`Patent No. 8,365,742 Petition
`For Inter Partes Review
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`JT INTERNATIONAL S.A.,
`Petitioner
`
`v.
`
`Fontem Holdings 1 B.V.,
`Patent Owner
`
`Patent No. 8,365,742
`Issue Date: February 5, 2013
`Title: AEROSOL ELECTRONIC CIGARETTE
`
`Inter Partes Review No. IPR2015-01587
`_________________________________________________________
`
`DECLARATION OF JEFFREY ARTHUR SCHUSTER, Ph.D.,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITIONERS PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,365,742
`
`
`
`
`
`
`
`
`
`
`
`JTI Exhibit 1002, Page 0001
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`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. QUALIFICATIONS ....................................................................................... 1
`III. MATERIALS CONSIDERED ....................................................................... 3
`IV. STANDARDS and DEFINITIONS ............................................................... 4
`V.
`THE ‘742 PATENT ........................................................................................ 6
`A. Overview of the ‘742 Patent ................................................................. 6
`1.
`The Description .......................................................................... 6
`2.
`The Prosecution History of the ‘742 Patent ............................... 7
`3.
`The Issued Claims .................................................................... 11
`VI. CLAIM CONSTRUCTION ......................................................................... 12
`A.
`“Cigarette Bottle Assembly” .............................................................. 12
`B.
`“Cigarette Bottle Assembly is Detachably Located In One End
`of the Shell” ........................................................................................ 14
`“Frame” .............................................................................................. 16
`C.
`“Run-through Hole” ........................................................................... 17
`D.
`“Substantially” .................................................................................... 18
`E.
`“Atomizer” ......................................................................................... 21
`F.
`“Fits With the Atomizer Assembly Inside It” .................................... 23
`G.
`“Porous Component” .......................................................................... 24
`H.
`“Electronic Cigarette” ........................................................................ 25
`I.
`VII. analysis of prior art ....................................................................................... 26
`A.
`Takeuchi ............................................................................................. 26
`B.
`Cox ..................................................................................................... 27
`C.
`Brooks................................................................................................. 28
`D. Whittemore ......................................................................................... 28
`E.
`Liu ....................................................................................................... 29
`F.
`Susa ..................................................................................................... 31
`-i-
`
`
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`JTI Exhibit 1002, Page 0002
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`VIII. OPINIONS REGARDING INVALIDITY OF ‘742 PATENT
`CLAIMS ....................................................................................................... 32
`A. GROUND 1: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`TAKEUCHI ........................................................................................ 33
`B. GROUND 2: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`TAKEUCHI IN FURTHER VIEW OF COX .................................... 39
`C. GROUND 3: CLAIMS 1 AND 3 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`BROOKS ............................................................................................ 40
`D. GROUND 4: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`BROOKS IN FURTHER VIEW OF WHITTEMORE ...................... 44
`GROUND 5: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF LIU IN
`FURTHER VIEW OF SUSA ............................................................. 46
`GROUND 6: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 102 AS BEING ANTICIPATED BY SUSA ................. 50
`G. GROUND 7: CLAIM 3 IS UNPATENTABLE UNDER 35
`U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF SUSA ............... 55
`H. GROUND 8: CLAIMS 1-3 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF SUSA
`IN FURTHER VIEW OF WHITTEMORE ....................................... 56
`IX. CONCLUSION ............................................................................................. 59
`
`E.
`
`F.
`
`
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`
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`-ii-
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`JTI Exhibit 1002, Page 0003
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`

