” Id. at 1:20–

22.

Cronenberg’s

“tortuous

passageway”

is

illustrated in Figure 3, reproduced below:

36a

Figure 3 depicts the separator and nozzle

disclosed by Cronenberg. Id. at 2:63–67. The

separator includes an inner member with side wall

28 and outer casing 24. Id. at 3:7–13. Extending

along the side wall is continuous helix 32, which

extends radially outward from the side wall. Id. at

3:12–14. The outer diameter of helix 32 is chosen to

fit “in snug engagement with the inner surface” of

outer casing 24. Id. at 4:7–10.

3. Analysis

Petitioner argues that all limitations of claims 1,

3, and 17 are taught or suggested by the combination

of Sevy and Cronenberg. Pet. 17–35. Patent Owner

argues that neither Sevy nor Cronenberg teaches or

suggests the “flow path . . . through a wall” of claim

17 or the “arcuate channel formed through [a] wall”

of claim 1. PO Resp. 16–19. Patent Owner also

37a

argues that a person of ordinary skill in the art

would have had no reason to combine the teachings

of Sevy with the teachings of Cronenberg and that a

person of ordinary skill in the art would not have

had a reasonable expectation of success in combining

those teachings. Id. at 19–21, 26–27. Finally, Patent

Owner argues that the Office has granted patents

containing claims similar to but broader than the

claims challenged here, despite the Office having

been made aware of the existence of both Sevy and

Cronenberg. Id. at 22–26.

a. Claim 1

As Petitioner argues, Pet. 22–27, claim 1 recites a

preamble and seven limitations: “[a] method for

introducing a scent into breathable air,” “providing a

system comprising a reservoir, eductor, and separator

operably connected to one another,” “providing a

liquid constituting an aromatic substance selected by

an operator for the scent to be introduced into the

breathable air,” “drawing a first portion of the liquid

from the reservoir by the eductor passing a flow of

air,” “entraining the first portion of the liquid into the

flow,” “forming droplets of the first portion by at least

one of restricting an area through which the flow

passes and the entraining,” “separating out a second

distribution of the droplets by passing the flow

through a wall between a first chamber and a second

chamber, the flow path spiraling axially and

circumferentially, simultaneously and continuously,

through an arcuate channel formed through the

wall,” and “passing a first distribution of the droplets

out of the separator into the breathable air.”Ex. 1001,

23:22–41.

38a

(1) Preamble

Petitioner argues that Sevy teaches the preamble

of claim 1, a “method for introducing a scent into

breathable air.” Pet. 22–23. Patent Owner does not

dispute Petitioner’s argument or evidence. PO Resp.

16–27. Petitioner is correct. Sevy teaches essential

oils having scents. Ex. 1003, 3:30–34. Moreover,

Sevy teaches entraining these essential oils into

breathing air. Id. at 1:12–16. Accordingly, Petitioner

has shown by a preponderance of the evidence that

the combination of Sevy and Cronenberg teaches the

preamble of claim 1.

(2) “Providing a system comprising a

reservoir, eductor, and separator

operably connected to one another”

Petitioner argues that Sevy teaches a system

comprising an operably connected reservoir, educator,

and separator. Pet. 23. Patent Owner does not

dispute Petitioner’s argument or evidence. PO Resp.

16–27. Petitioner is correct. Sevy teaches drawing

liquid from a reservoir using a vacuum created by an

eductor, with a separator connected downstream of

the eductor. Ex. 1003, 8:40–59, Figs. 7, 9. Accordingly,

Petitioner has shown by a preponderance of the

evidence that the combination of Sevy and

Cronenberg teaches this limitation of claim 1.

(3) “Providing a liquid constituting an

aromatic substance selected by an

operator for the scent to be

introduced into the breathable air”

Petitioner argues that Sevy teaches providing an

aromatic liquid substance selected for the scent it

can introduce into the air. Pet. 23. Patent Owner

39a

does not dispute Petitioner’s argument or evidence.

PO Resp. 16–27. Petitioner is correct. Sevy teaches

“a bottle containing a liquid comprising a scent, such

as an essential oil may be selected from a vendor and

used directly by connection to the atomizer.” Ex.

1003, 3:30–33. Accordingly, Petitioner has shown by

a preponderance of the evidence that the

combination of Sevy and Cronenberg teaches this

limitation of claim 1.

(4) “Drawing a first portion of the liquid

from the reservoir by the eductor

passing a flow of air”

Petitioner argues that Sevy teaches drawing liquid

from the reservoir by passing air through the eductor.

Pet. 24. Patent Owner does not dispute Petitioner’s

argument or evidence. PO Resp. 16–27. Petitioner is

correct. Sevy teaches that “[e]duction by the stream of

air through the nozzle 92 draws a vacuum (e.g.,

reduced pressure) on the siphon 96, drawing liquid

from the reservoir 18.” Ex. 1003, 8:40–44. Accordingly,

Petitioner has shown by a preponderance of the

evidence that the combination of Sevy and

Cronenberg teaches this limitation of claim 1.

(5) “Entraining the first portion of the

liquid into the flow”

Petitioner argues that Sevy teaches entraining

the liquid drawn from the reservoir into the flow of

air. Pet. 24. Patent Owner does not dispute

Petitioner’s argument or evidence. PO Resp. 16–27.

Petitioner is correct. Sevy teaches that “[t]he liquid

from the reservoir is partially atomized by the flow

of air through the nozzle 92 as it educts the liquid.”

Ex. 1003, 8:40–44. Moreover, Sevy teaches

entraining the liquid from its reservoir into

40a

breathing air. Id. at 1:12–16. Accordingly, Petitioner

has shown by a preponderance of the evidence that

the combination of Sevy and Cronenberg teaches this

limitation of claim 1.

(6) “Forming droplets of the first portion

by at least one of restricting an area

through which the flow passes and

the entraining”

Petitioner argues that Sevy teaches forming

droplets of the liquid it draws from its reservoir by

entraining the liquid in the flow of air. Pet. 24. Patent

Owner does not dispute Petitioner’s argument or

evidence. PO Resp. 16–27. Petitioner is correct. As

discussed above, Sevy teaches that “[t]he liquid from

the reservoir is partially atomized by the flow of air

through the nozzle 92 as it educts the liquid.” Ex.

1003, 8:40–44. Moreover, Sevy teaches forming

droplets of the liquid. Id. at 8:45–54. Accordingly,

Petitioner has shown by a preponderance of the

evidence that the combination of Sevy and

Cronenberg teaches this limitation of claim 1.

(7) “Separating out a second distribution

of the droplets by passing the flow

through a wall between a first

chamber and a second chamber, the

flow path spiraling axially and

circumferentially,

simultaneously

and continuously, through an arcuate

channel formed through the wall”

Petitioner argues that the combination of Sevy

and Cronenberg teaches this limitation of claim 1.

Pet. 24–27. Patent Owner argues that neither

reference individually teaches or suggests this

limitation, because neither reference teaches or

41a

suggests the recited “arcuate channel formed

through the wall.” PO Resp. 16–19. Patent Owner

also argues that a person of ordinary skill in the art

would not have had a reason to combine the

teachings of Sevy with those of Cronenberg to arrive

at this limitation of claim 1. Id. at 19–21, 26–27.

There is evidence to support Petitioner’s

argument. First, Sevy teaches separating some

droplets from the mixed droplet-air flow by passing

the flow through an orifice in a wall between a first

chamber and a second chamber. Ex. 1003, 8:64–9:2

(“[T]he separator plate 98 passes the flow of air from

the atomizer 16 through apertures 99 therein.

Droplets that . . . have too large a size and mass will

not be able to quickly turn to follow the flow of air.”).

Second, Cronenberg teaches forcing a mixture of air

and water droplets through a helical channel “to

cause centrifugal force to push . . . water droplets out

of the mixture.” Ex. 1004, 5:37–43, Fig. 3.

Cronenberg also teaches that “[o]ther types of radial

surfaces can . . . be utilized, such as . . . arcuate

passageways in place of the helix.” Id. at 3:12–21.

Mr. Smith testifies that a person of ordinary skill in

the art “would [have] replace[d] the aperture(s) in

plate 98 with the helical pathway of Cronenberg.”

Ex. 1007, 49–50. Where, as here, the prior art

teaches two alternative methods for achieving the

same result, it likely would have been obvious to

substitute one for the other. In re Fout, 675 F.2d 297,

301 (CCPA 1982) (“Because both Pagliaro and

Waterman teach a method for separating caffeine

from oil, it would have been prima facie obvious to

substitute one method for the other.”); see KSR Int’l

Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (an

invention is likely obvious if it is no “more than the

42a

predictable use of prior art elements according to

their established functions”). Thus, Petitioner has

directed us to evidence showing that it would have

been obvious to substitute an arcuate channel, as

taught by Cronenberg, for the straight orifice in

Sevy’s plate. When this substitution is made, the

combination of Sevy and Cronenberg teaches using

an arcuate passageway to separate liquid droplets

from a mixed air-droplet flow as the flow moves from

a chamber on one side of a wall to a chamber on the

other side of the wall.

Patent Owner argues that, despite this evidence,

Petitioner has not shown that claim 1 would have

been obvious over the combination of Sevy and

Cronenberg, because neither Sevy nor Cronenberg

individually teaches or suggests “an arcuate channel

formed through the wall.” PO Resp. 16–19. Patent

Owner is correct that neither reference, considered

by itself, teaches forming an arcuate channel

through a wall for the purpose of separating liquid

droplets out of a mixed air-droplet flow. Sevy’s

separator passes its flow through a wall, but not

using an arcuate passageway. Ex. 1003, 8:64– 9:2.

Cronenberg teaches accomplishing the same type of

separation using an arcuate passageway, but not one

passing through a wall. Ex. 1004, 3:12–21, 5:37–43,

Fig. 3. Instead, Cronenberg’s arcuate or helical

passageway is placed between two structures, an

inner member with side wall 28 and an outer casing

24. Id. at 3:7–13. But Petitioner does not argue that

either Sevy or Cronenberg alone teaches or suggests

an arcuate passageway through a wall. Pet. 24–27.

