`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.
`Patent Owner.
`______________
`
`Case No. IPR2016-01268
`Patent No. 8,365,742
`
`______________________________________________________________
`
`DECLARATION OF RICHARD MEYST IN SUPPORT OF
`PATENT OWNER’S OPPOSITION TO PETITION FOR INTER PARTES
`REVIEW
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`Fontem Ex. 2015
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`Page 1 of 62
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`I, Richard Meyst, declare as follows:
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`1.
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`I have been retained by Patent Owner Fontem Holdings 1 B.V. as an
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`expert witness in the above-captioned proceeding. I am being compensated for the
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`time I spend on this proceeding at a rate of $425 per hour. My field of expertise in
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`this matter is electromechanical and medical devices. This Declaration is based
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`upon my knowledge, skill, experience, training, and education in my field of
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`expertise, and upon information reviewed in connection with my retention as an
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`expert witness in this matter.
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`2.
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`I am currently the President and Chief Executive Officer of Fallbrook
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`Engineering, Inc. I am an engineer and consultant in the field of electromechanical
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`devices, including medical devices. A copy of my CV, which includes, among
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`other things, my academic credentials and my employment history, is attached as
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`Exhibit A.
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`3.
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`I received an M.S. (1972) and B.S. (1971) in mechanical engineering
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`from the University of Wisconsin, Madison. My undergraduate academic work
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`focused on design, manufacturing methods, fluid mechanics, and heat transfer. My
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`graduate academic focus was on computer-based automatic controls of systems
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`and my Master’s thesis was on the concept development, design, fabrication, and
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`testing of a prototype bench-top
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`implantable mechanical human heart.
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`1
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`Additionally, I have participated in industry seminars and training programs
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`covering design of experiments, statistical analysis, biocompatibility testing,
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`sterilization method selection and validation, design of plastic parts, design for
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`manufacturability, package design and testing, cellular therapy, and many others.
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`4.
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`As an engineer, designer, consultant, program manager and
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`entrepreneur at Fallbrook Engineering, Inc., I have been involved in the advanced
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`design and development of a wide range of medical technology products for the
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`healthcare industry for more than 25 years. Prior to 1989 when I became a partner
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`in Fallbrook Engineering, I held various engineering and management positions at
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`healthcare, medical device, and consumer product companies, including USCI (a
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`division of CR Bard, Inc.), Fenwal (a division of Baxter Travenol Laboratories),
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`Oak Communication, Imed Corp., a division of Warner Lambert, and Diatek Corp.
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`5.
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`During my 40+ year professional career, I have focused on
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`electromechanical devices and related technologies requiring expertise in design,
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`fluid mechanics, thermodynamics, heat transfer, electronic power sources, circuit
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`design and fabrication, sensors, manufacturing technologies, and other areas of
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`engineering design and manufacturing methods. Based on my experience, I have
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`developed extensive knowledge in medical product design and development,
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`product prototyping, design verification and validation, production startup,
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`manufacturing engineering, risk analysis, and strategic planning. In addition to
`
`(2)
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`doing engineering work, my responsibilities have included running a medical
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`design and development consulting firm which includes assembling and managing
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`technical teams to develop new medical, consumer, industrial, and professional
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`products.
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`6.
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`I have also been a Principal Investigator on several NIH SBIR grants
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`from the National Heart, Lung, and Blood Institute developing a device for the
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`improved collection of Umbilical Cord Blood Stem Cells. I have served on the
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`Board of Directors for the Society of Plastics Engineers/Medical Plastics Division
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`and am a long time member. I am a member of the American Association of Blood
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`Banks, the Association for the Advancement of Medical Instrumentation, the San
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`Diego Regulatory Affairs Network, the American Association for Clinical
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`Chemistry, and the American Filtration & Separation Society.
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`7.
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`I have also been a long-time member of the Medical Device Steering
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`Committee of BIOCOM, the largest regional life science association in the world. I
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`was recently a juror in the annual Medical Design Excellence Awards competition,
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`the premier awards program for the medical technology community, as well as a
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`judge in the San Diego CONNECT capital competition for startup companies. I am
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`also an experienced inventor and innovator. My inventions have been awarded 16
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`U.S. Patents, and I have applications pending. I have been an invited speaker and
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`have presented talks at numerous scientific and medical industry meetings. Exhibit
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`(3)
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`A includes a list of my patents, publications and presentations, and professional
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`associations.
