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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`R.J. REYNOLDS VAPOR COMPANY,
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`Petitioner
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`v.
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`FONTEM HOLDINGS 1 B.V.,
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`Patent Owner
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`Case IPR2016-01268
`Patent 8,365,742
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`REPLY DECLARATION OF DR. ROBERT H. STURGES
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`R.J. Reynolds Vapor
`IPR2016-01268
`R.J. Reynolds Vapor v. Fontem
`Exhibit 1027-00001
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by the law firm of Brinks Gilson & Lione on
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`behalf of R.J. Reynolds Vapor Company (“Petitioner”) in connection with
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`IPR2016-01268. I previously provided two declarations (“Petition Declaration,”
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`Ex. 1015; “Supplemental Declaration,” Ex. 1020) concerning the technical subject
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`matter relevant to the petition in IPR2016-01268.
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`2. My background and qualification are contained in my Petition
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`Declaration.
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`3.
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`4.
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`Attached as Ex. A is an updated list of my prior testimony.
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`Besides the information listed in ¶ 8 of my Petition Declaration, I
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`have also considered the record of IPR2016-01268.
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`II. CLAIM CONSTRUCTION
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`5. My understanding of the legal standards for claim construction is
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`contained in my Petition Declaration.
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`6.
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`In claim 2, the term “supported by” is used. As Mr. Richard Meyst,
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`Patent Owner’s expert, has acknowledged that the term “supported by” is not used
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`or defined in the 742 patent specification. Ex. 2015 (Declaration of Richard Meyst
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`In Support Of Patent Owner’s Opposition To Petition For Inter Partes Review) at ¶
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`28; Paper 24 (Patent Owner Opposition To Petition For Inter Partes Review) at p.
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`9.
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`1
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`R.J. Reynolds Vapor Exhibit 1027-00002
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`7.
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`In my opinion, the broadest reasonable interpretation of the term
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`“supported by” is “to hold up, serve as a foundation or prop for, carry all or part of
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`the weight of, or give strength to.” This interpretation is consistent with the plain
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`and ordinary meaning of the term. See Ex. 1025 (Oxford Modern English 1996,
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`defining “support” as “keep from falling or sinking or failing,” “give strength to”);
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`Ex. 1024 (Merriam-Webster's Collegiate Dictionary (11th ed. 2003), defining
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`“support” as “to hold up or serve as a foundation or prop for”); Ex. 1026 (Concise
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`Oxford American Dictionary, defining “support” as “bear all or part of the weight
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`of; hold up”). This interpretation is also consistent with how the term is used in
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`claim 2 (“supported by a frame”). The support that a frame provides is commonly
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`understood to mean “gives shape or strength.” Ex. 1024 (defining “frame” as “the
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`underlying constructional system or structure that gives shape or strength (as to a
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`building)”); Ex. 2016 (Sturges Dep. Tr.) at 37:11-38:25 (“supported by” means
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`“bear all or part of the weight of” as the more limited case but also means “to
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`provide form or shape,” and “to maintain or define the shape of the porous
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`component with respect to applied forces.”).
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`8. My interpretation of the term “supported by” to include both weight-
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`bearing support and other types of support is consistent with the 742 specification.
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`Meyst confirmed that claims 2 and 3 relate to the embodiment disclosed in Figs.
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`17-18. Ex. 1023 (Meyst Dep. Tr.) at 10:7-12. As Meyst explained, the frame 82
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`2
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`R.J. Reynolds Vapor Exhibit 1027-00003
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`
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`provides weight-bearing support to the porous component 81 in that the frame
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`holds up the mass of the top part of the porous component against gravitational
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`force. Ex. 1023 (Meyst Dep. Tr.) at 48:21-49:14. I agree with Mr. Meyst.
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`9.
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`The 742 patent specification also discloses that the frame “gives
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`strength to” the porous component, by providing axial support to the porous
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`component. As illustrated in annotated Fig. 19 below, one end of the porous
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`component (the protuberance/bulge 812) is inserted into and “fits with the cigarette
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`assembly bottle.” Ex. 1001 at 3:63-66, 5:49-50, Figs. 1, 2, 19. The insertion of the
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`protuberance is forcible as revealed by the indentation of the perforated component
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`for liquid storage 9 within the cigarette bottle assembly.