Instead, Petitioner argues that a person of ordinary

skill in the art would have combined the teachings of

Sevy with the teachings of Cronenberg to arrive at

43a

an arcuate passageway through a wall as a means of

separating droplets from a mixed air-droplet flow.

Id. As discussed above, there is evidence to support

this argument.

Patent Owner counters that a person of ordinary

skill in the art would not have combined the

teachings of Sevy with those of Cronenberg. PO

Resp. 19–21, 26–27. Patent Owner offers several

arguments along these lines. First, Patent Owner

argues that the combination of Sevy and Cronenberg

“changes the principles under which Cronenberg was

designed to operate,” meaning that the teachings of

the references could be combined only through

hindsight inspired by the ’130 patent itself. Id. at

19–20. Patent Owner is correct that a reference

cannot form part of an obviousness combination

when the combination “would require a substantial

reconstruction and redesign of the elements shown

in [the reference] as well as a change in the basic

principles under which the [reference] was designed

to operate.” In re Ratti, 270 F.2d 810, 813 (CCPA

1959). But Petitioner’s proposed combination of Sevy

and Cronenberg is quite different from the

problematic combination in Ratti. In that case, the

proposed combination required a resilient seal when

the reference in question taught a rigid seal. Id.

There is nothing of the sort here. In the proposed

combination of Sevy and Cronenberg, a person of

ordinary skill in the art would have understood that

Sevy’s separation could be accomplished using an

arcuate passageway of the type taught in

Cronenberg, but retaining the plate of Sevy by

replacing Sevy’s orifice with the arcuate passageway.

Pet. 26; Ex. 1007, 51 (depicting “the arcuate

passageway” of Cronenberg placed to traverse a

44a

plate such as the plate of Sevy). There is no evidence

in the record developed at trial that suggests that,

just as rigidity and resiliency were opposite

principles in Ratti, separation by arcuate

passageway through a wall and separation by orifice

through a wall are opposites. Accordingly, we are not

persuaded that Petitioner’s proposed combination

depends upon hindsight.

Patent Owner next argues that a person of

ordinary skill in the art would not have replaced

Sevy’s orifice with an arcuate channel à la

Cronenberg because doing so “would result in

markedly different flow momentums with the

associated structures.” PO Resp. 20 (citing Ex. 2024

¶¶ 111, 122). The evidence Patent Owner cites is the

testimony of David A. Bell, Ph.D., P.E., who states

that “[i]nserting the helix from Cronenberg into the

aperture in Sevy would result in markedly different

flow momentums with the associated structures,” as

well as that a person of ordinary skill in the art

“would not have recognized that the spiral path in

Cronenberg could be used with the aperture in

Sevy.” Ex. 2024 ¶¶ 111, 122. But Dr. Bell does not

provide the factual basis for his testimony on flow

momentum, nor does he explain the reasoning

supporting his conclusions. Because Dr. Bell’s

testimony is conclusory and unsupported, it is

unhelpful and unpersuasive. Exmark Mfg. Co. v.

Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d

1332, 1350 (Fed. Cir. 2018) (conclusory statements

by expert in support of damages analysis cannot

support a verdict); Arendi S.A.R.L. v. Apple Inc., 832

F.3d 1355, 1366 (Fed. Cir. 2016) (conclusory

statements by expert in support of obviousness

analysis may not be relied upon). Moreover, even if

45a

the testimony could support a finding that

incorporating Cronenberg’s concept of a helical or

arcuate passageway for separation into Sevy’s

separation plate would change the flow through the

plate, this would be evidence of nothing more than

the changed geometry of the system, not necessarily

evidence of the concept’s unworkability. Thus, we are

not persuaded by the testimony of Dr. Bell that a

person of ordinary skill in the art would have

avoided incorporating Cronenberg’s concept of a

helical or arcuate passageway for separation into

Sevy’s separation plate.

Patent Owner also argues that the “design and

spacing” of Cronenberg “would not work for an

essential oil aroma diffuser because . . . the small

openings and flow in the same direction would likely

cause all sizes of oil droplets to coalesce as they move

in the same direction with the flow.” PO Resp. 20–

21. This argument is unpersuasive for two reasons.

First, none of the challenged claims requires “an

essential oil aroma diffuser.” Claims 1 and 3 recite

“a liquid constituting an aromatic substance,” and

claim 17 recites “a liquid,” with an optional

limitation that the liquid “constitutes an aromatic

substance.” Ex. 1001, 23:22–41, 24:39–64. These

limitations do not limit the claims to use with oils,

much less essential oils. Second, this argument

ignores Petitioner’s proposed combination, in which

the concept of an arcuate passageway for separation

is taken from Cronenberg and used to replace the

straight orifice through a separation plate in Sevy.

Pet. 26 (“In place of aperture 99 of Sevy, a [person of

ordinary skill in the art] would find it obvious to

substitute Cronenberg’s arcuate channel to achieve a

desired separation.”). Nowhere in this proposed

46a

combination does Petitioner argue in favor of

incorporating the “design and spacing” of

Cronenberg’s helical channel. Thus, we are not

persuaded by this argument that Petitioner has

failed to show that a person of ordinary skill in the

art would have had a reason to combine the

teachings of Sevy and Cronenberg.

Finally, Patent Owner argues that, because

Giroux, Kato, and Stroia “do not teach separation

techniques,” a person of ordinary skill in the art

likely would have concluded that “an arcuate

channel, or a spiral pathway, would not be a good

choice when seeking to achieve separation.” PO

Resp. 26–27. According to Patent Owner, this is

because, in light of the lack of separation teachings

in Giroux, Kato, and Stroia, using Cronenberg’s

arcuate channel to perform separation would have

meant “proceeding contrary to accepted wisdom.” Id.

at 26 (citing In re Hedges, 783 F.2d 1038 (Fed. Cir.

1986)). We do not interpret Hedges as establishing a

rule that, where much of the prior art is silent on a

particular claimed technique, practicing that

technique is “contrary to accepted wisdom.” Instead,

in Hedges, where the claim at issue required a

reaction to proceed at high temperatures, the prior

art

consistently

“suggest[ed]

that

lower

temperatures of reaction were preferable.” 783 F.2d

at 1041. An equivalent situation here might be if

Giroux, Kato, and Stroia all suggested that

separation using a straight orifice through a plate

was better in some important respect than

separation using an arcuate pathway, but Patent

Owner does not argue that this is the case. PO Resp.

26–27. Moreover, even if Giroux, Kato, and Stroia all

taught a different separation method from

47a

Cronenberg, we still would be faced with

Cronenberg’s own teaching that forcing a mixture of

air and liquid droplets through a helical channel

“cause[s] centrifugal force to push . . . water droplets

out of the mixture.” Ex. 1004, 5:37–43. Accordingly,

we are not persuaded by this argument that

Petitioner has failed to show that a person of

ordinary skill in the art would have had a reason to

combine the teachings of Sevy and Cronenberg.

For these reasons, we conclude that Petitioner

has shown by a preponderance of the evidence that a

person of ordinary skill in the art would have had

reason to combine the teachings of Sevy with those

of Cronenberg, and we conclude that Petitioner has

shown by a preponderance of the evidence that the

combination of Sevy and Cronenberg teaches this

limitation of claim 1.

(8) “Passing a first distribution of the

droplets out of the separator into the

breathable air”

Petitioner argues that Sevy teaches passing the

mixture of air and droplets that pass through its

separator into breathable air. Pet. 27. Patent Owner

does not dispute Petitioner’s argument or evidence.

PO Resp. 16–27. Petitioner is correct. Sevy teaches

that its “flow of air passes through the aperture 122 of

the separator plate,” and it “carries with it only those

droplets that are sufficiently small . . . that they will

drift substantially indefinitely with ambient air

movement as they evaporate.” Ex. 1003, 10:65–11:4.

Accordingly, Petitioner has shown by a preponderance

of the evidence that the combination of Sevy and

Cronenberg teaches this limitation of claim 1.

48a

b. Claim 3

Claim 3 depends from claim 1 and adds a

limitation

requiring

that

“the

included

circumferential angle [be] from 90 degrees to 360

degrees.” Ex. 1001, 23:44–45. Petitioner argues that

Cronenberg teaches or suggests this limitation. Pet.

27–29. Patent Owner does not dispute Petitioner’s

argument or evidence. PO Resp. 16–27. Petitioner is

correct. Cronenberg teaches helical channels that

turn through more than 360 degrees from their

entrance to their exit, but there is evidence of record

showing that the amount of rotation through which a

helical channel turns is a result-effective variable.

Ex. 1002, 217–18 (“the length of the arcuate channel

and the size of the included angle are result effective

variables”); Ex. 1004, Fig. 3. When a variable is

recognized as result-effective, “the discovery of an

optimum value of [the] variable . . . is normally

obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA

1977). Thus, Cronenberg at least suggests helical

channels that turn through an angle from 90 degrees

through 360 degrees. Moreover, in addition to

teaching helical channels and depicting those

channels with included circumferential angles greater

than 360 degrees, Cronenberg teaches the use of

“[o]ther types of radial surfaces,” including “arcuate

passageways in place of the helix 32 to accomplish

similar results.” Ex. 1004, 3:12–18. Mr. Smith

testifies that a person of ordinary skill in the art

would have understood that the term “arcuate” in

Cronenberg referred to a curve “like a bow or arch,

which would be less than 360 degrees.” Ex. 1007, 50.

