UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`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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`I, Richard Meyst, declare as follows:
`
`1.
`
`I have been retained by Patent Owner Fontem Holdings 1 B.V. as an
`
`expert witness in the above-captioned proceeding. I am being compensated for the
`
`time I spend on this proceeding at a rate of $425 per hour. My field of expertise in
`
`this matter is electromechanical and medical devices. 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 an
`
`expert witness in this matter.
`
`2.
`
`I am currently the President and Chief Executive Officer of Fallbrook
`
`Engineering, Inc. I am an engineer and consultant in the field of electromechanical
`
`devices, including medical devices. A copy of my CV, which includes, among
`
`other things, my academic credentials and my employment history, is attached as
`
`Exhibit A.
`
`3.
`
`I received an M.S. (1972) and B.S. (1971) in mechanical engineering
`
`from the University of Wisconsin, Madison. My undergraduate academic work
`
`focused on design, manufacturing methods, fluid mechanics, and heat transfer. My
`
`graduate academic focus was on computer-based automatic controls of systems
`
`and my Master’s thesis was on the concept development, design, fabrication, and
`
`testing of a prototype bench-top
`
`implantable mechanical human heart.
`
`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,
`
`sterilization method selection and validation, design of plastic parts, design for
`
`manufacturability, package design and testing, cellular therapy, and many others.
`
`4.
`
`As an engineer, designer, consultant, program manager and
`
`entrepreneur at Fallbrook Engineering, Inc., I have been involved in the advanced
`
`design and development of a wide range of medical technology products for the
`
`healthcare industry for more than 25 years. Prior to 1989 when I became a partner
`
`in Fallbrook Engineering, I held various engineering and management positions at
`
`healthcare, medical device, and consumer product companies, including USCI (a
`
`division of CR Bard, Inc.), Fenwal (a division of Baxter Travenol Laboratories),
`
`Oak Communication, Imed Corp., a division of Warner Lambert, and Diatek Corp.
`
`5.
`
`During my 40+ year professional career, I have focused on
`
`electromechanical devices and related technologies requiring expertise in design,
`
`fluid mechanics, thermodynamics, heat transfer, electronic power sources, circuit
`
`design and fabrication, sensors, manufacturing technologies, and other areas of
`
`engineering design and manufacturing methods. Based on my experience, I have
`
`developed extensive knowledge in medical product design and development,
`
`product prototyping, design verification and validation, production startup,
`
`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
`
`technical teams to develop new medical, consumer, industrial, and professional
`
`products.
`
`6.
`
`I have also been a Principal Investigator on several NIH SBIR grants
`
`from the National Heart, Lung, and Blood Institute developing a device for the
`
`improved collection of Umbilical Cord Blood Stem Cells. I have served on the
`
`Board of Directors for the Society of Plastics Engineers/Medical Plastics Division
`
`and am a long time member. I am a member of the American Association of Blood
`
`Banks, the Association for the Advancement of Medical Instrumentation, the San
`
`Diego Regulatory Affairs Network, the American Association for Clinical
`
`Chemistry, and the American Filtration & Separation Society.
`
`7.
`
`I have also been a long-time member of the Medical Device Steering
`
`Committee of BIOCOM, the largest regional life science association in the world. I
`
`was recently a juror in the annual Medical Design Excellence Awards competition,
`
`the premier awards program for the medical technology community, as well as a
`
`judge in the San Diego CONNECT capital competition for startup companies. I am
`
`also an experienced inventor and innovator. My inventions have been awarded 16
`
`U.S. Patents, and I have applications pending. I have been an invited speaker and
`
`have presented talks at numerous scientific and medical industry meetings. Exhibit
`
`(3)
`
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`A includes a list of my patents, publications and presentations, and professional
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`associations.
`
`8.
`
`I have also served as an independent technical expert witness or
`
`consultant relating to numerous intellectual property and patent litigations, product
`
`failure analyses, analyses of the use and misuse of various medical devices,
`
`development contract disputes, and medical product liability matters. A list of my
`
`expert assignments within the past four years appears in Exhibit A.
`
`9.
`
`I have reviewed the specification, claims, and file history of U.S.