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`
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`The forcible insertion of the porous component (protuberance) into the cigarette
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`bottle assembly creates a compressive force on the porous body. The contacting
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`fit (i.e., friction or bonding) between the frame 82 and the porous component 81
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`allows the frame to react to the compressive forces and prevent the deformation of
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`the porous component, thus providing axial support to the porous component.
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`3
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`Atomizer
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`Perforated component
`for liquid storage
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`Protuberance 812 of
`porous component 81
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`R.J. Reynolds Vapor Exhibit 1027-00004
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`10. The frame in the 742 patent also provides radial support for the porous
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`component. The porous component in the 742 patent is made of “foamed nickel,
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`stainless steel fiber felt, macromolecular polymer foam or foamed ceramics,” the
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`same materials for the porous body of Hon 043. Ex 1001 at 5:50-52; Ex 1003 at 9.
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`As discussed in Ex. 1020, ¶¶ 5-8 and below at ¶¶ 22, 30, the porous body of Hon
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`043 may be made from a range of materials having a wide range of rigidities.
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`When made from a relatively low rigidity material, the porous body would sag and
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`potentially collapse when saturated with liquid but for the radial support provided
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`by the cavity wall. The porous component of the 742 patent is made of the same
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`materials as described in Hon 043, and thus would also sag and potentially collapse
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`when saturated with liquid but for the radial support provided by the frame. Thus,
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`by preventing the porous component from sagging or otherwise impinging on the
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`4
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`Frame
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`Porous
`component
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`Fig. 18 of
`742 patent
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`FR
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`FR
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`Fa
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`Fa
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`Contacting fit
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`R.J. Reynolds Vapor Exhibit 1027-00005
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`
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`atomization cavity, the frame also defines and maintains the shape and integrity of
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`the atomization cavity that is formed within the frame.
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`11.
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`I understand that Meyst proposed the term “supported by” to mean
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`“bear all or part of the weight of; hold up.” Ex. 2015 at ¶¶ 25-30; Paper 24 at pp.
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`8-11. I disagree with Meyst’s proposed construction because it is too narrow.
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`Meyst’s proposed construction fails to take into account that the term “support”
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`encompasses many manners of support other than just weight-bearing support.
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`See, e.g., Ex. 1025 (defining “support” as “keep from falling or sinking or failing,”
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`“give strength to”); Ex. 1024 (defining “support” as “to hold up or serve as a
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`foundation or prop for”)). Meyst’s proposed narrow construction also fails to
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`consider that, as discussed above; the frame in the 742 patent provides not only
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`weight-bearing, but also axial and radial support for the porous component.
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`12. Meyst states that “[t]he Board previously found that the ordinary
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`meaning of ‘support’ is ‘bear all or part of the weight of: hold up.’” Board’s
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`Decision Denying Institution in IPR2015-00859 at 15–16 (Ex. 1011).” Ex. 2015 at
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`¶ 28. I have reviewed the record of IPR2015-00859 (the “VMR IPR proceeding”),
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`and respectfully note that, for the reasons discussed above, the term “supported by”
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`as used in claim 2 of the 742 patent encompasses other manners of support in
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`addition to weight-bearing support.
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`5
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`R.J. Reynolds Vapor Exhibit 1027-00006
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`13. Meyst also states that Figs. 13-16 in the 742 patent support his
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`proposed construction. Ex. 2015 at ¶ 28; Paper 24 at p. 9. I disagree. Supports
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`841 in Figs. 13-16 are partitioned posts that “lie against the interior wall of the
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`shell (a), thus suspending the cylinder (821).” Supports 841 are disposed on the
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`outer peripheral wall of plate 84 and function to suspend the cylindrical heating rod
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`821, which is connected with the fixed plate 84, in the cavity of the shell (a). Ex.