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`
`
`I.
`
`I, Jeffrey Arthur Schuster, Ph.D., declare as follows:
`
`INTRODUCTION
`1.
`
`I have been retained on behalf of Petitioner JT International S.A.
`
`(“JTI”) for the above-captioned Petition for Inter Partes Review (“IPR”) of U.S.
`
`Patent No. 8,365,742 (“the ‘742 patent”).
`
`2.
`
`I am being compensated for my time in connection with this IPR at
`
`my standard consulting rate of $185.00 per hour. My compensation is not affected
`
`by the outcome of this matter.
`
`3.
`
`I also submitted a declaration in support of JTI’s Petition for Inter
`
`Partes Review of U.S. Patent No. 8,375,957 (Inter Partes Review No. IPR2015-
`
`01513). U.S. Patent No. 8,375,957 is directed to an electronic cigarette.
`
`II. QUALIFICATIONS
`4. My curriculum vitae, which is attached to this declaration as Exhibit
`
`A, provides an accurate identification of my background and experience.
`
`5. My field of expertise includes research, development and design of
`
`pulmonary drug delivery devices.
`
`6.
`
`This declaration is based upon my knowledge, skill, experience,
`
`training, and education in my field of expertise, and upon information reviewed in
`
`connection with my retention as a technical expert in this matter.
`
`
`
`1
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`JTI Exhibit 1002, Page 0004
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`

`

`
`
`7.
`
`I graduated from UC Berkeley in 1985 with a B.A. in Physics. I
`
`graduated in 1993 from UC Berkeley with a Ph.D. in Physics.
`
`8. My experience has included co-inventing multiple pulmonary drug
`
`delivery systems, directing a group of engineers and scientists in developing next
`
`generation aerosol drug delivery technology, leading technology transfer of needle
`
`free autoinjector technology, managing multiple companies’ patent portfolios,
`
`leading an inhalation drug delivery technology company, leading drug delivery
`
`business development, leading development of multiple aerosol drug delivery
`
`platforms, and leading a drug delivery technology selection effort for a major
`
`biotechnology company.
`
`9.
`
`About fifteen years ago, I helped evaluate an e-cigarette with a
`
`heating element and nicotine resin that was being sold in China. In particular, I
`
`proposed an e-cigarette design that would be smaller and more compact than the
`
`one I evaluated.
`
`10.
`
`I have contributed to the development of needle-free jet injectors, an
`
`implantable pump, and a flow cytometry system.
`
`11.
`
`I started eficia, which developed an innovative digital health
`
`compliance monitor for drug delivery devices including inhalers and autoinjectors.
`
`12.
`
`I am an inventor on 33 US patents, along with numerous foreign
`
`equivalents, in the areas of pulmonary drug delivery and needle free injection, and
`
`
`
`2
`
`JTI Exhibit 1002, Page 0005
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`

`

`
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`I have managed multiple patent portfolios in these areas encompassing hundreds of
`
`U.S. and foreign patent assets.
`
`13.
`
`I am affiliated with The American Association of Pharmaceutical
`
`Scientists; The American Association for Aerosol Research; The Controlled
`
`Release Society; and The International Society for Aerosols in Medicine.
`
`14.
`
`I have authored several peer-reviewed publications and book chapters
`
`on aerosol drug delivery.
`
`15. Based on my education and years of experience in the field of
`
`pulmonary drug delivery devices, I believe I am qualified to provide opinions
`
`about how one of ordinary skill in the art at the time of the patent filing would have
`
`interpreted and understood the ‘805 patent and the prior art discussed below.
`
`III. MATERIALS CONSIDERED
`16.
`In preparing this declaration, I have reviewed, among other things, the
`
`following materials: (a) the ‘742 patent (Ex. 1001) and its prosecution history
`
`(Exs. 1009-1015); (b) U.S. Patent No. 6,155,268 to Takeuchi (“Takeuchi”, Ex.
`
`1003); (c) U.S. Patent No. 6,234,167 to Cox (“Cox”, Ex. 1004); (d) U.S. Patent
`
`No. 4,947,874 to Brooks (“Brooks”, Ex. 1005); (e) U.S. Patent No. 2,057,353 to
`
`Whittemore (“Whittemore” Ex. 1006); (f) EP 0 845 220 to Susa (“Susa”, Ex.
`
`1007); (g) PCT Patent Publication No. WO 2007/078273 A1 to Liu (“Liu”, Ex.
`
`1008); (h) 14-cv-01645 Joint Claim Construction Chart (Ex. 1016); (i) 14-cv-
`
`
`
`3
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`JTI Exhibit 1002, Page 0006
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`