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`8.
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`I have also served as an independent technical expert witness or
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`consultant relating to numerous intellectual property and patent litigations, product
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`failure analyses, analyses of the use and misuse of various medical devices,
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`development contract disputes, and medical product liability matters. A list of my
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`expert assignments within the past four years appears in Exhibit A.
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`9.
`
`I have reviewed the specification, claims, and file history of U.S.
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`Patent No. 8,365,742 (“’742 Patent,” Ex. 1001). I have also reviewed the Petition
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`for Inter Partes Review filed by Petitioner R.J. Reynolds Vapor Company in this
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`matter (Paper 2, “Petition”) and related exhibits, including the declaration of
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`Petitioner’s expert, Dr. Robert Sturges. (Ex. 1015) I have also reviewed the
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`Board’s Decision to institute Inter Partes review. (Paper 10). I have also
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`reviewed the Supplemental Declaration of Dr. Robert H. Sturges (Ex. 1020) and
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`the transcript of the deposition of Dr. Robert H. Sturges taken on March 8, 2017.
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`(Ex. 2016). I have also reviewed the additional exhibits that Petitioner R.J.
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`Reynolds Vapor Company has filed after my Preliminary Declaration was filed, as
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`well as other documents that I understand Patent Owner will be filing along with
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`this Declaration. I have paid particular attention to the exhibits that are discussed
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`in this Declaration. I understand Petitioner has argued claims 2 and 3 of the ’742
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`(4)
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`Patent are unpatentable on Ground 1 that claims 2 and 3 would have been obvious
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`based on CN2719043 (Hon ’043) (Ex. 1002) and U.S. Patent No. 2,057,353
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`(Whittemore) (Ex. 1004).
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`The ’742 Patent and Claims
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`10. One of the problems the ’742 Patent addresses is the lack of atomizing
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`efficiency in electronic cigarettes: “The electronic cigarettes currently available on
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`the market . . . are complicated in structure. They don't provide the ideal aerosol
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`effects, and their atomizing efficiency is not high.”’742 Patent, Ex. 1001, Col. 1,
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`lines 21–24, which I abbreviate below in the format of col. : line number(s). The
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`’742 Patent focuses on this problem by addressing how air flows through the
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`electronic cigarette, including the use of an atomizer having a porous component
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`supported on a frame, and via a heating wire wound on the porous component and
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`aligned with the run-through hole, or in the path of air flowing through the run-
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`through hole.
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`11. Air flow is a key concept in the ’742 Patent. The resistance to air flow
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`through the electronic cigarette during inhalation should generally simulate that of
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`a real tobacco cigarette. If the air flow resistance is too high, the user’s inhalation
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`effort will be unduly high and the air flow rate through the e-cigarette (which
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`entrains the nicotine vapor) will be too low. On the other hand, if the air flow
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`(5)
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`resistance is too low, the user will inhale excessive air and the air flow rate will be
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`too high.
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`12.
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`The ’742 Patent’s atomizer is designed to atomize liquid into vapor at
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`a desired atomization rate. The atomization rate factors into the design of the air
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`flow characteristics of the electronic cigarette, including air flowing through the
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`run-through hole, and the heating wire wound on the porous component in the air
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`flow path. These design elements help to improve the aerosol effects and atomizing
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`efficiency of the claimed electronic cigarette.
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`13.
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`The ’742 Patent is also directed to a device that can provide nicotine,
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`without depriving the user of the “smoking habit.” ’742 Patent, Ex. 1001 at 1:18–
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`20. The problem to be solved is not just in the ability to efficiently deliver
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`nicotine. The rituals of the smoking must be provided. The solution to the
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`problem is the claimed electronic cigarette which can efficiently provide nicotine
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`and also satisfy the smoking habit. The smoking habit is satisfied via a device that
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`simulates the feel and experience of smoking.
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`14.
`
`The ’742 Patent claims recite an atomizer having a frame, and the
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`frame has a run-through hole. Claim 2 states that the frame supports the porous
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`component.
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`15.