Dr. Bell agrees. Ex. 1028, 223:13–16. Accordingly,

Petitioner has shown by a preponderance of the

49a

evidence that the combination of Sevy

Cronenberg teaches the limitation of claim 3.

and

c. Claim 17

As Petitioner argues, Pet. 29–35, claim 17 recites

a preamble (“a method”) and nine limitations:

“providing a reservoir connection to draw a liquid

from a reservoir,” “providing an eductor connected to

draw the liquid from the reservoir and entrain the

liquid as droplets into a flow of air,” “providing a

separator downstream from the eductor to receive

the flow and divide out the comparatively larger

sizes of droplets from the comparatively smaller

sizes thereof remaining in the flow,” “the providing a

separator, further comprising creating a flow path

for the flow spiraling axially while passing in a

circumferential direction at a substantially constant

radius around an included angle through a wall

traversed by a spiral channel,” “the providing a

separator, further comprising providing a crosssectional area of the flow path having a substantially

constant value within the included angle,” “providing

a nozzle to direct the flow into a surrounding

environment,” “providing a nozzle connection to the

separator,” “providing an eductor connection to the

separator,” and “distributing the system with at

least one of instructions for use, a reservoir, and the

liquid, wherein the liquid constitutes an aromatic

substance selected for the scent to be introduced into

the surrounding environment.” Ex. 1001, 24:39–64.

(1)“Providing a reservoir connection to

draw a liquid from a reservoir”

Petitioner argues that Sevy teaches this

limitation. Pet. 29–30. Patent Owner does not

dispute Petitioner’s argument or evidence. PO Resp.

50a

16–27. Petitioner is correct. Sevy teaches drawing

liquid from a reservoir using an eductor connected to

the reservoir.

Ex. 1003, 8:40–59, Figs. 7, 9.

Accordingly,

Petitioner

has

shown

by

a

preponderance of the evidence that the combination

of Sevy and Cronenberg teaches this limitation of

claim 17.

(2)“Providing an eductor connected to

draw the liquid from the reservoir

and entrain the liquid as droplets

into a flow of air”

Petitioner argues that Sevy teaches this limitation.

Pet. 30. Patent Owner does not dispute Petitioner’s

argument or evidence. PO Resp. 16–27. Petitioner is

correct. Sevy teaches that “[e]duction by the stream of

air through the nozzle 92 draws a vacuum (e.g.,

reduced pressure) on the siphon 96, drawing liquid

from the reservoir 18.” Ex. 1003, 8:40–44. Sevy also

teaches that “[t]he liquid from the reservoir is partially

atomized by the flow of air through the nozzle 92 as it

educts the liquid.” Id. Moreover, Sevy teaches

entraining the liquid from its reservoir into breathing

air. Id. at 1:12–16. Accordingly, Petitioner has shown

by a preponderance of the evidence that the

combination of Sevy and Cronenberg teaches this

limitation of claim 17.

(3)“Providing a separator downstream

from the eductor to receive the flow

and divide out the comparatively

larger sizes of droplets from the

comparatively smaller sizes thereof

remaining in the flow”

Petitioner argues that Sevy teaches this

limitation. Pet. 30–31. Patent Owner does not

51a

dispute Petitioner’s argument or evidence. PO Resp.

16–27. Petitioner is correct. Sevy teaches drawing

liquid from a reservoir using a vacuum created by an

eductor, with a separator connected downstream of

the eductor. Ex. 1003, 8:40–59, Figs. 7, 9. Sevy also

teaches that “[d]roplets that cannot move with the

air flow, typically because they have too large a size

and mass will not be able to quickly turn to follow

the flow of air, and will strike the walls of the

opening 100 or the separator plate 98.” Id. at 8:55–

9:2.

Accordingly, Petitioner has shown by a

preponderance of the evidence that the combination

of Sevy and Cronenberg teaches this limitation of

claim 17.

(4)“The providing a separator, further

comprising creating a flow path for

the flow spiraling axially while

passing

in

a

circumferential

direction at a substantially constant

radius around an included angle

through a wall traversed by a spiral

channel”

Petitioner argues that the combination of Sevy

and Cronenberg teaches this limitation of claim 17.

Pet. 31–33.

Patent Owner argues that the

combination of Sevy and Cronenberg fails to teach or

suggest this limitation for the same reasons

discussed above with respect to the limitation of

claim 1 reciting “separating out a second distribution

of the droplets by passing the flow through a wall

between a first chamber and a second chamber, the

flow path spiraling axially and circumferentially,

simultaneously and continuously, through an

arcuate channel formed through the wall.” PO Resp.

16–19. Patent Owner also argues that a person of

52a

ordinary skill in the art would not have had a reason

to combine the teachings of Sevy with those of

Cronenberg to arrive at this limitation of claim 17.

Id. at 19–21, 26–27.

As discussed above with respect to claim 1, we

find that a person of ordinary skill in the art would

have had a reason to combine the teachings of Sevy

with those of Cronenberg, and we find that the

combined teachings of Sevy and Cronenberg teach

providing a channel that spirals axially while

passing in a circumferential direction around an

included angle through a wall. These findings apply

with equal force here.

With respect to the portion of this limitation

requiring that the radius of curvature of the channel

be “substantially constant,” Petitioner argues that

Cronenberg teaches using a helical flow path of

constant radius to separate droplets from an airdroplet mixture. Pet. 31–32. Patent Owner does not

dispute this point. PO Resp. 16–27. Petitioner is

correct, because Cronenberg’s helix 32 is depicted as

having a constant radius of curvature. Ex. 1004, Fig. 3.

For these reasons, we conclude that Petitioner

has shown by a preponderance of the evidence that

the combination of Sevy and Cronenberg teaches this

limitation of claim 17.

(5)“The providing a separator, further

comprising providing a crosssectional area of the flow path

having a substantially constant

value within the included angle”

Petitioner argues that Cronenberg teaches this

limitation. Pet. 33–34. Patent Owner does not

53a

dispute Petitioner’s argument or evidence. PO Resp.

16–27. Petitioner is correct. Cronenberg teaches that

its helical path is formed by a structure “with a

predetermined spacing and dimensional thickness,”

and it is depicted as having a constant cross-section.

Ex. 1004, 3:12–21, Fig. 3. Accordingly, Petitioner has

shown by a preponderance of the evidence that the

combination of Sevy and Cronenberg teaches this

limitation of claim 17.

(6)“Providing a nozzle to direct the flow

into a surrounding environment”

Petitioner argues that Sevy teaches this

limitation. Pet. 34. Patent Owner does not dispute

Petitioner’s argument or evidence. PO Resp. 16–27.

Petitioner is correct. Sevy teaches that “director 17

may be turned in a particular direction to discharge

a jet of air containing the cloud of smallest atomized

droplets from the reservoir 18.” Ex. 1003, 9:25–28.

Accordingly,

Petitioner

has

shown

by

a

preponderance of the evidence that the combination

of Sevy and Cronenberg teaches this limitation of

claim 17.

(7)“Providing a nozzle connection to the

separator”

Petitioner argues that Sevy teaches this

limitation. Pet. 34. Patent Owner does not dispute

Petitioner’s argument or evidence. PO Resp. 16–27.

Petitioner is correct. Sevy teaches that “[t]he net

flow of air passes through the aperture 122 of the

separator plate 98, on its way into the passages 126

and 128 of the director 17.” Ex. 1003, 10:65–67.

Accordingly,

Petitioner

has

shown

by

a

preponderance of the evidence that the combination

54a

of Sevy and Cronenberg teaches this limitation of

claim 17.

(8)“Providing an eductor connection to

the separator”

Petitioner argues that Sevy teaches this

limitation. Pet. 34–35. Patent Owner does not

dispute Petitioner’s argument or evidence. PO Resp.

16–27. Petitioner is correct. Sevy teaches that

“[e]duction by the stream of air through the nozzle

92 draws a vacuum (e.g., reduced pressure) on the

siphon 96, drawing liquid from the reservoir 18.” Ex.

1003, 8:40–44. Sevy also teaches that “[t]he liquid

from the siphon 96 is atomized into droplets of

various sizes,” with “[t]he entire mixture of air and

droplets pass[ing] through the exit orifice 119 toward

the separator 120.” Id. at 10:37–47. Accordingly,

Petitioner has shown by a preponderance of the

evidence that the combination of Sevy and

Cronenberg teaches this limitation of claim 17.

(9)“Distributing the system with at least

one of instructions for use, a

reservoir, and the liquid, wherein the

liquid constitutes an aromatic

substance selected for the scent to be

introduced into the surrounding

environment”

Petitioner argues that Sevy teaches this

limitation. Pet. 35. Patent Owner does not dispute

Petitioner’s argument or evidence. PO Resp. 16–27.

Petitioner is correct. Sevy teaches both connecting a

reservoir to the remainder of the system and using a

bottle of essential oil “selected from a vendor” as this

reservoir. Ex. 1003, 3:30–33, 6:28–29. Accordingly,

Petitioner has shown by a preponderance of the

55a

evidence that the combination of Sevy

Cronenberg teaches this limitation of claim 17.

and

d. Related Application

As discussed above, Petitioner has shown that a

person of ordinary skill in the art would have had a

reason to combine the teachings of Sevy with those

of Cronenberg, as well as that the combined

teachings of Sevy and Cronenberg teach or suggest

the subject matter of claims 1, 3, and 17. Despite

this, Patent Owner argues that we should conclude

that claims 1, 3, and 17 have not been shown to be

obvious because the Office has issued a Notice of

Allowance of similar claims in a related patent

application. PO Resp. 22–26. Specifically, Patent

Owner argues that claim 40 in U.S. Patent

Application Serial No. 15/297,542 (Ex. 2023, “the

’542 application”) was allowed, even though it is

broader in scope than the challenged claims of the

’130 patent, and even though the examiner of the

’542 application was made aware of the prior art

asserted in this proceeding. Id. For the reasons

discussed below, we are not persuaded that the

examiner’s treatment of claim 40 in the ’542

application shows the nonobviousness of the

challenged claims here.