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`1001 at 5:24-30; Figs. 13, 16. Supports 841 are not a frame supporting a porous
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`component, as recited in claim 2. Ex. 1001 at claim 2 (“… a porous component
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`supported by a frame …”).1
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`III. CLAIMS 2 AND 3 OF THE 742 PATENT ARE OBVIOUS
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`14. My understanding of the legal standards for obviousness is contained
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`in my Petition Declaration.
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`15. As set forth in my Petition Declaration, it is my opinion that claims 2
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`and 3 of the 742 patent are each obvious over the combination of Hon 043 and
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`Whittemore.
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`A. Claim 2 Is Obvious
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`a. Hon 043 teaches “a porous component supported by a frame”
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`1 All emphasis added unless otherwise noted.
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`6
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`R.J. Reynolds Vapor Exhibit 1027-00007
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`16. As set forth in my Petition Declaration, Hon 043 teaches a porous
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`component (“porous body 27”) supported by a frame (“atomization cavity wall
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`25”). Ex. 1015 at ¶¶ 42-50, 63. The atomization cavity wall 25 supports the
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`porous body 27 both because it bears all or part of the weight of the porous body
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`27 and because it maintains the shape and strength of the porous body 27 in the
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`face of both axially and radially directed forces that may act upon the porous body.
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`Specifically, the atomization cavity wall 25 maintains the shape and strength of the
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`porous body 27 by preventing axial displacement (i.e., deformation) of the porous
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`body 27, by providing radial support when the porous body 27 is saturated with
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`liquid, and by providing radial support when a user inadvertently blows into the
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`mouthpiece. Id.; Ex. 1020 (Supplemental Declaration) at ¶¶ 4-11; Ex. 2016
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`(Sturges Dep. Tr.) at 115:19-116:2, 117:7-119:12, 126:4-127:6, 186:23-188:2.
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`17. Patent Owner does not dispute that Hon 043 teaches a frame
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`(“atomization cavity wall 25”) and a porous component (“porous body 27”).
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`Patent Owner disputes as to whether the porous body 27 in Hon 043 is supported
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`by the atomization cavity wall 25. Ex. 2015 at ¶ 50; Paper 24 at p. 19-20. As
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`discussed below, I continue to hold the opinion that the porous body 27 is
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`“supported by” Hon 043’s cavity wall, for the reasons previously expressed and as
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`further explained below. I further note that Hon 043’s frame provides weight-
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`7
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`R.J. Reynolds Vapor Exhibit 1027-00008
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`
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`bearing support and “holds up” the porous body 27, and therefore the “supported
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`by” limitation is met even under Meyst’s proposed narrow construction.
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`18. Friction Fit Or Bonding Exists Between Hon 043’s Atomization
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`Cavity Wall And Porous Body. Atomization cavity wall 25 in Hon 043 contacts
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`the surrounding porous body 27, sharing the same interface between them. There
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`are no gaps illustrating a separation between these two components. Ex. 1003 at
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`Fig. 6. As I testified during cross-examination, a PHOSITA would have
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`understood that there must be some type of friction fit or a bonding material
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`between these two components so that they do not move with respect to each other.
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`Ex. 2016 (Sturges Dep. Tr.) at 114:19-115:5. For example, as illustrated below,
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`the ejection holes 24 have a first portion through the porous body and an adjacent
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`second portion through the cavity wall. But for the friction fit or bonding material,
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`the cavity wall and porous body could move relative to each other or the cavity
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`wall would rattle around inside body, leading to misalignment of the two portions
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`of the ejection holes, and thus malfunction of the Hon 043 device.
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`8
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`Porous
`Body
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`Second portion
`thru cavity wall
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`Atomization
`Cavity Wall
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`First portion thru
`porous body
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`R.J. Reynolds Vapor Exhibit 1027-00009
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`Similarly, the heating element 26 in Fig. 6 and the piezoelectric element 35 in Fig.