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`The ’742 Patent specification reads: “In
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`the fifth preferred
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`embodiment, as shown in FIGS. 17 and 18, the atomizer assembly is an atomizer
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`(6)
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`(8), which includes a frame (82), the porous component (81) set on the frame (82),
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`and the heating wire (83) wound on the porous component (81). The frame (82)
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`has a run-through hole (821) on it.” ’742 Patent, Ex. 1001 at 5:42–47.
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`16. Claims 2 and 3 of the ’742 Patent recite “a frame” having a “run-
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`through hole.” “The frame (82) has a run-through hole (821) on it.” ’742 Patent,
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`Ex. 1001 at 5:46–47. The run-through hole 821 extends through the frame.
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`17. Claims 2 and 3 of the ’742 Patent recite “a heating wire wound on a
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`part of the porous component.” The description of Fig. 18 includes: “The porous
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`component (81) is wound with heating wire (83) in the part that is on the side in
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`the axial direction of the run-through hole (821).” ’742 Patent, Ex. 1001 at 5:57–
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`49. The heating wire is in contact with part of the porous component.
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`18.
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`The ’742 Patent states: “the atomizer assembly is an atomizer (8),
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`which includes a frame (82), the porous component (81) set on the frame (82), and
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`the heating wire (83) wound on the porous component (81). The frame (82) has a
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`run-through hole (821) on it. The porous component (81) is wound with heating
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`wire (83) in the part that is on the side in the axial direction of the run-through hole
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`(821).”’742 Patent, Ex. 1001 at 5:43–49.
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`19.
`
`In Figures 17 and 18 (reproduced below), the heating wire 83 is
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`wound on a part of the porous component in alignment with run-through hole 821.
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`(7)
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`20.
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`The run-through hole 821 is not visible in Figure 17 because in this
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`view it is hidden behind the part of the porous component on which the heating
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`wire 83 is wound. Consequently, that part of the porous component is aligned with
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`the run-through hole to a degree that the line-of-site of the run-through hole 821 is
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`partially or fully blocked. This alignment is shown by the centerline added through
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`Figures 17 and 18 above. This alignment may be visualized by the result of poking
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`a hypothetical rod through run-through hole 821. The hypothetical rod will hit
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`heating wire 83. The context of the ’742 Patent shows that “substantially aligned
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`with the run-through hole” means the porous body is in line with or in the path of
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`the run-through hole.
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`Claim Construction
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`21.
`
`I understand that claim terms are generally given their ordinary and
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`customary meaning as understood by a person of ordinary skill in the art at the
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`time of the invention when read in the context of the specification and prosecution
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`history unless a patentee sets out a different definition or clearly disavows claim
`(8)
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`scope. I also understand that in the context of a proceeding in front of the Board, a
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`claim is given the broadest reasonable construction in light of the specification. I
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`further understand that extrinsic evidence such as expert or inventor testimony,
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`dictionaries, and learned treatises can help determine the meaning of claim terms,
`
`although that evidence is less significant than the claims, specification, and
`
`prosecution history.
`
`22.
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`It is also my understanding that claims are to be interpreted from the
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`perspective of a person of ordinary skill in the relevant art at the time of invention.
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`To assess the level of ordinary skill in the art, I understand that one may consider
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`such factors as: (1) the educational level of the inventor; (2) type of problems
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`encountered in the art; (3) prior art solutions to those problems; (4) rapidity with
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`which innovations are made; (5) sophistication of the technology; and (6)
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`educational level of active workers in the field. As used herein “POSITA,” “one
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`skilled in the art,” and similar variations of those terms refer to a person of
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`ordinary skill in the art at the time of the invention of the ’742 Patent, which is
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`presumed to be the filing date of the ’742 Patent’s earliest priority application. I
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`understand that the relevant time for assessing the level of skill in the art is the
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`earliest time of filing of an application supporting the claimed inventions, which in
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`(cid:87)(cid:75)(cid:76)(cid:86)(cid:3)(cid:70)(cid:68)(cid:86)(cid:72)(cid:3)(cid:73)(cid:82)(cid:85)(cid:3)(cid:87)(cid:75)(cid:72)(cid:3)(cid:2755)(cid:26)(cid:23)(cid:21)(cid:3)(cid:83)(cid:68)(cid:87)(cid:72)(cid:81)(cid:87)(cid:3)(cid:76)(cid:86)(cid:3)(cid:48)(cid:68)(cid:92)(cid:3)(cid:20)(cid:25)(cid:15)(cid:3)(cid:21)(cid:19)(cid:19)(cid:25)(cid:15)(cid:3)(cid:87)(cid:75)(cid:72)(cid:3)(cid:73)(cid:76)(cid:79)(cid:76)(cid:81)g date of the Chinese priority
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`application, CN ’200620090805. In my opinion, a person of ordinary skill in the
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`(9)
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`art of the ’742 Patent would be a person with a mechanical or electrical
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`engineering degree, industrial design degree, or similar technical degree, or
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`equivalent work experience, and 5-10 years of working in the area of
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`electromechanical devices, including medical devices. The definition of a person
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`of ordinary skill in the art offered by Petitioner and Sturges is a person with at least
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`the equivalent of a Bachelor’s degree in electrical engineering, mechanical
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`engineering, or biomedical engineering or related fields, along with at least 5 years
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`of experience designing electromechanical devices, including those involving
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`circuits, fluid mechanics and heat transfer. Petition (Paper 2), at 11; Sturges (Ex.