First, Patent Owner argues that claim 40 “should

be considered broader in scope than claim 1 from the

’130 patent.” Id. at 24. But claim 40 contains

limitations not present in claim 1. For example,

claim 1 recites “an arcuate channel formed through

the wall,” but claim 40 recites “an arcuate channel

defined by a wall formed with a substantially

concave

internal

cross

section

passing

circumferentially and axially, simultaneously,

56a

through the barrier.” Id. at 22–23; see Ex. 1028,

185:7–17. In addition, claim 1 recites “separating out

a second distribution of the droplets,” without

specifying the characteristics of the separated

droplets, but claim 40 recites a limitation on the

droplets that are separated, “wherein the arcuate

channel has a radius and a circumferential length

selected to separate out from the flow comparatively

larger ones of the droplets.” PO Resp. 22–23. Given

these additional limitations, we do not find that

claim 40 of the ’542 application is broader in scope

than claim 1 of the ’130 patent.

Moreover, Patent Owner raises the issue of the

allowance of claim 40 of the ’542 application as a

“secondary indic[ator] of the non-obviousness of

claims 1, 3 and 17.” PO Resp. 22. But “secondary

considerations” include such things as “commercial

success, long felt but unsolved needs, failure of

others, etc.” Graham v. John Deere Co. of Kansas

City, 383 U.S. 1, 17 (1966). The list has expanded to

include evidence of such things as licensing or

copying of the invention at issue and praise by

others, but Patent Owner directs us to no authority

for treating the Office’s allowance of similar claims

as an objective indication of non-obviousness. 13 PO

Resp. 21–26. In any event, as discussed above, claim

13 Even if there were authority for considering the allowance of

similar claims as evidence of nonobviousness, it is not clear

that we would be permitted to weigh such evidence particularly

heavily in our analysis. The Office allowed the challenged

claims, but that allowance does not relieve us of our duty to

determine whether those claims are unpatentable. 35 U.S.C.

§§ 311–319. If the Office’s allowance of the very claims at issue

does not render the challenged claims non-obvious, it is unclear

why the Office’s allowance of merely similar claims would do

so.

57a

40 of the ’542 application has different limitations

than the challenged claims, and the Examiner of

claim 40 considered different evidence than that

presented here. In our view, under these

circumstances, it is better to evaluate each

individual claim on its own merits.

For these reasons, we are not persuaded that the

examiner’s allowance of claim 40 in the ’542

application is evidence that the challenged claims of

the ’130 patent would have been nonobvious.

e. Conclusion

For the reasons discussed above, we conclude that

Petitioner has shown by a preponderance of the

evidence that claims 1, 3, and 17 of the ’130 patent

would have been obvious over the combination of

Sevy and Cronenberg.

D. Asserted Obviousness over Sevy and Giroux

Petitioner argues that the subject matter of

claims 1, 3, and 17 would have been obvious to a

person of ordinary skill in the art given the

teachings of Sevy and Giroux. Pet. 35–43.

1.

Giroux

Giroux relates to “a novel integrated nebulizer

and particle dispersion chamber” that “provides for

delivery of a vortical flow of nebulized particles to

the nostrils.” Ex. 1005, at [57]. According to Giroux,

“particle size and velocity characteristics determine

whether a majority of a medicament will reach the

deep nasal cavities, the paranasal sinuses, the

bloodstream, the circulation (systematic delivery),

the lungs, or drip back down the nose or mouth.” Id.

at 2:20–25. To achieve these beneficial “size and

velocity characteristics,” Giroux teaches forcing the

58a

particles to flow through serpentine or helical baffles

that cause the particles to move in a vortex after

leaving the particle dispersion chamber. Id. at

13:32–42. Figures 14A and 14B of Giroux are

reproduced below:

Figures 14A and 14B of Giroux, reproduced

above, depict the “nasal adapter, particle dispersion

chamber, and tubing” of one embodiment of Giroux,

with Figure 14A being a side view and Figure 14B

being a bottom view. Id. at 4:40–43.

Particle

dispersion chamber 85 includes baffles 100 that are

“shaped so as to create movement of the particles

while in a vortex.” Id. at 13:32–36. In Figures 14A

and 14B, baffles 100 are “shown in a generally

serpentine or helix shape.” Id. at 13:36–38.

59a

2.

Analysis

Petitioner argues that a person of ordinary skill

in the art would have had reason to combine the

teachings of Sevy with the teachings of Giroux and

that those combined teachings teach or suggest

every limitation of claims 1, 3, and 17. Pet. 35–43. As

with the combination of Sevy and Cronenberg

discussed above, Petitioner argues that Sevy by itself

teaches all limitations of the claims except for those

relating to a flow path spiraling axially and

circumferentially through an arcuate channel

formed through a wall (claim 1) or creating a flow

path for flow spiraling axially while passing

circumferentially at a substantially constant radius,

and with a substantially constant cross-sectional

area, around an included angle through a wall (claim

17). Id. As discussed above, we find that Sevy

teaches each of these limitations. For the remaining

limitations, Petitioner relies on a combination of

Giroux and Sevy. Id.

Opposing Petitioner’s arguments, as it did with

respect to the Sevy-Cronenberg ground, Patent

Owner argues that neither Sevy nor Giroux alone

teaches or suggests an arcuate channel formed

through a wall. PO Resp. 27–In addition, as with

the Sevy-Cronenberg ground, Patent Owner argues

that a person of ordinary skill in the art would not

have combined the teachings of Sevy with those of

Giroux. Id. at 28–30, 32–33. Finally, as with the

Sevy-Cronenberg ground, Patent Owner argues that

the allowance of the claims in the related ’542

application is evidence that the similar claims here

are nonobvious. Id. at 31–32.

60a

a. The “Arcuate Channel Formed Through

a Wall” Limitations

Petitioner argues that the limitations of the

challenged claims related to the formation of an

arcuate channel through a wall are taught by the

combination of Sevy and Giroux. Pet. 39–40. Patent

Owner argues that Giroux alone “does not teach a

channel through a wall.” PO Resp. 27–28.

As discussed above with respect to the SevyCronenberg ground, Sevy teaches separating some

droplets from the mixed droplet-air flow by passing

the flow through an orifice in a wall between a first

chamber and a second chamber. Ex. 1003, 8:64–9:2

(“[T]he separator plate 98 passes the flow of air from

the atomizer 16 through apertures 99 therein.

Droplets that . . . have too large a size and mass will

not be able to quickly turn to follow the flow of air.”).

Just as Cronenberg teaches forcing a mixture of air

and liquid droplets through a helical channel “to

cause centrifugal force to push . . . water droplets out

of the mixture,” Ex. 1004, 5:37–43, Giroux teaches

causing the droplets in an air-droplet mixture to be

“swirled into a vortex,” which “act[s] like a clarifier”

by “send[ing] the larger droplets to the outside rings

and . . . keep[ing] the smaller diameter droplets in

the air stream for a longer period of time.” Ex. 1005,

8:60–62, 12:33–37. Giroux teaches achieving this

result by passing “nebulized particles” through a

“particle dispersion chamber” that contains

“baffle[s]” that have a “serpentine or helix shape.”

Id. at 13:32–42. Mr. Smith testifies that a person of

ordinary skill in the art “would [have] replace[d] the

aperture(s) in plate 98 with the helical shaped baffle

of Giroux.” Ex. 1007, 58–59. Thus, the combination

of Sevy and Giroux suggests separating larger

61a

droplets from an air-droplet mixture by passing the

mixture through a wall with an opening defined by a

helical baffle. This satisfies the “arcuate channel

formed through a wall” limitations of the challenged

claims.

b. Claim 3

Claim 3 depends from claim 1 and adds a

limitation

requiring

that

“the

included

circumferential angle [be] from 90 degrees to 360

degrees.” Ex. 1001, 23:44–45. Petitioner argues that

Giroux teaches this limitation. Pet. 40–41. Patent

Owner does not dispute Petitioner’s argument or

evidence. PO Resp. 27–33. Petitioner is correct.

Giroux depicts its helical baffles turning through

more than 90 degrees but less than 360 degrees from

their entrance to their exit. Ex. 1005, Fig. 14A.

Accordingly,

Petitioner

has

shown

by

a

preponderance of the evidence that the combination

of Sevy and Cronenberg teaches the limitation of

claim 3.

c. Reason to Combine

As discussed above, Sevy and Giroux teach or

suggest the limitations of the challenged claims only

if there was a reason for a person of ordinary skill in

the art to combine their teachings. Petitioner argues

that a person of ordinary skill in the art would have

had such a reason. Pet. 36–38. Patent Owner

disagrees. PO Resp. 28–30, 32–33.

Petitioner has shown by a preponderance of the

evidence that a person of ordinary skill in the art

would have had a reason to combine the teachings of

Sevy with those of Giroux. As noted above, Mr.

Smith testifies that a person of ordinary skill in the

62a

art “would [have] replace[d] the aperture(s) in plate

98 with the helical shaped baffle of Giroux.” Ex.

1007, 58–59. Petitioner argues that both Sevy and

Giroux teach separation of larger droplets from the

air-droplet mixture, but Patent Owner argues that

Giroux “has nothing whatsoever to do with

separation.” Pet. 36–38; PO Resp. 29. As discussed

above, Giroux teaches causing the droplets in an airdroplet mixture to be “swirled into a vortex,” which

“act[s] like a clarifier” by “send[ing] the larger

droplets to the outside rings and . . . keep[ing] the

smaller diameter droplets in the air stream for a

longer period of time.” Ex. 1005, 8:60–62, 12:33–37.

Because Giroux teaches keeping smaller droplets in

the air stream longer than larger droplets, it teaches

separating the larger droplets from the air stream.

Accordingly, both Sevy and Giroux teach methods of

removing large droplets from mixtures of air and

liquid droplets. Where the prior art teaches two

alternative methods for achieving the same result, it

likely would have been obvious to substitute one for

the other. Fout, 675 F.2d at 301; see KSR, 550 U.S.

at 417 (an invention is likely obvious if it is no “more

than the predictable use of prior art elements

according to their established functions”). Thus,

Petitioner has directed us to evidence showing that

it would have been obvious to substitute a channel

defined by a helical baffle, as taught by Giroux, for

the straight orifice in Sevy’s plate.