`
`Patent No. 8,365,742 (“’742 Patent,” Ex. 1001). I have also reviewed the Petition
`
`for Inter Partes Review filed by Petitioner R.J. Reynolds Vapor Company in this
`
`matter (Paper 2, “Petition”) and related exhibits, including the declaration of
`
`Petitioner’s expert, Dr. Robert Sturges. (Ex. 1015) I have also reviewed the
`
`Board’s Decision to institute Inter Partes review. (Paper 10). I have also
`
`reviewed the Supplemental Declaration of Dr. Robert H. Sturges (Ex. 1020) and
`
`the transcript of the deposition of Dr. Robert H. Sturges taken on March 8, 2017.
`
`(Ex. 2016). I have also reviewed the additional exhibits that Petitioner R.J.
`
`Reynolds Vapor Company has filed after my Preliminary Declaration was filed, as
`
`well as other documents that I understand Patent Owner will be filing along with
`
`this Declaration. I have paid particular attention to the exhibits that are discussed
`
`in this Declaration. I understand Petitioner has argued claims 2 and 3 of the ’742
`
`(4)
`
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`Patent are unpatentable on Ground 1 that claims 2 and 3 would have been obvious
`
`based on CN2719043 (Hon ’043) (Ex. 1002) and U.S. Patent No. 2,057,353
`
`(Whittemore) (Ex. 1004).
`
`The ’742 Patent and Claims
`
`10. One of the problems the ’742 Patent addresses is the lack of atomizing
`
`efficiency in electronic cigarettes: “The electronic cigarettes currently available on
`
`the market . . . are complicated in structure. They don't provide the ideal aerosol
`
`effects, and their atomizing efficiency is not high.”’742 Patent, Ex. 1001, Col. 1,
`
`lines 21–24, which I abbreviate below in the format of col. : line number(s). The
`
`’742 Patent focuses on this problem by addressing how air flows through the
`
`electronic cigarette, including the use of an atomizer having a porous component
`
`supported on a frame, and via a heating wire wound on the porous component and
`
`aligned with the run-through hole, or in the path of air flowing through the run-
`
`through hole.
`
`11. Air flow is a key concept in the ’742 Patent. The resistance to air flow
`
`through the electronic cigarette during inhalation should generally simulate that of
`
`a real tobacco cigarette. If the air flow resistance is too high, the user’s inhalation
`
`effort will be unduly high and the air flow rate through the e-cigarette (which
`
`entrains the nicotine vapor) will be too low. On the other hand, if the air flow
`
`(5)
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`resistance is too low, the user will inhale excessive air and the air flow rate will be
`
`too high.
`
`12.
`
`The ’742 Patent’s atomizer is designed to atomize liquid into vapor at
`
`a desired atomization rate. The atomization rate factors into the design of the air
`
`flow characteristics of the electronic cigarette, including air flowing through the
`
`run-through hole, and the heating wire wound on the porous component in the air
`
`flow path. These design elements help to improve the aerosol effects and atomizing
`
`efficiency of the claimed electronic cigarette.
`
`13.
`
`The ’742 Patent is also directed to a device that can provide nicotine,
`
`without depriving the user of the “smoking habit.” ’742 Patent, Ex. 1001 at 1:18–
`
`20. The problem to be solved is not just in the ability to efficiently deliver
`
`nicotine. The rituals of the smoking must be provided. The solution to the
`
`problem is the claimed electronic cigarette which can efficiently provide nicotine
`
`and also satisfy the smoking habit. The smoking habit is satisfied via a device that
`
`simulates the feel and experience of smoking.
`
`14.
`
`The ’742 Patent claims recite an atomizer having a frame, and the
`
`frame has a run-through hole. Claim 2 states that the frame supports the porous
`
`component.
`
`15.
`
`The ’742 Patent specification reads: “In
`
`the fifth preferred
`
`embodiment, as shown in FIGS. 17 and 18, the atomizer assembly is an atomizer
`
`(6)
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`(8), which includes a frame (82), the porous component (81) set on the frame (82),
`
`and the heating wire (83) wound on the porous component (81). The frame (82)
`
`has a run-through hole (821) on it.” ’742 Patent, Ex. 1001 at 5:42–47.
`
`16. Claims 2 and 3 of the ’742 Patent recite “a frame” having a “run-
`
`through hole.” “The frame (82) has a run-through hole (821) on it.” ’742 Patent,
`
`Ex. 1001 at 5:46–47. The run-through hole 821 extends through the frame.