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`1015), ¶¶29-30. My opinions set forth herein are the same under either definition.
`
`23.
`
`I have reviewed the claims of the ’742 Patent, and based on the claim
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`language, specification, prosecution history, and extrinsic evidence, I describe my
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`opinions below as to how a person of ordinary skill in the art at the time of the
`
`invention would have interpreted certain claim terms.
`
`24.
`
`I understand that in IPR 2015-00859 (the “VMR Decision,” Ex.
`
`1011), the Board construed “frame” to mean “a rigid structure” and “porous
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`component” to mean “a component of the atomizer assembly in the electronic
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`cigarette that includes pores and is permeable to liquid, such as cigarette solution
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`from the cigarette solution storage area.” VWR Decision (Ex. 1011), pp. 8, 10. I
`
`use these constructions in conducting my review.
`
`(10)
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`25.
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`26.
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`I have been asked to address the additional term “supported by.”
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`The Board previously found that the ordinary meaning of “support” is
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`“bear all or part of the weight of: hold up.” Board’s Decision Denying Institution
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`in IPR2015-00859 at 15–16 (Ex. 1011).
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`27. Claims 1 and 2 recite a “porous component [is] supported by [a/the]
`
`frame.” In both claims 1 and 2, the “frame” supporting the porous component has
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`a “run-through hole.” In claim 1, part of the porous component is “substantially
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`aligned” with the run-through hole. In claim 2, part of the porous component is “in
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`the path of air flowing through the run-through hole.” Thus, in claims 1 and 2, the
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`frame holds at least part of the porous component in place: either “aligned with”
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`the run-through hole or “in the path of air.”
`
`28.
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`The ’742 Patent’s specification does not use the term “supported by,”
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`but it does refer to “supports (841)” in Figures 13–16. These supports “lie against
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`the interior wall of the shell (a)” and “suspend[] the cylinder (821)” within the
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`shell to hold up the cylinder and ensure it remains in its desired position within the
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`device. ’742 Patent at 5:24–30 (Ex. 1001). The annotated figures below show the
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`“supports” in red and the cylinder in blue.
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`(11)
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`29.
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`These “supports” bear all or part of the weight of, or hold up, the
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`cylinder 821. Similarly, Figures 17 and 18 show porous component 81 “set on”
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`frame 82, which is bearing all or part of the weight of, or holding up, the porous
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`component. ’742 Patent at 5:42–46 (Ex. 1001). The annotated figures below show
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`the frame 82 in red and the porous component 81 in blue.
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`(12)
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`30.
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`Thus, claims 1 and 2 are using the plain and ordinary meaning of
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`“supported by,” which is to “bear all or part of the weight of: hold up.”
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`Obviousness Analysis
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`31.
`
`I understand that Petitioner has the burden of proving unpatentability
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`by a preponderance of the evidence in this proceeding.
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`32.
`
`I understand that a patent may not be obtained if the differences
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`between the claimed invention and the prior art are such that the claimed invention
`
`as a whole would have been obvious at the time of the invention to a person of
`
`ordinary skill in the art. To my understanding, a claimed invention is not obvious
`
`just because each of its elements was independently known in the prior art. Instead,
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`it is my understanding that there must be an explicit analysis showing there was a
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`reason to combine the known elements in the manner covered by the claims.