`

`
`
`01645 Rulings on Claims Construction (Ex. 1017); and (j) JTI’s Petition for Inter
`
`Partes Review of the ‘742 patent.
`
`IV. STANDARDS AND DEFINITIONS
`17.
`I have been informed and understand that if a prior art reference
`
`discloses or contains each and every element of a patent claim arranged in the
`
`manner recited in the claims, either expressly or inherently, it anticipates and
`
`therefore invalidates the claim under 35 U.S.C. § 102. I understand that claim
`
`limitations that are not expressly found in a prior art reference are inherent if the
`
`prior art necessarily functions in accordance with, or includes, the claim
`
`limitations.
`
`18.
`
`I have also been informed and understand that the subject matter of a
`
`patent claim is obvious if the differences between the subject matter of the claim
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`art to which the subject matter pertains. I have also been informed that the
`
`framework for determining obviousness involves considering the following
`
`factors: (i) the scope and content of the prior art; (ii) the differences between the
`
`prior art and the claimed subject matter; (iii) the level of ordinary skill in the art;
`
`and (iv) any objective evidence of non-obviousness. I understand that the claimed
`
`subject matter would have been obvious to one of ordinary skill in the art if, for
`
`
`
`4
`
`JTI Exhibit 1002, Page 0007
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`

`

`
`
`example, it results from the combination of known elements according to known
`
`methods to yield predictable results, the simple substitution of one known element
`
`for another to obtain predictable results, use of a known technique to improve
`
`similar devices in the same way or applying a known technique to a known device
`
`ready for improvement to yield predictable results. I have also been informed that
`
`the analysis of obviousness may include recourse to logic, judgment and common
`
`sense available to the person of ordinary skill in the art that does not necessarily
`
`require explication in any reference.
`
`19.
`
`I have been informed and understand that claims are construed from
`
`the perspective of one of ordinary skill in the art at the time of the claimed
`
`invention, and that during inter partes review, claims are to be given their broadest
`
`reasonable construction consistent with the specification.
`
`20.
`
`In my opinion, a person of ordinary skill in the art would have a four-
`
`year degree in Mechanical Engineering, Electrical Engineering, Physics, or
`
`equivalent, as well as at least four years of experience in designing pulmonary drug
`
`delivery devices. I apply this as the level of ordinary skill in the art for purposes of
`
`my Declaration in support of this IPR.
`
`21.
`
`I have been informed that the relevant date for considering the
`
`patentability of the claims of the ‘742 patent is assumed to be May 2007. Based on
`
`my education and years of experience in the fields of pulmonary drug delivery
`
`
`
`5
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`JTI Exhibit 1002, Page 0008
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`

`

`
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`devices, I believe I am qualified to provide opinions about how one of ordinary
`
`skill in the art at the time of the patent filing in 2007 would have interpreted and
`
`understood the ‘742 patent and the prior art discussed below.
`
`V. THE ‘742 PATENT
`A. Overview of the ‘742 Patent
`1.
`The Description
`22. The ‘742 patent is generally directed to an aerosol electronic cigarette
`
`such as shown in Figure 1 below.
`
`
`
`23. Hollow shell (a) contains an atomizer and battery assembly. (Id. at
`
`2:3037.) A cigarette bottle assembly includes a cigarette holder shell (b)
`
`containing a perforated component for liquid storage 9. (Id. at 3:4951.) The
`
`cigarette bottle assembly fits with the atomizer assembly. (Id. at 3:621.) The
`
`porous component of the atomizer assembly contacts the liquid storage of the
`
`cigarette bottle assembly, achieving “capillary impregnation” for the liquid supply.
`
`(Id. at 4:37–40.)
`
`24. Figures 17 and 18 depicting the atomizer are reproduced below.
`
`
`
`6
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`JTI Exhibit 1002, Page 0009
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`
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`25.
`
`In the above embodiments, porous component 81 is set on frame 82.
`
`(Id. at FIGS. 1, 1718; 5:4246.) Heating wire 83 is wound around the portion of
`
`the porous component which extends across the central opening of run-through
`
`hole 821. (Id. at FIGS. 17 and 18; 5:4249.)
`
`2.
`
`The Prosecution History of the ‘742 Patent
`a.
`Preliminary Amendment
`26. The application which led to the ‘742 Patent was filed on April 5,
`
`2011 as U.S. Application Serial No. 13/079,937. The application was a divisional
`
`application of U.S. Patent Application No. 12/226,818, filed on October 29, 2008
`
`(now U.S. Patent No. 8,156,944), which is the national stage entry of PCT
`
`Application No. PCT/CN2007/001575, filed on May 15, 2007, which claimed
`
`priority to CN Patent Application No. 2006/20090805, filed on May 16, 2006.
`
`(Ex. 1015.) The application was filed with 29 original claims. (See Ex. 1009.) In
`
`an April 5, 2011 Preliminary Amendment, the Applicant cancelled all 29 original
`
`
`
`7
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`JTI Exhibit 1002, Page 0010
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`