Patent Owner argues that replacing Sevy’s

straight orifice with a helical channel based on

Giroux’s

teachings

“would

render

Sevy

unsatisfactory for Sevy’s intended purpose.” PO

Resp. 29–30. This is allegedly because “Giroux does

not teach separation, but instead teaches mixing and

63a

directing a vortex.” Id. at 30. As just discussed,

however, Giroux teaches “keep[ing] the smaller

diameter droplets in the air stream for a longer

period of time” while “send[ing] the larger droplets to

the outside rings” in order to “clarif[y]” the airdroplet mixture. Ex. 1005, 8:60–62, 12:33–37.

Clarifying the mixture by removing the larger

droplets, while leaving the smaller droplets in place,

is a means of separating the larger and smaller

droplets. Thus, Giroux teaches separation. Because

Giroux teaches separation, incorporating its

teachings into Sevy’s method of separation is not, as

Patent Owner argues, the replacement of a

separation method with a mixing method, and does

not render Sevy unsatisfactory for its purpose of

separating the larger droplets out of the air-droplet

mixture.

The same issue plagues Patent Owner’s

argument that, because Giroux, Kato, and Stroia all

fail to teach that their helical structures can be used

to separate droplets from air-droplet mixtures, “the

majority of the prior art . . . does not teach

separation,” making separation using a helical

structure “contrary to accepted wisdom in the art.”

PO Resp. 32–33. Moreover, Patent Owner argues

that this means that combining the teachings of

Sevy and Giroux violates the rule of Hedges. Id. As

discussed above, we do not interpret Hedges as

establishing a rule that, where much of the prior art

is silent on a particular claimed technique,

practicing that technique is “contrary to accepted

wisdom.”

For these reasons, we conclude that Petitioner

has shown by a preponderance of the evidence that a

person of ordinary skill in the art would have had a

64a

reason to combine the teachings of Sevy with those

of Giroux.

d. Related Application

Patent Owner repeats its argument that the

allowance of claim 40 in the ’542 application shows

the nonobviousness of the challenged claims of the

’130 patent. PO Resp. 31–32. As discussed above,

we do not find the examiner’s allowance of claim 40

in the ’542 application to be persuasive evidence of

the nonobviousness of the challenged claims.

e. Conclusion

For the reasons discussed above, we conclude

that Petitioner has shown by a preponderance of the

evidence that claims 1, 3, and 17 of the ’130 patent

would have been obvious over the combination of

Sevy and Giroux.

E. Asserted Obviousness over Sevy and Kato or

over Sevy and Stroia

Petitioner argues that the subject matter of

claims 1, 3, and 17 would have been obvious to a

person of ordinary skill in the art given the

teachings of Sevy and Kato. Pet. 43–51. Petitioner

also argues that the subject matter of claims 1, 3,

and 17 would have been obvious to a person of

ordinary skill in the art given the teachings of Sevy

and Stroia. Pet. 51–60. As discussed above, we

conclude that all of the challenged claims are

unpatentable over both the combination of Sevy and

Cronenberg and the combination of Sevy and Giroux.

Accordingly, we need not reach the issue of the

unpatentability of the challenged claims on either of

the remaining grounds. Accordingly, in the interest

65a

of conserving the Board’s resources, we decline to

reach those grounds.

F. Motion to Exclude

Patent Owner moves to exclude all or portions of

five exhibits 14 filed by Petitioner, as well as to

exclude

1. Petitioner’s Reply

Patent Owner argues that the entirety of

Petitioner’s Reply to the Patent Owner Response

should be excluded because it raises new arguments

that are not responsive to issues raised in the Patent

Owner Response. Paper 19, 2–3. Patent Owner is

correct that, when a Reply presents new issues for

the first time, the Board is not required to “parse the

reply brief to determine which, if any, parts of that

brief are responsive and which are improper.”

Intelligent Bio-Systems, Inc. v. Illumina Cambridge

Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). The

proper means for raising the question of whether a

Reply raises new issues is not, however, a motion to

exclude evidence. Trial Practice Guide Update 15 16

(“a motion to exclude should [not] address

arguments or evidence that a party believes exceed[]

the proper scope of reply”). Instead, “[i]f a party

believes that a brief filed by the opposing party . . .

exceeds the proper scope of reply,” the party may

either “request authorization to file a motion to

14 In

addition to the Exhibits discussed herein, Patent Owner

originally moved to exclude Exhibits 1007 and 1027, but it has

since withdrawn its motion as to these two Exhibits. Paper 22, 2.

15 Office Patent Trial Practice Guide, August 2018 Update, 83

Fed. Reg. 39,989 (Aug. 2018) (providing link to Trial Practice

Guide Update: https://go.usa.gov/xU7GP (“Trial Practice Guide

Update”)).

66a

strike” or “request authorization for further merits

briefing, such as a sur-reply.” Id. Here, Patent

Owner did not request such authorization. 16 16

Accordingly, Patent Owner’s motion to exclude

Petitioner’s Reply is improper.

Even if Patent Owner’s motion to exclude the

Reply were procedurally proper, we would deny it for

failure to comply with the rules governing motions to

exclude. A motion to exclude “must identify the

objections [it preserves] in the record and must

explain the objections.” 37 C.F.R. § 42.64(c). Here,

the motion to exclude the Reply does not identify or

explain any evidentiary objection previously made of

record. Paper 19, 2–3. Patent Owner argues that its

failure to identify evidentiary objections in the

record, or even to object at all on the record, should

be excused because 37 C.F.R. § 42.23(b), which

governs the proper scope of Petitioner’s Reply, “does

not include a timeframe for the argument.” Paper 22,

4. But Patent Owner asks for exclusion of the Reply

in a motion to exclude, which is governed by 37

C.F.R. § 42.64(c), and which, accordingly, requires

an identification of evidentiary objections in the

record. To the extent that Patent Owner invites us to

treat its request to exclude the Reply as something

other than a motion to exclude, such as a motion to

strike, Patent Owner never requested authorization

to file such a motion, which is a violation of 37 C.F.R.

§ 42.20(b) (“A motion will not be entered without

Board authorization.”). Accordingly, we decline the

invitation.

16 We

note that Petitioner’s Reply was filed after the August

2018 effective date of the Trial Practice Guide Update. Reply 24

(showing filing date of September 10, 2018).

67a

Moreover, we are not persuaded that any portion

of Petitioner’s Reply presents arguments that are

beyond the proper scope of a Reply. Under 37 C.F.R.

§ 42.23(b), “[a] reply may only respond to arguments

raised in the corresponding . . . patent owner

response.” Here, Patent Owner identifies three

portions of the Reply that it contends violate this

rule. Paper 19, 2–3. We are persuaded, however, that

each of the identified portions responds to an

argument raised in the Patent Owner Response.

First, Patent Owner argues that section I.C of the

Reply, comprising “arguments regarding the oneyear bar of 35 U.S.C. § 315(b),” is beyond the scope of

a proper Reply. Id. at 2. As discussed above, the

parties dispute whether Petitioner has properly and

completely identified all real parties in interest, as

required by 35 U.S.C. § 312(a)(2). Patent Owner

raised this argument in its Response. PO Resp. 1–6.

In particular, Patent Owner argued in the Response

that, because of the failure to identify all real parties

in interest, “[t]he Petition . . . cannot be accorded a

filing date.” Id. at 1. In the Reply, Petitioner argues

that, if Patent Owner were to persuade us that the

identification of real parties in interest were

incomplete, dismissal of this inter partes review

would be a particularly harsh penalty, because any

new replacement petition would be barred by §

315(b). Reply 5–7. Accordingly, Petitioner argues

that we should permit correction of the existing

petition instead. Id. at 7–9. All of this is a direct

response to Patent Owner’s argument that the

Petition should be dismissed for failure to identify all

real parties in interest.

Second, Patent Owner argues that pages 9 and

10 of the Reply improperly discuss “new evidence

68a

regarding a determination of a person having

ordinary skill in the art.” Paper 19, 2. As stated

expressly on the complained-of pages, however,

Petitioner’s argument regarding the level of ordinary

skill in the art responds to the argument offered on

the same topic in the Patent Owner Response. Reply

9 (citing PO Resp. 11), 10 (citing PO Resp. 13); see

PO Resp. 11–14 (raising issue of level of ordinary

skill in the art).

Finally, Patent Owner argues that pages 11–15

and 18–20 of the Reply raise “new arguments and

evidence regarding changes or alterations to the prior

art relied upon in the Petition.” Paper 19, 3. But

nearly every paragraph on these pages begins with

the phrase “Patent Owner argues that,” before

summarizing an argument from the Patent Owner

Response and arguing that Patent Owner is incorrect.

Reply 11–15, 18–20. Among the few paragraphs that

do not take this form, nearly all of them cite the

Patent Owner Response and respond to its

arguments. Id. at 13 (citing PO Resp. 20), 18 (citing

PO Resp. 26), 19 (citing PO Resp. 26). It is difficult to

imagine an argument that more clearly responds to

the argument in the Patent Owner Response.

Thus, Patent Owner’s motion to exclude

Petitioner’s Reply is procedurally improper, and it

fails to comply with the rules governing motions to

exclude. Moreover, even considering the merits of

the motion, we are not persuaded that the Reply

exceeds the scope of a proper Reply. Accordingly, we

deny the motion.

2. Exhibits 1022–1025

Patent Owner argues that Exhibits 1022–1025

should be excluded because they support the

69a

argument in Petitioner’s Reply that is allegedly

beyond the scope of a proper Reply. Paper 19, 3–4.

As discussed above, a motion to exclude “must

identify the objections [it preserves] in the record

and must explain the objections.” 37 C.F.R. §

42.64(c). Here, the motion to exclude Exhibits 1022–

1025 does not identify or explain any evidentiary

objections previously made of record. Paper 19, 3–4.

