Case IPR2016-01268
`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64(b)(1)
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`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64(b)(1)
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Fontem Holdings 1 B.V.
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`objects to the evidence submitted by Petitioner R.J. Reynolds Vapor Company
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`with the Petition (Paper 2) filed July 2, 2016.
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`Exhibit 1002
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`Patent Owner objects to Exhibit 1002 (Chinese Patent No. 2719043Y to Lik
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`Hon) as originally filed for failing to meet the requirements of 37 C.F.R. §
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`42.63(b) because that exhibit was not filed with an affidavit as defined by 37
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`C.F.R. § 42.2, as discussed below with respect to Exhibit 1003.
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`Exhibit 1003
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`Patent Owner objects to Exhibit 1003 (Certified English translation of
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`Chinese Pat. No. 2719043Y to Lik Hon) as originally filed for failing to provide a
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`translation in accordance with 37 C.F.R. § 42.63(b). Specifically, Exhibit 1003
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`was not filed with an affidavit, as defined by 37 C.F.R. § 42.2, attesting to the
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`accuracy of the translation.
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`Exhibit 1005
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`Patent Owner objects to Exhibit 1005 (Application Data Sheet of April 5,
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`2011 Filed in U.S. Pat. Appl. No. 13/079,937) as an incomplete copy, and thus an
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`inadmissible duplicate pursuant to FRE 1002 and 1003.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Patent Owner further objects to Exhibit 1005 as creating unfair prejudice,
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`confusing the issues, or as a waste of time pursuant to FRE 403. The Board did not
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`rely on Exhibit 1005 in its decision to institute trial, thus the Exhibit does not
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`include any fact of consequence, nor does it have any tendency to make a fact
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`more or less probable than it would be without its admission.
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`If the Board admits Exhibit 1005, Patent Owner objects that it is only part of
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`a writing under FRE 106.
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`Exhibit 1006
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`Patent Owner objects to Exhibit 1006 (Preliminary Amendment of April 5,
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`2011 Filed in U.S. Pat. Appl. No. 13/079,937) as an incomplete copy, and thus an
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`inadmissible duplicate pursuant to FRE 1002 and 1003.
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`Patent Owner further objects to Exhibit 1005 as creating unfair prejudice,
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`confusing the issues, or as a waste of time pursuant to FRE 403. The Board did not
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`rely on Exhibit 1006 in its decision to institute trial, thus the Exhibit does not
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`include any fact of consequence, nor does it have any tendency to make a fact
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`more or less probable than it would be without its admission.
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`If the Board admits Exhibit 1006, Patent Owner objects that it is only part of
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`a writing under FRE 106.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Exhibit 1007
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`Patent Owner objects to Exhibit 1007 (Non-Final Office Action of July 19,
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`2012 in U.S. Pat. Appl. No. 13/079,937) as an incomplete copy, and thus an
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`inadmissible duplicate pursuant to FRE 1002 and 1003.
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`Patent Owner further objects to Exhibit 1007 as creating unfair prejudice,
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`confusing the issues, or as a waste of time pursuant to FRE 403. The Board did not
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`rely on Exhibit 1007 in its decision to institute trial, thus the Exhibit does not
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`include any fact of consequence, nor does it have any tendency to make a fact
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`more or less probable than it would be without its admission.
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`If the Board admits Exhibit 1007, Patent Owner objects that it is only part of
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`a writing under FRE 106.
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`Exhibit 1008
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`Patent Owner objects to Exhibit 1008 (Amendment of August 3, 2012 in
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`U.S. Pat. Appl. No. 13/079,937) as an incomplete copy, and thus an inadmissible
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`duplicate pursuant to FRE 1002 and 1003.
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`Patent Owner further objects to Exhibit 1008 as creating unfair prejudice,
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`confusing the issues, or as a waste of time pursuant to FRE 403. The Board did not
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`rely on Exhibit 1008 in its decision to institute trial, thus the Exhibit does not
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`Patent No. 8,365,742
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`include any fact of consequence, nor does it have any tendency to make a fact
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`more or less probable than it would be without its admission.
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`If the Board admits Exhibit 1008, Patent Owner objects that it is only part of
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`a writing under FRE 106.
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`Exhibit 1009
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`Patent Owner objects to Exhibit 1009 (PCT Pub. No. WO2007131449) for
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`failing to meet the requirements of 37 C.F.R. § 42.63(b) because that exhibit was
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`not filed with an affidavit as defined by 37 C.F.R. § 42.2, as discussed below with
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`respect to Exhibit 1010.