`

`
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`claims, added one new claim, and amended the specification. (Id. at 2–3.) 1
`
`Among other changes, the new claim included the additional limitation of the
`
`“cigarette bottle assembly [ . . . ] fits with the said atomizer assembly inside it” (the
`
`original claims simply recited the “cigarette bottle assembly fits with the said
`
`atomizer assembly”). (Id. at 3.) Neither the original nor the amended specification
`
`discuss the atomizer assembly fitting inside the cigarette bottle assembly.
`
`b.
`First Office Action Rejects Claim 30 as Indefinite
`27. On July 19, 2012, the Examiner rejected the sole claim, claim 30.
`
`(Ex. 1010.) Specifically, claim 30 was rejected under 35 USC § 112 as being
`
`indefinite. (Id. at 2.) The Examiner found that it was unclear which “part” and
`
`“side” to which the Applicant was referring in the claim recitation of “the said
`
`porous component is wound with heating wire in the part that is on the side in the
`
`axial direction of the run through hole . . . .” (Id.) Although the Examiner
`
`indicated that Claim 30 would be allowable if the § 112 rejection was overcome,
`
`the Examiner explicitly stated that Hon ‘043 was the closest prior art and that only
`
`one limitation was lacking.
`
`The Examiner believes that the closest prior art record, namely
`the CN 2719043 reference, neither teaches nor reasonably
`
`
`1
`For ease of reference, and to avoid confusion, all citations to office actions
`
`or responses are to the numbered page on the original office action or response.
`
`
`
`8
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`JTI Exhibit 1002, Page 0011
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`

`

`
`
`suggests an aerosol electronic cigarette having the claimed
`combination of structural features, including “an atomizer,
`which includes a porous component and a heating body; the
`said heating body is heating wire . . . the heating wire is
`wound on the said porous component”.
`(Id. at 2–3 (emphasis added).)
`
`c.
`
`Applicant Adds “Heating Wire Wound on a Porous
`Component”
`
`28.
`
`In response to the first office action, on August 3, 2012 Applicant
`
`made amendments to claim 30 in which “porous component is wound with heating
`
`wire in the on the side in the axial direction of the run-through hole” was replaced
`
`with “the heating wire is wound on a part of the porous component that is
`
`substantially aligned with the run-through hole.” (Ex. 1011 at 2 (claim 30) and 4
`
`(Remarks).) Applicant also added new claims 31-32. (Id. at 2–3.) With respect to
`
`these new claims, Applicant argued that “[n]ew claim 31 is similar to claim 30 and
`
`includes the elements of claim 30, but written with more common English usage.”
`
`(Id. at 4.) Further, “[n]ew claim 32 is similar to claims 30 and 31 but describes a
`
`heating wire wound on a part of the porous component substantially aligned with
`
`the run-through hole . . . and with the porous component in contact with a liquid
`
`supply in the housing . . .” (Id.) Finally, Applicant alleged that “[n]ew claims 31
`
`and 32 are believed to be allowable for the same reason that claim 30 is indicated
`
`to be allowable at paragraph 4 of the Office Action.”
`
`
`
`9
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`JTI Exhibit 1002, Page 0012
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`