`
`17. Claims 2 and 3 of the ’742 Patent recite “a heating wire wound on a
`
`part of the porous component.” The description of Fig. 18 includes: “The porous
`
`component (81) is wound with heating wire (83) in the part that is on the side in
`
`the axial direction of the run-through hole (821).” ’742 Patent, Ex. 1001 at 5:57–
`
`49. The heating wire is in contact with part of the porous component.
`
`18.
`
`The ’742 Patent states: “the atomizer assembly is an atomizer (8),
`
`which includes a frame (82), the porous component (81) set on the frame (82), and
`
`the heating wire (83) wound on the porous component (81). The frame (82) has a
`
`run-through hole (821) on it. The porous component (81) is wound with heating
`
`wire (83) in the part that is on the side in the axial direction of the run-through hole
`
`(821).”’742 Patent, Ex. 1001 at 5:43–49.
`
`19.
`
`In Figures 17 and 18 (reproduced below), the heating wire 83 is
`
`wound on a part of the porous component in alignment with run-through hole 821.
`
`(7)
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`20.
`
`The run-through hole 821 is not visible in Figure 17 because in this
`
`view it is hidden behind the part of the porous component on which the heating
`
`wire 83 is wound. Consequently, that part of the porous component is aligned with
`
`the run-through hole to a degree that the line-of-site of the run-through hole 821 is
`
`partially or fully blocked. This alignment is shown by the centerline added through
`
`Figures 17 and 18 above. This alignment may be visualized by the result of poking
`
`a hypothetical rod through run-through hole 821. The hypothetical rod will hit
`
`heating wire 83. The context of the ’742 Patent shows that “substantially aligned
`
`with the run-through hole” means the porous body is in line with or in the path of
`
`the run-through hole.
`
`Claim Construction
`
`21.
`
`I understand that claim terms are generally given their ordinary and
`
`customary meaning as understood by a person of ordinary skill in the art at the
`
`time of the invention when read in the context of the specification and prosecution
`
`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
`
`claim is given the broadest reasonable construction in light of the specification. I
`
`further understand that extrinsic evidence such as expert or inventor testimony,
`
`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.
`
`It is also my understanding that claims are to be interpreted from the
`
`perspective of a person of ordinary skill in the relevant art at the time of invention.
`
`To assess the level of ordinary skill in the art, I understand that one may consider
`
`such factors as: (1) the educational level of the inventor; (2) type of problems
`
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity with
`
`which innovations are made; (5) sophistication of the technology; and (6)
`
`educational level of active workers in the field. As used herein “POSITA,” “one
`
`skilled in the art,” and similar variations of those terms refer to a person of
`
`ordinary skill in the art at the time of the invention of the ’742 Patent, which is
`
`presumed to be the filing date of the ’742 Patent’s earliest priority application. I
`
`understand that the relevant time for assessing the level of skill in the art is the
`
`earliest time of filing of an application supporting the claimed inventions, which in
`
`(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
`
`application, CN ’200620090805. In my opinion, a person of ordinary skill in the
`
`(9)
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`art of the ’742 Patent would be a person with a mechanical or electrical
`
`engineering degree, industrial design degree, or similar technical degree, or
`
`equivalent work experience, and 5-10 years of working in the area of
`
`electromechanical devices, including medical devices. The definition of a person
`
`of ordinary skill in the art offered by Petitioner and Sturges is a person with at least
`
`the equivalent of a Bachelor’s degree in electrical engineering, mechanical
`
`engineering, or biomedical engineering or related fields, along with at least 5 years
`
`of experience designing electromechanical devices, including those involving
`
`circuits, fluid mechanics and heat transfer. Petition (Paper 2), at 11; Sturges (Ex.
`
`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
`
`language, specification, prosecution history, and extrinsic evidence, I describe my
`
`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
`
`component” to mean “a component of the atomizer assembly in the electronic
`
`cigarette that includes pores and is permeable to liquid, such as cigarette solution
`
`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.
`
`26.
`
`I have been asked to address the additional term “supported by.”
`
`The Board previously found that the ordinary meaning of “support” is
`
`“bear all or part of the weight of: hold up.” Board’s Decision Denying Institution
`
`in IPR2015-00859 at 15–16 (Ex. 1011).
`
`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
`
`a “run-through hole.” In claim 1, part of the porous component is “substantially
`
`aligned” with the run-through hole. In claim 2, part of the porous component is “in
`
`the path of air flowing through the run-through hole.” Thus, in claims 1 and 2, the
`
`frame holds at least part of the porous component in place: either “aligned with”
`
`the run-through hole or “in the path of air.”