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`33. My understanding is that obviousness is not proven by mere
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`conclusory statements or conclusory expert testimony. Instead, I understand there
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`must be some articulated reasoning with rational underpinning to satisfy the legal
`(13)
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`standard for proving obviousness. I also understand that obviousness cannot be
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`based on a hindsight combination of components.
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`34.
`
`I understand that Petitioner has argued that claims 2 and 3 are
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`unpatentable on the ground that they are obvious based on Chinese Patent No.
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`2719043Y (“Hon ’043,” Ex. 1002; “Hon ’043 English translation,” Ex. 1003; Hon
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`PCT equivalent, Ex. 1017; and Hon PCT English translation, Ex. 1018) in
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`combination with U.S. Patent No. 2,057,353 (“Whittemore”) (Ex. 1004). Petition,
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`pp. 6-7 (Paper 2). I have reviewed and analyzed the claims, the specification, the
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`Petition, the documents cited in the Petition, and additional materials that were not
`
`available when I made my Preliminary Declaration, including the Board’s
`
`Institution Decision, Dr. Sturges’s Supplemental Declaration, and Dr. Sturges’s
`
`Deposition Transcript. (Paper 10; Ex. 1020; Ex. 2016). After reviewing and
`
`analyzing these materials, it is my opinion that claims 2 and 3 of the ’742 Patent
`
`are patentable, and Petitioner has not shown unpatentability by a preponderance of
`
`evidence. As described above, Sturges and I define a person of ordinary skill in
`
`the art at the time of the invention differently, but my conclusions regarding
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`patentability are the same under either definition.
`
`I reached these conclusions as
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`further described below.
`
`(14)
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`Ground 1: Alleged Obviousness over Hon ’043 and Whittemore
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`35.
`
`In my opinion, claims 2 and 3 of the ’742 Patent are not obvious over
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`Hon ’043 in view of Whittemore because (a) Hon ’043 has no frame supporting a
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`porous component; (b) Hon ’043 as modified by Whittemore has no porous
`
`component supported by a frame; and (c) a person of ordinary skill would not
`
`modify Hon ’043 in view of Whittemore as described in the Petition.
`
`36.
`
`Further Overview of Hon ’043. In my Preliminary Declaration, I
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`gave a brief overview of Hon ’043:
`
`Fig. 6 of Hon ’043 is shown below.
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`Fig. 6 shows the porous body 27; the part of the porous body
`
`referred to as the porous bulge 36; the atomizing cavity 10; the
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`heating element 26; the cavity wall 25; the first piezo element 23 and
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`long stream ejection holes 24. The cavity wall 25 is surrounded by the
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`porous body 27. The wall 25 can be made of aluminum oxide or
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`(15)
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`ceramic. Hon ’043 (Ex. 1003), at 9. Hon ’043 operates as explained at
`
`pages 10-11:
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`“The air enters the normal pressure cavity 5 through the
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`air inlet 4, passes through the air passage 18 of the sensor
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`and then the through hole in the vapor-liquid separator 7,
`
`and flows into the atomization cavity 10 in the atomizer
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`9. The high speed stream passing through the ejection
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`hole drives the nicotine solution in the porous body 27 to
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`eject into the atomization cavity 10 in the form of
`
`droplet, where the nicotine solution is subjected to the
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`ultrasonic atomization by the first piezoelectric element
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`23 and is further atomized by the heating element 26.
`
`After the atomization, the large diameter droplets stick to
`
`the wall under the action of eddy flow and are reabsorbed
`
`by the porous body 27 via the overflow hole 29, whereas
`
`the small diameter droplets float in stream and forms
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`aerosols, which are sucked out via the aerosol passage
`
`12, gas vent 17 and mouthpiece 15.”
`
`Preliminary Declaration ¶¶ 31–32 (Ex. 2001). A more in-depth discussion of the
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`atomizer’s function is warranted.
`
`(16)
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`37.
`
`“Atomize” means to convert liquid into small droplets. New Oxford
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`American Dictionary (2001) (Ex. 2017). The atomizer in Hon ’043 accomplishes
`
`this in more than one way. First, the high speed stream of air passing through
`
`ejection holes 24 or 30 causes liquid to eject from porous body 27 into cavity 10 in
`
`the form of droplets. Hon ’043 at 10 (Ex. 1003). Thus, liquid is already atomized
`
`by the ejection holes as it enters the atomization cavity, which by itself is
`
`essentially a plain-orifice atomizer. See FLUENT 6.3 User’s Guide at 22–47 (Ex.