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`Exhibit 1010
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`Patent Owner objects to Exhibit 1010 (English translation of PCT Pub. No.
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`WO2007131449) for failing to provide a translation in accordance with 37 C.F.R.
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`§ 42.63(b). Specifically, Exhibit 1010 was not filed with an affidavit, as defined
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`by 37 C.F.R. § 42.2, attesting to the accuracy of the translation.
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`Exhibit 1015
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`Patent Owner objects to Exhibit 1015 (Declaration of Robert H. Sturges) as
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`lacking sound evidentiary basis, biased, vague, misleading, confusing the issues,
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`and more prejudicial than probative under FRE 403. For example, paragraphs 44-
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`50 of Exhibit 1015 offer opinions regarding “friction fit,” “bonding material,”
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`Patent No. 8,365,742
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`“shear forces,” “axial displacement,” and air flow that are not based on sufficient
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`facts or data and are not the product of reliable principles and methods. As an
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`additional example, pages 32-33 of Exhibit 1015 include opinions in the form of
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`annotations that are not based on sufficient facts or data and are not the product of
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`reliable principles and methods. If Sturges is presented as a lay witness, Patent
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`Owner objects under FRE 701 that the testimony is based on alleged scientific
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`and/or technical knowledge. If Sturges is presented as an expert witness, Patent
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`Owner objects under FRE 702 that the testimony is not based upon sufficient facts
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`or data and is not the result of application of reliable principles and methods.
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`Patent Owner further objects under FRE 703 that the facts or data are not of a type
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`reasonably relied upon by experts.
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`Patent Owner further objects to portions of Exhibit 1015 because those
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`portions lack relevance. Specifically:
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`Paragraphs 34-36 of Exhibit 1015 relate
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`to Petitioner’s proposed
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`construction of the terms “frame,” “porous component,” and “porous component
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`substantially surrounded by the liquid storage component.” The Board does not
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`rely on paragraphs 34-36 or any other part of Exhibit 1015 in deciding that no
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`terms require explicit construction. See PTAB Decision at 8. Thus, the Exhibit
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`does not include any fact of consequence, nor does it have any tendency to make a
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`Case IPR2016-01268
`Patent No. 8,365,742
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`fact more or less probable than it would be without its admission. As such,
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`paragraphs 34-36 of Exhibit 1015 are inadmissible under FRE 401, 402 or 403 as
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`irrelevant, more prejudicial than probative, confusing or a waste of time to any
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`issue at trial and should therefore be excluded.
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`Patent Owner further objects to the Sturges Declaration to the extent that any
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`paragraph relies upon an exhibit that is objected to herein for the reasons set forth
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`in those objections. Any paragraph in the Sturges Declaration that relies upon any
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`exhibit not relied upon by the PTAB to institute this proceeding is further objected
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`to as not being relevant and therefore being inadmissible under FRE 401 and 402.
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`Exhibit 1016
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`Patent Owner Objects to Exhibit 1016 (Rohsenow, “Heat, Mass, And
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`Momentum Transfer”) because that exhibit is not authenticated under FRE 901,
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`902, or 903.
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`Exhibit 1017
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`Patent Owner objects to Exhibit 1017 (WO 2005/099494 (“Hon ’494”)) for
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`failing to meet the requirements of 37 C.F.R. § 42.63(b) because that exhibit was
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`not filed with an affidavit as defined by 37 C.F.R. § 42.2, as discussed below with
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`respect to Exhibit 1018.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Exhibit 1018
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`Patent Owner objects to Exhibit 1018 (Certified English translation of WO
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`2005/099494 pursuant to 37 C.F.R. 42.63(b)) for failing to provide a translation in
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`accordance with 37 C.F.R. § 42.63(b). Specifically, Exhibit 1018 was not filed
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`with an affidavit, as defined by 37 C.F.R. § 42.2, attesting to the accuracy of the
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`translation.
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`Date: January 18, 2017
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`By:
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`Respectfully submitted,
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`/ Michael J. Wise /
`Michael J. Wise, Reg. No. 34,047
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
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`Case IPR2016-01268
`Patent No. 8,365,742
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that service on Petitioner was made as
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`follows, in accordance with 37 CFR 42.6(e):
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`Date of service:
`Manner of service:
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`Persons served:
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`January 18, 2017
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: PATENT OWNER’S OBJECTIONS TO
`PETITIONER’S EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Backup Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
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` /Amy Candeloro/
`Amy Candeloro
`Paralegal
`Perkins Coie LLP
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