`
`28.
`
`The ’742 Patent’s specification does not use the term “supported by,”
`
`but it does refer to “supports (841)” in Figures 13–16. These supports “lie against
`
`the interior wall of the shell (a)” and “suspend[] the cylinder (821)” within the
`
`shell to hold up the cylinder and ensure it remains in its desired position within the
`
`device. ’742 Patent at 5:24–30 (Ex. 1001). The annotated figures below show the
`
`“supports” in red and the cylinder in blue.
`
`(11)
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`29.
`
`These “supports” bear all or part of the weight of, or hold up, the
`
`cylinder 821. Similarly, Figures 17 and 18 show porous component 81 “set on”
`
`frame 82, which is bearing all or part of the weight of, or holding up, the porous
`
`component. ’742 Patent at 5:42–46 (Ex. 1001). The annotated figures below show
`
`the frame 82 in red and the porous component 81 in blue.
`
`(12)
`
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`30.
`
`Thus, claims 1 and 2 are using the plain and ordinary meaning of
`
`“supported by,” which is to “bear all or part of the weight of: hold up.”
`
`Obviousness Analysis
`
`31.
`
`I understand that Petitioner has the burden of proving unpatentability
`
`by a preponderance of the evidence in this proceeding.
`
`32.
`
`I understand that a patent may not be obtained if the differences
`
`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,
`
`it is my understanding that there must be an explicit analysis showing there was a
`
`reason to combine the known elements in the manner covered by the claims.
`
`33. My understanding is that obviousness is not proven by mere
`
`conclusory statements or conclusory expert testimony. Instead, I understand there
`
`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
`
`based on a hindsight combination of components.
`
`34.
`
`I understand that Petitioner has argued that claims 2 and 3 are
`
`unpatentable on the ground that they are obvious based on Chinese Patent No.
`
`2719043Y (“Hon ’043,” Ex. 1002; “Hon ’043 English translation,” Ex. 1003; Hon
`
`PCT equivalent, Ex. 1017; and Hon PCT English translation, Ex. 1018) in
`
`combination with U.S. Patent No. 2,057,353 (“Whittemore”) (Ex. 1004). Petition,
`
`pp. 6-7 (Paper 2). I have reviewed and analyzed the claims, the specification, the
`
`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
`
`patentability are the same under either definition.
`
`I reached these conclusions as
`
`further described below.
`
`(14)
`
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`Ground 1: Alleged Obviousness over Hon ’043 and Whittemore
`
`35.
`
`In my opinion, claims 2 and 3 of the ’742 Patent are not obvious over
`
`Hon ’043 in view of Whittemore because (a) Hon ’043 has no frame supporting a
`
`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
`
`gave a brief overview of Hon ’043:
`
`Fig. 6 of Hon ’043 is shown below.
`
`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
`
`heating element 26; the cavity wall 25; the first piezo element 23 and
`
`long stream ejection holes 24. The cavity wall 25 is surrounded by the
`
`porous body 27. The wall 25 can be made of aluminum oxide or
`
`(15)
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`ceramic. Hon ’043 (Ex. 1003), at 9. Hon ’043 operates as explained at
`
`pages 10-11:
`
`“The air enters the normal pressure cavity 5 through the
`
`air inlet 4, passes through the air passage 18 of the sensor
`
`and then the through hole in the vapor-liquid separator 7,
`
`and flows into the atomization cavity 10 in the atomizer
`
`9. The high speed stream passing through the ejection
`
`hole drives the nicotine solution in the porous body 27 to
`
`eject into the atomization cavity 10 in the form of
`
`droplet, where the nicotine solution is subjected to the
`
`ultrasonic atomization by the first piezoelectric element
`
`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
`
`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
`
`atomizer’s function is warranted.
`
`(16)
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`37.
`
`“Atomize” means to convert liquid into small droplets. New Oxford
`
`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
`
`atomize the liquid via ultrasonic vibrations. Hon ’043 at 10–11 (Ex. 1003). Third,
`
`the airstream may be focused directly at a piezoelectric element 35 inside the
`
`cavity. Hon ’043 at 11 (Ex. 1003). Fourth, a heating element 26, which may be a
`
`“wire” or a “sheet,” can be included in the cavity to “further atomize” the liquid
`
`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).
`
`(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.
`
`(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.
`
`(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
`
`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