`

`
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`29. Four days later, on August 7, 2012 Applicant supplemented its
`
`response to the July 19, 2012 Office Action. (Ex. 1012.) In the supplemental
`
`response, the Applicant provided a substitute specification with numerous
`
`substantive changes from the previous version. (Id. at 2.)
`
`d.
`Examiner Interview
`30. Although the prosecution history does not show any additional
`
`rejections after the Applicant filed the August 7, 2012 response, Applicant
`
`conducted an examiner interview on August 14, 2012. (Ex. 1013.) The Examiner
`
`Interview Summary states that during the interview, the Examiner and the
`
`Applicant’s counsel discussed claims 30, 31 and 32 as well as the following prior
`
`art references: “Voges, U.S. Patent No. 6,196,218; Robinson, U.S. Patent No.
`
`1,775,947; Counts, U.S. Patent No. 5,144,962; Brooks, U.S. Patent No. 4,947,875;
`
`Japan Tobacco, EP 0 845 220 B1; Hon Lik WO/2004/095855; and Hon Lik
`
`WO/2005/099494”. According to the Summary, “[n]o agreement was reached.”
`
`(Id.)
`
`e.
`Notice of Allowance
`31. On November 14, 2012, the USPTO issued a notice of allowance.
`
`(Ex. 1014.) The ‘742 Patent issued on February 5, 2013. Claims 30, 31 and 32
`
`issued as claims 1, 2 and 3, respectively. (Ex. 1001.) On July 2, 2013, the USPTO
`
`issued a certificate of correction. (Ex. 1015.)
`
`
`
`10
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`JTI Exhibit 1002, Page 0013
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`

`

`
`
`
`
`The Issued Claims
`
`3.
`I refer to the elements of the issued claims as follows:
`
`32.
`
`U.S. Patent No. 8,365,742
`1[a] An aerosol electronic cigarette, comprising:
`1[b] a battery assembly, an atomizer assembly and a cigarette bottle assembly,
`and a shell that is hollow and integrally formed;
`1[c] the battery assembly electrically connected with the atomizer assembly, and
`both are located in the shell;
`1[d] the cigarette bottle assembly is detachably located in one end of the shell,
`and fits with the atomizer assembly inside it;
`1[e] the shell has through-air-inlets;
`1[f] the atomizer assembly is an atomizer, which includes a porous component
`and a heating body;
`1[g] the heating body is heating wire;
`1[h] the atomizer includes a frame;
`1[i] the porous component is supported by the frame;
`1[j] the heating wire is wound on the porous component;
`1[k] the frame has a run-through hole;
`1[l] a heating wire wound on a part of the porous component that is substantially
`aligned with the run-through hole; and
`1[m] with the porous component also positioned substantially within the
`cigarette bottle assembly.
`2[a] An electronic cigarette, comprising:
`2[b] a battery assembly and an atomizer assembly within a housing with the
`battery assembly electrically connected to the atomizer assembly;
`2[c] a liquid storage component in the housing;
`2[d] with the housing having one or more through-air-inlets;
`2[e] the atomizer assembly including a porous component supported by a frame
`having a run-though hole;
`2[f] a heating wire wound on a part of the porous component in the path of air
`flowing through the run-through hole; and
`2[g] the porous component substantially surrounded by the liquid storage
`component.
`3[a] An electronic cigarette, comprising:
`3[b] a battery assembly and an atomizer assembly within a housing with the
`
`11
`
`JTI Exhibit 1002, Page 0014
`
`