`
`2024). Second, the atomizer may include a piezoelectric element 23 outside to
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`atomize the liquid via ultrasonic vibrations. Hon ’043 at 10–11 (Ex. 1003). Third,
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`the airstream may be focused directly at a piezoelectric element 35 inside the
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`cavity. Hon ’043 at 11 (Ex. 1003). Fourth, a heating element 26, which may be a
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`“wire” or a “sheet,” can be included in the cavity to “further atomize” the liquid
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`droplets. Hon ’043 at 9–11 (Ex. 1003). The heating element and both
`
`piezoelectric elements are optional. Hon ’043 at 11 (Ex. 1003).
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`38. Hon ’043 is concerned with making sure that “small droplets” are
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`inhaled by the user, and that “large droplets” do not exit the atomizer. Hon ’043 at
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`10–11 (Ex. 1003).
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`If, after being atomized and optionally “further atomized,”
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`“large droplets” remain in the airstream, Hon ’043 provides a way for these large
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`droplets to be reabsorbed without exiting the electronic cigarette. Hon ’043 at 9–
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`11 (Ex. 1003). Large droplets will stick to the cavity wall under the action of eddy
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`(17)
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`flow and are reabsorbed into the porous body 27 through overflow hole 29. Hon
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`’043 at 11 (Ex. 1003). This process is illustrated below.
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`39.
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`In some embodiments, Hon ’043 discloses that the cavity wall 25 may
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`be made of aluminum oxide or ceramic. Hon ’043 at 9 (Ex. 1003). The purpose of
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`the cavity wall in Hon ’043 is to define an atomization cavity, provide ejection
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`holes so that the high speed airstream forces liquid into the cavity in droplet form,
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`and to provide a surface for large droplets to stick to and be reabsorbed into the
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`porous body through the overflow hole. Hon ’043 at 9–11 (Ex. 1003).
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`40.
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`In one embodiment, Hon ’043 discloses that the atomization cavity
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`wall 25 is surrounded with porous body 27, which can be made of foam nickel,
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`stainless steel fiber felt, high molecule polymer foam or foam ceramic. Hon ’043
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`at 9 (Ex. 1003). The porous body has a bulge section 36 in contact with solution
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`(18)
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`storage porous body 28 in liquid-supplying bottle 11. Hon ’043 at 11 (Ex. 1003).
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`This “contact” achieves capillary infiltration, which transports liquid from the
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`solution storage body 28 through porous body 27 to the ejection holes for
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`atomization. Hon ’043 at 10–11 (Ex. 1003). The porous body “is arranged outside
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`around” the atomization cavity wall to transport liquid around the cavity and so
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`that large droplets that stick to the cavity walls and exit the overflow hole 29 are
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`reabsorbed into the porous body. Hon ’043 at 7, 9–11 (Ex. 1003).
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`41.
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`I disagree with Dr. Sturges’s opinion that a person of ordinary skill in
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`the art would have recognized that the cavity wall is attached to the porous body
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`via either a “friction fit” or “bonding material.” Sturges Declaration ¶ 45 (Ex.
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`1015). Hon ’043 does not disclose a friction fit or bonding material” and neither is
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`necessary to fulfill the purposes of the cavity wall 25 and the porous body 27. As I
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`explained in my Preliminary Declaration, a friction fit or bonding material would
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`actually be problematic:
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`Sturges says that a person of ordinary skill would have
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`recognized that the porous body is attached to the cavity wall via
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`either a friction fit or through a bonding material. Sturges (Ex. 1015),
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`¶45. I disagree. No friction fit or bonding material is needed because
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`the atomization cavity wall is enclosed on all sides within the porous
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`body and cannot move. No friction is necessary and providing a
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`(19)
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`friction fit would complicate making the device described in Hon ’043
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`because a friction fit requires precise mechanical tolerances on the
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`mating components, and a pressing step to fit them together. This
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`could be especially problematic with the cavity wall which is ceramic,
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`suggesting it is also brittle.