Patent Owner argues that its failure to identify

evidentiary objections in the record, or even to object

at all on the record, should be excused because 37

C.F.R. § 42.23(b), which governs the proper scope of

Petitioner’s Reply and its supporting Exhibits, “does

not include a timeframe for the argument.” Paper 22,

4. But Patent Owner asks for exclusion of these

Exhibits in a motion to exclude, which is governed by

37 C.F.R. § 42.64(c), and which, accordingly, requires

an identification of evidentiary objections in the

record. Thus, we deny the motion to exclude Exhibits

1022–1025.

3. Exhibit 1028

Patent Owner moves to exclude eleven separate

portions 17 of Exhibit 1028, the transcript of a

deposition of David A. Bell, Ph.D., P.E. Paper 19, 4–

7. We discuss each portion separately below.

a. Pages 163–164

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 163, line 3, and page 164,

line 2. Paper 19, 4–5. “An objection to the

admissibility of deposition evidence must be made

Patent Owner does not present its explanation of these

portions of Exhibit 1028 “in order,” as required by 37 C.F.R. §

42.64(c).

17

70a

during the deposition.” 37 C.F.R. § 42.64(a). In the

portion of Exhibit 1028 that Patent Owner moves to

exclude, there is a single objection to a single

question. Ex. 1028, 163:18 (objecting to Ex. 1028,

163:14–17). Accordingly, we deny the motion to the

extent it seeks to exclude anything other than the

question at Ex. 1028, 163:14–17, or the response to

that question, at Ex. 1028, 163:20.

As to the portions of Exhibit 1028 that are the

subject of the objection on the deposition record,

Patent Owner argues that the question at issue

violates Federal Rules of Evidence 403 and 703.

Paper 19, 4–5. Specifically, Patent Owner argues

that the question “requires a speculative response

from the deponent.” Id.; see also Paper 22, 6 (arguing

that all hypothetical questions to Dr. Bell call for

“speculative responses based on alterations or

changes to the prior art not previously considered”

and, accordingly, “are not reliable evidence”). 18 We

are not persuaded that the question and answer at

issue should be excluded under either rule.

Rule 403 provides that we “may exclude relevant

evidence if its probative value is substantially

outweighed by a danger of one or more of the

following: unfair prejudice, confusing the issues, . . .

undue delay, wasting time, or needlessly presenting

cumulative evidence.” Fed. R. Evid. 403. 19 Patent

18 The

argument in Patent Owner’s Reply in support of its

motion to exclude covers eleven pages. Paper 22. This far

exceeds the five pages allowed for a reply in support of a

motion. 37 C.F.R. § 42.24(c)(2). Notwithstanding Patent

Owner’s violation of this rule, we consider the entire Reply.

19 The portion of Federal Rule of Evidence 403 regarding

“misleading the jury” does not apply in inter partes review

proceedings. 37 C.F.R. § 42.62(b).

71a

Owner does not explain why a question that

“requires a speculative response from the deponent”

necessarily calls for a response that is at danger of

causing unfair prejudice, confusing the issues, undue

delay, wasting time, or presenting needlessly

cumulative evidence. Paper 19, 4–5. Considering

each of these issues separately, we are not

persuaded that it is possible for a single question

and answer at a deposition, particularly a single

question and answer that together take up only five

lines of a nearly 300-page deposition transcript, can

cause either undue delay or a waste of time. As to

unfair prejudice and confusion of the issues, the

question at issue simply asks Dr. Bell for his opinion

as to whether Cronenberg’s helical structure would

qualify as an arcuate channel if it were cut down to

turn through an included angle of less than 360

degrees, which goes to the heart of an important

issue in this proceeding: the scope of the claim term

“arcuate channel.” Ex. 1028, 163:14–20; see Ex.

1028, 161:21–164:2 (providing the context for the

question and the answer at issue). Further, Patent

Owner does not argue that the question and answer

here are cumulative of other evidence of record, or

that, if they are cumulative, they are needlessly so.

Thus, we deny the motion to exclude page 163, line

3, through page 164, line 2, of Exhibit 1028 under

Federal Rule of Evidence 403.

Rule 703 provides that “[a]n expert may base an

opinion on facts or data in the case that the expert

has been made aware of or personally observed.”

Fed. R. Evid. 703. Patent Owner does not explain

why the presentation of a hypothetical question to

an expert witness such as Dr. Bell necessarily

violates this rule. Paper 19, 4–5. In fact, hypothetical

72a

questions may be posed to expert witnesses within

the scope of rule 703. Fed. R. Evid. 703 advisory

committee’s note (“Facts or data upon which expert

opinions are based may, under the rule, be derived

from three possible sources,” one of which is

“presentation at trial,” including “the familiar

hypothetical question.”); see also Fed. R. Evid. 702

committee notes on rules—2000 amendment (“an

expert opinion need not be excluded simply because

it is based on hypothetical facts”). Accordingly, we

deny the motion to exclude page 163, line 3, through

page 164, line 2, of Exhibit 1028 under Federal Rule

of Evidence 703.

b. Pages 43–45

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 43, line 24, and page 45,

line 3, under Federal Rules of Evidence 403 and 703.

Paper 19, 5. “An objection to the admissibility of

deposition evidence must be made during the

deposition.” 37 C.F.R. § 42.64(a). In the portion of

Exhibit 1028 that Patent Owner moves to exclude,

there are two objections, both to the effect that the

questions asked call for speculation. Ex. 1028, 44:3–

4, 44:21–22. Both of the objected-to questions seek

the expert’s opinion regarding whether a helical

structure that turns through more than 360 degrees

would qualify as an arcuate channel. Id. at 43:24–

44:2, 44:14–20. As discussed above, this sort of

hypothetical question is not objectionable under

rules 403 and 703 when asked of an expert witness,

such as Dr. Bell. Accordingly, we deny the motion to

exclude the portion of Exhibit 1028 between page 43,

line 24, and page 45, line 3, under Federal Rules of

Evidence 403 and 703.

73a

c. Page 223

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 223, line 13, and page

223, line 16, “as calling for a legal conclusion.” Paper

19, 5. “An objection to the admissibility of deposition

evidence must be made during the deposition.” 37

C.F.R. § 42.64(a). There is no objection in the portion

of Exhibit 1028 that Patent Owner moves to

exclude. 20 Accordingly, we deny the motion to

exclude the portion of Exhibit 1028 between page

223, line 13, and page 223, line 16.

d. Page 192

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 192, line 10, and page

192, line 23, under Federal Rules of Evidence 403

and 703. Paper 19, 5. “An objection to the

admissibility of deposition evidence must be made

during the deposition.” 37 C.F.R. § 42.64(a). In the

portion of Exhibit 1028 that Patent Owner moves to

exclude, there is a single objection, to the effect that

the question asked calls for speculation, to a single

question. Ex. 1028, 192:21. Accordingly, we deny the

motion to the extent it seeks to exclude anything

other than the question at Ex. 1028, 192:18–20, or

the response to that question, at Ex. 1028, 192:22–

23. The objected-to question seeks the expert’s

opinion regarding whether essential oil placed in the

reservoir of a humidifier would be “entrained and

diffused into” the surrounding environment. Id. at

192:18–20. As discussed above, this sort of

hypothetical question is not objectionable under

20 Even in the motion to exclude itself, Patent Owner does not

identify any Federal Rule of Evidence violated by the question

and answer at issue. Paper 19, 5.

74a

rules 403 and 703 when asked of an expert witness,

such as Dr. Bell. Accordingly, we deny the motion to

exclude the portion of Exhibit 1028 between page

192, line 10, and page 192, line 23.

e. Pages 193–194

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 193, line 4, and page 194,

line 3, under Federal Rules of Evidence 403 and 703.

Paper 19, 5–6. “An objection to the admissibility of

deposition evidence must be made during the

deposition.” 37 C.F.R. § 42.64(a). In the portion of

Exhibit 1028 that Patent Owner moves to exclude,

there is a single objection, to the effect that the

question asked calls for speculation, to a single

question. Ex. 1028, 192:21. Accordingly, we deny

the motion to the extent it seeks to exclude anything

other than the question at Ex. 1028, 193:14–18, or

the response to that question, at Ex. 1028, 193:20–

194:3. The objected-to question seeks the expert’s

opinion regarding whether placing “Mentholatum

material” in the reservoir of a humidifier is an

intended use of such a device. Id. at 193:14–18. This

is a question that might invite some degree of

speculation, but Dr. Bell does not speculate in his

answer, responding instead that humidifiers exist

that operate in a related, but different, way. Id. at

193:23–194:3 (“Vicks has humidifiers that can be

used for that purpose,” but the oil is placed in a

separate “reservoir on top, right next to the

humidifier jet,” rather than in the main water

reservoir.). Accordingly, we deny the motion to

exclude the portion of Exhibit 1028 between page

193, line 4, and page 194, line 3.

75a

f. Page 182

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 182, line 12, and page

182, line 21, under Federal Rules of Evidence 403

and 703. Paper 19, 6. “An objection to the

admissibility of deposition evidence must be made

during the deposition.” 37 C.F.R. § 42.64(a). The

objected-to question seeks the expert’s opinion

regarding whether the helical structure of

Cronenberg would constitute “an arcuate channel

through a wall” if it were cut down “to have less than

a single rotation from beginning to finish” and if a

wall were “pack[ed] around it.” Ex. 1028, 182:12–15.

As discussed above, this sort of hypothetical question

is not objectionable under rules 403 and 703 when

asked of an expert witness, such as Dr. Bell.

Accordingly, we deny the motion to exclude the

portion of Exhibit 1028 between page 182, line 12,

and page 182, line 21, under Federal Rules of

Evidence 403 and 703.

g. Pages 62–64

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 62, line 2, and page 64,

line 5, “as calling for a legal conclusion.” Paper 19, 6.