`

`
`
`U.S. Patent No. 8,365,742
`battery assembly electrically connected to the atomizer assembly;
`3[c] with the housing having one or more through-air-inlets and an outlet;
`3[d] the atomizer assembly includes a frame having a run-through hole, and a
`porous component between the frame and the outlet;
`3[e] a heating wire wound on a part of the porous component which is
`substantially aligned with the run-through hole; and
`3[f] with the porous component in contact with a liquid supply in the housing.
`
`VI. CLAIM CONSTRUCTION
`33.
`I have been asked to provide my opinion on the following claim
`
`terms: “cigarette bottle assembly,” “cigarette bottle assembly is detachably located
`
`in one end of the shell,” “frame,” “run-through hole,” “substantially,” “atomizer,”
`
`“fits with the atomizer assembly inside it,” “porous component,” and “electronic
`
`cigarette” by discussing what one of ordinary skill in the art at the time of the
`
`patent filing would regard as the broadest reasonable interpretation consistent with
`
`the specification. My opinion agrees with the position set forth in JTI’s Petition
`
`for Inter Partes Review.
`
`A.
`34.
`
`“Cigarette Bottle Assembly”
`
`I understand that JTI has proposed to construe “cigarette bottle
`
`assembly” as “an enclosed unit containing component parts for cigarette material.”
`
`I agree with JTI’s proposed construction for the reasons explained below.
`
`35. Claim 1 recites “cigarette bottle assembly” which the ‘742 patent
`
`describes as including two parts: a cigarette holder shell (b) and a perforated liquid
`
`storage component 9. (Ex. 1001 at 3:49-51; FIGS. 4, 11-12.) A porous component
`
`
`
`12
`
`JTI Exhibit 1002, Page 0015
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`

`

`
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`absorbs cigarette liquid from the liquid storage component 9. (Id. at 3:63-67.) The
`
`cigarette bottle assembly includes air channel (b1), which serves as the inhalation
`
`port. (Id. at 5:18-21.) In the Summary of the Invention section, the ‘742 patent
`
`just refers to “bottle assembly.” (Id. at 1:30.)
`
`36. Figures 3 and 4 illustrate different views of the detached cigarette
`
`bottle assembly.
`
`
`
`
`
`37. Given the above disclosures, JTI’s proposed construction of “cigarette
`
`bottle assembly” is consistent with the specification.
`
`38.
`
`JTI’s proposed construction is also consistent with the plain meaning
`
`of “assembly.”
`
`39.
`
` McGraw-Hill Dictionary of Scientific and Technical Terms defines
`
`“assembly” as a “unit containing the component parts of a mechanism, machine or
`
`similar device.” (Ex. 1020 at 139.)
`
`
`
`13
`
`JTI Exhibit 1002, Page 0016
`
`

`

`
`
`40. Therefore, I agree the broadest reasonable interpretation of “cigarette
`
`bottle assembly” consistent with the specification is “an enclosed unit containing
`
`component parts for cigarette material.”
`
`B.
`
`“Cigarette Bottle Assembly is Detachably Located In One
`End of the Shell”
`41. Claim 1 further states: “the cigarette bottle assembly is detachably
`
`located in one end of the shell.”
`
`42.
`
`I understand that JTI has proposed to construe “cigarette bottle
`
`assembly is detachably located in one end of the shell” as “the cigarette bottle
`
`assembly located at a boundary or terminal surface of the shell may be separated
`
`and removed from another part of the electronic cigarette.” I agree with JTI’s
`
`proposed construction for the reasons explained below.
`
`43. The ‘742 patent describes that the “cigarette bottle assembly is
`
`detachably located in one end of the shell.” (Id. at Abstract; see also 2:35–38.)
`
`The relationship of these parts is depicted in Figure 1 below illustrating an
`
`assembled electronic cigarette with an exemplary cigarette bottle assembly
`
`attached. Figure 2 below illustrates the detachment of the cigarette bottle assembly
`
`from shell (a) of the electronic cigarette.
`
`
`
`14
`
`JTI Exhibit 1002, Page 0017
`
`

