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.

Case: 19-1659 Document: 36 Page: 1 Filed: 05/19/2020
2 ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC

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). 

The ’130 patent states that it overcomes “a number of 

problems” in the prior art that stem from the diffusion of

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“[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 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.

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4 ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC

Claim 1, reproduced below, illustrates the claimed invention: 

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;

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. 

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Puzhen challenged the claims as obvious (i) in view of Sevy1

and Cronenberg2; and (ii) in view of Sevy and Giroux3. 

Sevy relates to “novel systems and methods for integrating air supplies, reservoirs and atomizers into an integrated 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 

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 fluids.” Cronenberg at Abstract. Cronenberg teaches that 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. 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. 

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”).

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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 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 passageway. 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 parties 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 

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ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC 7

issue; the level of ordinary skill in the 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 

v. 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 (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). 

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8 ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC

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 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 “unhelpful and unpersuasive.” J.A. 29. In support of its finding that Giroux’s vortex separates large droplets from the 

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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 droplet-air 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, 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 

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10 ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC

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 combine 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 combine 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 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 

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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 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) real-party-in-interest determination is final 

and non-appealable. 

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 

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12 ESIP SERIES 2, LLC v. PUZHEN LIFE USA, LLC

petition’s timeliness under § 315(b) raises “an ordinary dispute about the 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 refused to institute an inter partes review.” See Click-ToCall, 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 institution-related 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

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