“An objection to the admissibility of deposition

evidence must be made during the deposition.” 37

C.F.R. § 42.64(a). In the portion of Exhibit 1028 that

Patent Owner moves to exclude, there are three

objections, to three questions, each to the effect that

the question asked calls for a legal conclusion. Ex.

1028, 62:13–14, 62:19, 64:2–3. Accordingly, we deny

the motion to the extent it seeks to exclude anything

other than the questions at Ex. 1028, 62:2–12,

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62:16–18, and 63:24–64:1, or the responses to those

questions, at Ex. 1028, 62:15, 62:20–22, and 64:4–5.

The objected-to questions all seek the expert’s

opinion regarding the differences between claim 1 of

the ’130 patent and the disclosure of Sevy. Id. at

62:2–12, 62:16–18, 63:24–64:1. As discussed above,

the key issues in this case have to do with whether

the disclosure of Sevy, when combined with the

disclosure of Cronenberg, Giroux, Kato, or Stroia,

renders the claims of the ’130 patent obvious. The

question of obviousness is resolved on the basis of

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 skill in the art, and (4) where in

evidence,

so-called

secondary

considerations.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966);

see also KSR, 550 U.S. at 407 (“While the sequence

of these questions might be reordered in any

particular case, the [Graham] factors continue to

define the inquiry that controls.”). Thus, the issue of

the differences between the claims of the ’130 patent

and the disclosure of Sevy is a factual matter, not a

legal one, so Patent Owner’s objection to inquiries

into this matter as calling for a legal conclusion is

not well-founded. Even to the extent that these

questions probe Dr. Bell’s legal conclusion on the

question of the obviousness of the challenged claims,

at the time of the deposition, Dr. Bell had already

provided direct testimony that those claims would

have been non-obvious. Ex. 2024 ¶¶ 91–158. It would

be improper to prohibit Petitioner from probing Dr.

Bell’s legal opinions but to allow the introduction of

those opinions by Patent Owner. Accordingly, we

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deny the motion to exclude the portion of Exhibit

1028 between page 62, line 2, and page 64, line 5.

h. Pages 185–186

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 185, line 7, and page 186,

line 5, “as calling for a legal conclusion.” Paper 19, 6.

“An objection to the admissibility of deposition

evidence must be made during the deposition.” 37

C.F.R. § 42.64(a). In the portion of Exhibit 1028 that

Patent Owner moves to exclude, there is a single

objection to a single question, to the effect that the

question asked calls for a legal conclusion. Ex. 1028,

185:24. Accordingly, we deny the motion to the

extent it seeks to exclude anything other than the

question at Ex. 1028, 185:18–23, or the response to

that question, at Ex. 1028, 185:25–186:5.

The objected-to question seeks the expert’s

opinion regarding the relative breadth of claim 1 of

the ’130 patent and claim 40 of the ’542 application.

Id. at 185:18–23. Patent Owner argues that this

opinion relates to claim construction, “a legal issue,”

making it inappropriate for expert testimony. Paper

19, 6; Paper 22, 10. But Dr. Bell testified as to the

construction of claim terms in his direct testimony.

Ex. 2024 ¶¶ 12–13, 82, 98, 101–158. It would be

improper to prohibit Petitioner from probing Dr.

Bell’s legal opinions but to allow the introduction of

those opinions by Patent Owner. Accordingly, we

deny the motion to exclude the portion of Exhibit

1028 between page 185, line 7, and page 186, line 5.

i. Pages 237–238

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 237, line 12, and page

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238, line 10, under Federal Rules of Evidence 403

and 703. Paper 19, 6–7. “An objection to the

admissibility of deposition evidence must be made

during the deposition.” 37 C.F.R. § 42.64(a). The

objected-to question seeks the expert’s opinion

regarding whether a person of ordinary skill in the

art would have incorporated a helical structure into

Sevy’s separator plate orifice or into some other part

of Sevy. Ex. 1028, 237:12–19. As discussed above,

this sort of hypothetical question is not objectionable

under rules 403 and 703 when asked of an expert

witness, such as Dr. Bell. Accordingly, we deny the

motion to exclude the portion of Exhibit 1028

between page 237, line 12, and page 238, line 10,

under Federal Rules of Evidence 403 and 703.

j. Page 249

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 249, line 9, and page 249,

line 25, under Federal Rules of Evidence 403 and

703. Paper 19, 7. “An objection to the admissibility of

deposition evidence must be made during the

deposition.” 37 C.F.R. § 42.64(a).

There is no

objection in the portion of Exhibit 1028 that Patent

Owner moves to exclude. Accordingly, we deny the

motion to exclude the portion of Exhibit 1028

between page 249, line 9, and page 249, line 25.

k. Page 153

Patent Owner moves to exclude the portion of

Exhibit 1028 between page 153, line 7, and page 153,

line 18, “as calling for a legal conclusion.” Paper 19,

7. “An objection to the admissibility of deposition

evidence must be made during the deposition.” 37

C.F.R. § 42.64(a). There is no objection in the portion

of Exhibit 1028 that Patent Owner moves to

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exclude. 21 Accordingly, we deny the motion to

exclude the portion of Exhibit 1028 between page

153, line 7, and page 153, line 18.

4. Conclusion with Respect to Motion to

Exclude

For the reasons discussed above, we deny Patent

Owner’s motion to exclude (1) Petitioner’s Reply, (2)

the entirety of Exhibits 1022–1025, and

(3) eleven separate portions of Exhibit 1028.

CONCLUSION

Upon consideration of the Petition, Response,

Reply, the briefing on Patent Owner’s motion to

exclude evidence, and the evidence before us, we

determine that Petitioner has proven by a

preponderance of the evidence that claims 1, 3, and

17 would have been obvious over either the

combination of Sevy and Cronenberg or the

combination of Sevy and Giroux. We determine that

Petitioner has not proven by a preponderance of the

evidence that claims 1, 3, and 17 would have been

obvious over either the combination of Sevy and

Kato or the combination of Sevy and Stroia. We also

determine that Petitioner’s identification of real

parties in interest was not incomplete either for

failure to identify Puzhen Life HK or for failure to

identify doTERRA. Finally, we deny Patent Owner’s

motion to exclude Petitioner’s Reply and several

evidentiary exhibits.

21 Even in the motion to exclude itself, Patent Owner does not

identify any Federal Rule of Evidence violated by the question

and answer at issue. Paper 19, 5.

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ORDER

It is hereby

ORDERED that Petitioner has proven by a

preponderance of the evidence that claims 1, 3, and

17 of U.S. Patent No. 9,415,130 B2 are unpatentable;

FURTHER ORDERED that Petitioner has

satisfied the requirement of 35 U.S.C. § 312(a)(2)

that it identify all real parties in interest;

FURTHER ORDERED that Patent Owner’s

motion to exclude is denied;

FURTHER ORDERED that, pursuant to 35

U.S.C. § 318(b), upon expiration of the time for

appeal of this decision, or the termination of any

such appeal, a certificate shall issue canceling claims

1, 3, and 17 of U.S. Patent No. 9,415,130 B2; and

FURTHER ORDERED that, because this is a

Final Written Decision, parties to the proceeding

seeking judicial review of the decision must comply

with the notice and service requirements of 37

C.F.R. § 90.2.

PETITIONER:

Mark A. Miller

Bradley B. Jensen

DORSEY & WHITNEY LLP

miller.mark@dorsey.com

jensen.bradley@dorsey.com

PATENT OWNER:

Gordon K. Hill

PATE BAIRD, PLLC

ghill@patebaird.com

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[ENTERED: JULY 13, 2020]

NOTE: This order is nonprecedential.

___________

United States Court of Appeals

for the Federal Circuit

___________

ESIP SERIES 2, LLC,

Appellant

v.

PUZHEN LIFE USA, LLC,

Appellee

___________

2019-1659

___________

Appeal from the United States Patent and

Trademark Office, Patent Trial and Appeal Board in

No. IPR2017- 02197.

___________

ON PETITION FOR PANEL REHEARING AND

REHEARING EN BANC

___________

Before PROST, Chief Judge, NEWMAN, LOURIE,

DYK, MOORE, O’MALLEY, REYNA, WALLACH,

TARANTO, CHEN, HUGHES, and STOLL,

Circuit Judges.

PER CURIAM.

ORDER

Appellant ESIP Series 2, LLC filed a combined

petition for panel rehearing and rehearing en banc.

The petition was referred to the panel that heard the

82a

appeal, and there- after the petition for rehearing en

banc was referred to the circuit judges who are in

regular active service.

Upon consideration thereof.

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue on July 20, 2020.

FOR THE COURT

July 13, 2020

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

83a

RELEVANT CONSTITUTIONAL

AND STATUTORY PROVISIONS

1. The United States Constitution provides in

relevant part as follows:

Amendment V

No person shall be held to answer for a capital, or

otherwise infamous crime, unless on a presentment

or indictment of a Grand Jury, except in cases

arising in the land or naval forces, or in the Militia,

when in actual service in time of War or public

danger; nor shall any person be subject for the same

offense to be twice put in jeopardy of life or limb; nor

shall be compelled in any criminal case to be a

witness against himself, nor be deprived of life,

liberty, or property, without due process of law; nor

shall private property be taken for public use,

without just compensation.

2. Title 5 of the United States Code provides in

relevant part as follows:

§ 706. Scope of review

To the extent necessary to decision and when

presented, the reviewing court shall decide all

relevant questions of law, interpret constitutional

and statutory provisions, and determine the

meaning or applicability of the terms of an agency

action. The reviewing court shall –

(1) compel agency action unlawfully withheld or

unreasonably delayed; and

(2) hold unlawful and set aside agency action,

findings, and conclusions found to be –

84a

(A) arbitrary, capricious, an abuse of

discretion, or otherwise not in accordance with

law;

(B) contrary to constitutional right, power,

privilege, or immunity;

(C) in excess of statutory jurisdiction,

authority, or limitations, or short of statutory

right;

(D) without observance of procedure required

by law;

(E) unsupported by substantial evidence in a

case subject to sections 556 and 557 of this title

or otherwise reviewed on the record of an agency

hearing provided by statute; or

(F) unwarranted by the facts to the extent that

the facts are subject to trial de novo by the

reviewing court.