`

`
`
`44. Given the above disclosures, JTI’s proposed construction of “cigarette
`
`bottle assembly is detachably located in one end of the shell” is consistent with the
`
`specification.
`
`45. The Webster’s New World Collegiate Dictionary defines “detach” as
`
`“to unfasten or separate and remove; disconnect; disengage.” (Ex. 1018 at 392.)
`
`American Heritage Dictionary defines “end” as an “outside or extreme edge or
`
`physical limit; a boundary.” (Ex. 1022 at 607.) JTI’s proposed construction is thus
`
`consistent with the plain and ordinary meaning of “cigarette bottle assembly is
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`detachably located in one end of the shell.”
`
`46. Therefore, I agree the broadest reasonable interpretation of “cigarette
`
`bottle assembly is detachably located in one end of the shell” consistent with the
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`specification is “the cigarette bottle assembly located at a boundary or terminal
`
`surface of the shell may be separated and removed from another part of the
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`electronic cigarette.”
`
`
`
`15
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`JTI Exhibit 1002, Page 0018
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`

`

`
`
`C.
`“Frame”
`47. All three independent claims of the ‘742 Patent recite a “frame.” (Ex.
`
`1001 at 6:19, 34 and 45.) For example, Claim 1 states: “the atomizer includes a
`
`frame” and the “porous component is supported by the frame.” (Id. at 6:19–20.)
`
`48.
`
`I understand that JTI has proposed to construe “frame” as a rigid
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`structure, or combination of structures, for direct or indirect support. I agree with
`
`JTI’s proposed construction for the reasons explained below.
`
`49. The ‘742 patent describes the term “frame” as a structure with a
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`porous component “set on” it. (Id. at 5:42–46.) The relationship of these parts is
`
`illustrated in Figures 17 and 18 below, which depicts an exemplary frame 82
`
`providing support for the porous component 81, as well as the heating wire 83.
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`(Id. at 5:42–49.)
`
`
`
`FIG. 17
`
`
`FIG. 18
`
`50. Given the above disclosures, JTI’s proposed construction of “frame”
`
`is consistent with the specification.
`
`
`
`16
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`JTI Exhibit 1002, Page 0019
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`

`

`
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`51. The OXFORD AMERICAN DICTIONARY & THESAURUS defines “frame”
`
`as “the basic rigid supporting structure of anything.” (Ex. 1019 at 581.) JTI’s
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`proposed construction is thus consistent with the plain and ordinary meaning of
`
`“frame.”
`
`52.
`
`I understand the term “frame” was the subject of claim construction
`
`proceedings in Fontem Ventures B.V. and Fontem Holdings 1 B.V. v. VMR
`
`Products, LLC, Case No.: 2:14-cv-01655 (and related cases consolidated with Case
`
`No. 2:14-cv-01645). (Ex. 1017, Court’s Rulings on Claims Construction.) In
`
`those proceedings, the Patent Owner took the position that “frame” means “a
`
`support.” (Id. at 5.) Disagreeing with that construction, the court held that “frame
`
`means a “rigid structure.” (Id. at 7.)
`
`53. Therefore, I agree the broadest reasonable interpretation of “frame”
`
`consistent with the specification is “a rigid structure, or combination of structures,
`
`for direct or indirect support.”
`
`D.
`“Run-through Hole”
`54. All three independent claims of the ‘742 Patent recite a “run-through
`
`hole.” (Ex. 1001 at 6:22, 34 and 45–46.) For example, Claim 1 states: “the frame
`
`has a run-through hole.”
`
`
`
`17
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`JTI Exhibit 1002, Page 0020
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`

`

`
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`55.
`
`I understand that JTI has proposed to construe “run-through hole” as
`
`“a passageway.” I agree with JTI’s proposed construction for the reasons
`
`explained below.
`
`56. The ‘742 patent describes the “run-through hole” as a passageway that
`
`connects with the atomizing chamber (Id. at 3:19–21.) For example, the run-
`
`through hole may be a passageway 821 positioned on the air inflow side of the
`
`atomizer (id. at 5:45–47, FIG. 18), or passageway 813 at the aerosol outflow side
`
`of the atomizer. (Id. at 4:25–30, FIG. 5.)
`
`
`
`
`
`FIG. 18
`
`FIG. 5
`
`57. Given the above disclosures, JTI’s proposed construction of “run-
`
`through hole” is consistent with the specification.
`
`58. Therefore, I agree the broadest reasonable interpretation of “run-
`
`through hole” consistent with the specification is “a passageway.”
`
`E.
`“Substantially”
`59. All three independent claims of the ‘742 patent recite the term
`
`“substantially.” (Ex. 1001 at 6:24, 37 and 49.) Specifically, claims 1 and 3 require
`
`
`
`18
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`JTI Exhibit 1002, Page 0021
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`