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`… T
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`he overflow hole 29 is shown in the cylindrical sidewall of the
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`cavity wall 25, in Fig. 7 of Hon ’043. A bonding material, if used,
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`would interfere with this reabsorption by forming a barrier between
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`the atomization cavity wall 26 and the porous body 27 which would
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`block the overflow hole 29. Use of a bonding material also conflicts
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`with explanation of air flow given at page 33 of Sturges, because a
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`bonding material would similarly interfere with the flow of air as
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`proposed in Sturges (Ex. 1015).
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`Preliminary Declaration ¶¶ 36, 38 (Ex. 2001).
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`42. Airflow through the atomizer. I have reviewed Dr. Sturges’s
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`testimony in both of his declarations and in his deposition regarding airflow
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`through the Hon ’043 atomizer. In my opinion, Dr. Sturges’s view of airflow is
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`incorrect. A person of ordinary skill in the art would have understood that air
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`entering the atomizer via the ejection holes would have to have an open exit from
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`(20)
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`the atomizer in order for a “high speed stream” to form. Hon ’043 at 10–11 (Ex.
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`1003). The drawing below, taken from the reexamination history of the ’742
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`Patent’s parent, is a fair approximation of what a person of ordinary skill in the art
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`would have understood the atomizer’s exit would look like. Office Action
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`Response filed January 28, 2013 in Reexam 95/002,235 at 14 (Ex. 2022).
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`43. Dr. Sturges characterized the atomizer as having no exit, shown
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`below, with air flowing out through the liquid-filled porous body 27 and the sides
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`of cavity wall 25. Sturges Declaration ¶ 63 (Ex. 1015); Sturges Supplemental
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`Declaration ¶ 13 (Ex. 1020); Sturges 3/8/2017 Dep. Tr. 75:2–6 (Ex. 2016).
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`(21)
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`44. Assuming it has no exit, Dr. Sturges suggests the atomizer has a high
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`pressure surface (shown in blue) outside its entrance and low pressure surfaces
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`(shown in green) on the sides and the surface around the bulge. Sturges
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`Declaration at 33–34 (Ex. 1015); Sturges 3/8/2017 Dep. Tr. 75:7–10 (Ex. 2016).
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`But applying Dr. Sturges’s explanation, air would enter at the “high pressure
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`surface” and follow the shortest path (according to the Principle of Least Action)
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`through the porous body to the “low pressure surface,” Dr. Sturgis does not explain
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`why the airflow would not bypass the atomization cavity entirely. Applying Dr.
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`Sturges’s reasoning, as illustrated below, air would essentially flow through the
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`bottom corners of Hon ’043’s atomizer.
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`(22)
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`45.
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`If the airstream exited the cavity by passing through the porous body
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`27, the atomized droplets would be reabsorbed back into the porous body. At his
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`deposition, Dr. Sturges suggested that the liquid in the porous body 27 would
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`simply “[m]ove to one side so that there is a free passage of the airflow from the
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`cavity to the downstream outside.” Sturges 3/8/2017 Dep. Tr. 99:9–104:19 (Ex.
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`2016). This is not how liquid behaves in a porous material. The scenario Dr.
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`Sturges proposes is similar to spraying atomized droplets of water from a nozzle at
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`a sponge (porous body) filled with water. The water in the sponge does not simply
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`“move to one side,” allowing the spray to pass through the sponge even under a
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`pressure difference. The sprayed water is absorbed by the sponge. The same thing
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`would happen in Hon ’043’s atomizer if it were as Dr. Sturges suggests.
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`(23)
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`46.
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`If the atomizer in Hon ’043 did not have an open exit for atomized
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`droplets to escape, a user inhaling would not create a “high speed stream” of air
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`flowing through the ejection holes due to the added high resistance to air flow
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`through the porous body and cavity wall. Hon ’043 at 10–11 (Ex. 1003). Instead,
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`a user inhaling would cause the pressure outside the atomizer on the downstream
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`end to drop to a pressure lower than inside the cavity and on the upstream end.
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`Instead of “driv[ing] the nicotine solution in the porous body 27 to eject into the
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`atomization cavity 10,” Hon ’043 at 10–11 (Ex. 1003), this situation would cause
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`liquid in the porous body to seep out of the porous body’s external edges, where it
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`would likely either remain due t