In making the foregoing determinations, the

court shall review the whole record or those parts of

it cited by a party, and due account shall be taken of

the rule of prejudicial error.

3. Title 35 of the United States Code provides in

relevant part as follows:

§ 101. Inventions patentable

Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of

matter, or any new and useful improvement thereof,

may obtain a patent therefor, subject to the

conditions and requirements of this title.

85a

§ 103.

Conditions for patentability; nonobvious subject matter

A patent for a claimed invention may not be

obtained, notwithstanding that the claimed

invention is not identically disclosed as set forth in

section 102, if the differences between the claimed

invention and the prior art are such that the claimed

invention as a whole would have been obvious before

the effective filing date of the claimed invention to a

person having ordinary skill in the art to which the

claimed invention pertains. Patentability shall not

be negated by the manner in which the invention

was made.

§ 261. Ownership; assignment

Subject to the provisions of this title, patents

shall have the attributes of personal property. The

Patent and Trademark Office shall maintain a

register of interests in patents and applications for

patents and shall record any document related

thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest

therein, shall be assignable in law by an instrument

in writing. The applicant, patentee, or his assigns or

legal representatives may in like manner grant and

convey an exclusive right under his application for

patent, or patents, to the whole or any specified part

of the United States.

A certificate of acknowledgment under the hand

and official seal of a person authorized to administer

oaths within the United States, or, in a foreign

country, of a diplomatic or consular officer of the

United States or an officer authorized to administer

oaths whose authority is proved by a certificate of a

86a

diplomatic or consular officer of the United States, or

apostille of an official designated by a foreign

country which, by treaty or convention, accords like

effect to apostilles of designated officials in the

United States, shall be prima facie evidence of the

execution of an assignment, grant or conveyance of a

patent or application for patent.

An interest that constitutes an assignment, grant

or conveyance shall be void as against any

subsequent purchaser or mortgagee for a valuable

consideration, without notice, unless it is recorded in

the Patent and Trademark Office within three

months from its date or prior to the date of such

subsequent purchase or mortgage.

§ 271. Infringement of patent

(a) Except as otherwise provided in this title,

whoever without authority makes, uses, offers to

sell, or sells any patented invention, within the

United States or imports into the United States any

patented invention during the term of the patent

therefor, infringes the patent.

§ 311. Inter partes review

(a) IN GENERAL. – Subject to the provisions of

this chapter, a person who is not the owner of a

patent may file with the Office a petition to institute

an inter partes review of the patent. The Director

shall establish, by regulation, fees to be paid by the

person requesting the review, in such amounts as

the Director determines to be reasonable,

considering the aggregate costs of the review.

(b) SCOPE. – A petitioner in an inter partes

review may request to cancel as unpatentable 1 or

more claims of a patent only on a ground that could

87a

be raised under section 102 or 103 and only on the

basis of prior art consisting of patents or printed

publications.

(c) FILING DEADLINE. – A petition for inter partes

review shall be filed after the later of either –

(1) the date that is 9 months after the grant of

a patent; or

(2) if a post-grant review is instituted under

chapter 32, the date of the termination of such

post-grant review.

§ 312. Petitions

(a) REQUIREMENTS OF PETITION. – A petition filed

under section 311 may be considered only if –

(1) the petition is accompanied by payment of

the fee established by the Director under section

311;

(2) the petition identifies all real parties in

interest;

(3) the petition identifies, in writing and with

particularity, each claim challenged, the grounds

on which the challenge to each claim is based,

and the evidence that supports the grounds for

the challenge to each claim, including –

(A)

copies of patents and printed

publications that the petitioner relies upon in

support of the petition; and

(B)

affidavits or declarations of

supporting evidence and opinions, if the

petitioner relies on expert opinions;

88a

(4)

the petition provides such other

information as the Director may require by

regulation; and

(5) the petitioner provides copies of any of

the documents required under paragraphs (2),

(3), and (4) to the patent owner or, if applicable,

the designated representative of the patent

owner.

(b) PUBLIC AVAILABILITY. – As soon as practicable

after the receipt of a petition under section 311, the

Director shall make the petition available to the

public.

§ 313. Preliminary response to petition

If an inter partes review petition is filed under

section 311, the patent owner shall have the right to

file a preliminary response to the petition, within a

time period set by the Director, that sets forth

reasons why no inter partes review should be

instituted based upon the failure of the petition to

meet any requirement of this chapter.

§ 314. Institution of inter partes review

(a)

THRESHOLD. – The Director may not

authorize an inter partes review to be instituted

unless the Director determines that the information

presented in the petition filed under section 311 and

any response filed under section 313 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.

(b) TIMING. – The Director shall determine

whether to institute an inter partes review under

this chapter pursuant to a petition filed under

section 311 within 3 months after –

89a

(1) receiving a preliminary response to the

petition under section 313; or

(2) if no such preliminary response is filed,

the last date on which such response may be

filed.

(c) NOTICE. – The Director shall notify the

petitioner and patent owner, in writing, of the

Director’s determination under subsection (a), and

shall make such notice available to the public as

soon as is practicable. Such notice shall include the

date on which the review shall commence.

(d) NO APPEAL. – The determination by the

Director whether to institute an inter partes review

under this section shall be final and nonappealable.

§ 315. Relation to other proceedings or actions

(a) INFRINGER’S CIVIL ACTION. –

(1) INTER PARTES REVIEW BARRED BY CIVIL

ACTION. – An inter partes review may not be

instituted if, before the date on which the petition

for such a review is filed, the petitioner or real

party in interest filed a civil action challenging

the validity of a claim of the patent.

(2) STAY OF CIVIL ACTION. – If the petitioner

or real party in interest files a civil action

challenging the validity of a claim of the patent

on or after the date on which the petitioner files a

petition for inter partes review of the patent, that

civil action shall be automatically stayed until

either –

(A) the patent owner moves the court

to lift the stay;

90a

(B) the patent owner files a civil action

or counterclaim alleging that the petitioner

or real party in interest has infringed the

patent; or

(C) the petitioner or real party in

interest moves the court to dismiss the

civil action.

(3) TREATMENT OF COUNTERCLAIM. – A

counterclaim challenging the validity of a claim of

a patent does not constitute a civil action

challenging the validity of a claim of a patent for

purposes of this subsection.

(b) PATENT OWNER’S ACTION. – An inter partes

review may not be instituted if the petition

requesting the proceeding is filed more than 1 year

after the date on which the petitioner, real party in

interest, or privy of the petitioner is served with a

complaint alleging infringement of the patent. The

time limitation set forth in the preceding sentence

shall not apply to a request for joinder under

subsection (c).

(c) JOINDER. – If the Director institutes an inter

partes review, the Director, in his or her discretion,

may join as a party to that inter partes review any

person who properly files a petition under section

311 that the Director, after receiving a preliminary

response under section 313 or the expiration of the

time for filing such a response, determines warrants

the institution of an inter partes review under

section 314.

(d) MULTIPLE PROCEEDINGS. – Notwithstanding

sections 135(a), 251, and 252, and chapter 30, during

the pendency of an inter partes review, if another

91a

proceeding or matter involving the patent is before

the Office, the Director may determine the manner

in which the inter partes review or other proceeding

or matter may proceed, including providing for a

stay, transfer, consolidation, or termination of any

such matter or proceeding.

(e) ESTOPPEL. –

(1) PROCEEDINGS BEFORE THE OFFICE. –

The petitioner in an inter partes review of a claim

in a patent under this chapter that results in a

final written decision under section 318(a), or the

real party in interest or privy of the petitioner,

may not request or maintain a proceeding before

the Office with respect to that claim on any

ground that the petitioner raised or reasonably

could have raised during that inter partes review.

(2) Civil actions and other proceedings. –

The petitioner in an inter partes review of a

claim in a patent under this chapter that

results in a final written decision under

section 318(a), or the real party in interest or

privy of the petitioner, may not assert either

in a civil action arising in whole or in part

under section 1338 of title 28 or in a

proceeding before the International Trade

Commission under section 337 of the Tariff

Act of 1930 that the claim is invalid on any

ground that the petitioner raised or

reasonably could have raised during that inter

partes review.

§ 318. Decision of the Board

(a) FINAL WRITTEN DECISION. – In an inter partes

review is instituted and not dismissed under this

92a

chapter, the Patent Trial and Appeal Board shall

issue a final written decision with respect to the

patentability of any patent claim challenged by the

petitioner and any new claim added under section

316(d).

(b) CERTIFICATE. – If the Patent Trial and Appeal

Board issues a final written decision under

subsection (a) and the time for appeal has expired or

any appeal has terminated, the Director shall issue

and publish a certificate canceling any claim of the

patent finally determined to be unpatentable,

confirming any claim of the patent determined to be

patentable, and incorporating in the patent by

operation of the certificate any new and amended

claim determined to be patentable.

(c)

INTERVENING RIGHTS. – Any proposed

amended or new claim determined to be patentable

and incorporated into a patent following an inter

partes review under this chapter shall have the

same effect as that specified in section 252 for

reissued patents on the right of any person who

made, purchased, or used within the United States,

or imported into the United States, anything

patented by such proposed amended or new claim, or

who made substantial preparation therefor, before

the issuance of a certificate under subsection (b).

(d) DATA ON LENGTH OF REVIEW. – The Office

shall make available to the public data describing

the length of time between the institution of, and the

issuance of a final written decision under subsection

(a) for, each inter partes review.

93a

§ 319. Appeal

A party dissatisfied with the final written

decision of the Patent Trial and Appeal Board under

section 318(a) may appeal the decision pursuant to

sections 141 through 144. Any party to the inter

partes review shall have the right to be a party to

the appeal.