`

`
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`a porous component that is “substantially aligned with the run-through hole,” and
`
`claim 2 requires a porous component that is “substantially surrounded by the liquid
`
`storage component.” (Id.)
`
`60.
`
`I understand that JTI has proposed to construe “substantially” as
`
`“largely, whether less or more than a majority.” I agree with JTI’s proposed
`
`construction for the reasons explained below.
`
`61. The ‘742 specification does not refer to “substantially.” The ‘742
`
`patent file history shows that the term “substantially” was added to the claims by
`
`Applicant during prosecution in an August 3, 2012 Amendment. (Ex. 1011.) In
`
`particular, claim 1 was amended to require a porous component that is
`
`“substantially aligned with the run-through hole”; claim 2 was added to require a
`
`porous component that is “substantially surrounded by the liquid storage
`
`component”; and claim 3 was added to require a porous component that is
`
`“substantially aligned with the run-through hole.” (Id.)
`
`62. According
`
`to
`
`the district court’s claim construction
`
`ruling,
`
`“substantially” means “largely but not completely.” (Ex. 1017 at pp. 26.)
`
`63. As to the interpretation of “largely,” the majority of the porous
`
`component need not be aligned with the run-through hole (claims 1 and 3) or
`
`surrounded by the liquid storage component (claim 2).
`
`
`
`19
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`JTI Exhibit 1002, Page 0022
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`

`

`
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`64. The specification never discloses an embodiment in which a majority
`
`of the porous component is “substantially surrounded” by the cigarette bottle
`
`assembly. Rather, the majority of the porous component is not surrounded by the
`
`liquid storage component in the embodiments disclosed in the ‘742 patent
`
`(yellow). (Ex. 1001 at FIG. 1.)
`
`
`
`65. Given
`
`the above disclosures, JTI’s proposed construction of
`
`“substantially” is consistent with the specification.
`
`66.
`
`I understand the term “substantial” to generally mean sufficiently
`
`large or considerable in size or magnitude. Similarly, American Heritage
`
`Dictionary defines “substantial” as “[c]onsiderable in importance, value, degree,
`
`amount, or extent[.]”. (Ex. 1022 at 1791.)
`
`67.
`
`JTI’s proposed construction is thus consistent with the plain and
`
`ordinary meaning of “substantially.”
`
`68. According
`
`to
`
`the district court’s claim construction
`
`ruling,
`
`“substantially” means “largely but not completely.” (Ex. 1017 at p. 26.) I
`
`understand the district court was not required to give the term its broadest
`
`
`
`20
`
`JTI Exhibit 1002, Page 0023
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`

`

`
`
`reasonable interpretation. Under the court’s definition, the majority of the porous
`
`component need not be aligned with the run-through hole (claims 1 and 3) or
`
`surrounded by the liquid storage component (claim 2). Indeed, in the figures of the
`
`‘742 Patent, the majority of the porous component is not surrounded by the liquid
`
`storage component. (See, e.g., Ex. 1001 at FIG. 1.)
`
`69. Because
`
`the
`
`term “substantially” must be given
`
`its broadest
`
`reasonable interpretation, “completely” should not be excluded in this context in
`
`my opinion. Exact alignment of the porous component with the run-through hole
`
`and completely surrounding the liquid storage component are consistent with the
`
`specification of the ‘742 patent. By way of example, the part of the porous
`
`component 81 that the heating wire 83 is wound on appears in the drawings to be
`
`in exact alignment (i.e. no off-set) with the run-through hole, even th