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`8 are disposed within the cavity wall and both have lead-out wires. But for the
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`friction fit or bonding material, the cavity wall and porous body could move
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`relative to each other, leading to potential movement of the heating element or
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`piezoelectric element inside the atomization chamber. A PHOSITA would have
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`understood that Hon 043 was not designed to permit the cavity wall to rattle
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`around inside the porous body or to otherwise permit the heating wire or
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`piezoelectric element inside the chamber to be displaced relative to the ejection
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`holes. On the contrary, a PHOSITA would have understood that the porous body
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`and cavity wall have a contacting fit (i.e., friction fit or bonding material) that
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`would prevent the relative movement and rattling of the parts inside the porous
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`body.
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`Ex. 1003 at Figs. 6, 8
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`9
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`Heating
`element
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`Lead-out
`Wires
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`Piezoelectric
`element
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`Lead-out
`Wires
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`R.J. Reynolds Vapor Exhibit 1027-00010
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`19. Meyst states that “[n]o friction fit or bonding material is needed
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`because the atomization cavity wall is enclosed on all sides within the porous body
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`and cannot move.” Ex. 2015 at ¶¶ 41, 51, 56-65. I disagree. In order for the
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`cavity wall to be configured so that it “cannot move,” there must be retaining
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`forces (i.e., a friction fit or bonding material) between the atomization cavity wall
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`and the porous body so that they do not move with respect to each other.
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`Otherwise, the atomization cavity wall will move even if it is enclosed on all sides
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`within the porous body. A common sense example is a peanut within its shell.
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`Although a peanut is enclosed on all sides within the shell, the peanut can move or
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`rattle around inside the shell because there is no retaining force between them.
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`This rattling around could result in the type of relative movement and
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`misalignment of the ejection holes, heating wire, and piezoelectric element
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`discussed above.
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`20. Meyst’s allegation that a bonding material between the cavity wall
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`and porous body would interfere with the reabsorption of the droplets from the
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`atomization cavity into the porous body (Ex. 2015 at ¶ 41) is also mistaken. Hon
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`043 teaches that “the large diameter droplets stick to the wall under the action of
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`eddy flow and are reabsorbed by the porous body 27 via the overflow hole 29.”
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`Ex. 1003 at 11. A PHOSITA would have understood that a bonding material is
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`applied to either the entire or more likely part of the cavity wall outer surface
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`10
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`R.J. Reynolds Vapor Exhibit 1027-00011
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`
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`facing the porous body, and that no bonding material is needed over the overflow
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`holes. The bonding material thus would not interfere with the reabsorption of the
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`large droplets through the overflow holes to the porous body. A PHOSITA would
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`have also understood that, even if bonding material were applied to a portion of the
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`porous body located in the area of the overflow hole, the bonding material would
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`not block the pores of the porous body just as applying paint or some other coating
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`to a screen does not block its holes.
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`21. Hon 043’s Atomization Cavity Wall Provides Weight-Bearing
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`Support For The Porous Body. In the Hon 043 device, the atomization cavity
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`wall 25 “is surrounded with a porous body 27, which can be made of foam nickel,
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`stainless steel fiber felt, high molecule polymer foam and foam ceramic.” Ex.
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`1003 at 9; Ex. 1015 at ¶ 45. It is basic physics that at least the portion of the
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`porous body disposed on top of the cavity wall exerts a downward gravity force
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`towards the underlying cavity wall. This is particularly true when, as Meyst
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`admitted, the porous body is constantly saturated with liquid. Ex. 2001 at ¶ 45.
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`With the additional mass of the liquid, the porous body full of liquid could also sag
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`or collapse under the downward gravity force but for the cavity wall holding up the
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`weight of both the porous body and the liquid. As I previously testified, this
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`weight-bearing support from the cavity wall prevents the porous body from
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`“[sagging] like a horse’s back under the weight of the gravity.” Ex. 2016 (Sturges
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`11
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`R.J. Reynolds Vapor Exhibit 1027-00012
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`
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`Dep. Tr.) at 126:12-17, 186:23-187:15. The cavity wall thus holds up at least some
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`of the weight of the porous body, thus providing weight-bearing support to the
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`porous body.
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`22. Meyst’s testimony supports my opinion that the cavity wall in Hon
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`043 provides weight-bearing support to the porous body. Meyst testified that the
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`porous component in the 742 patent is set on the frame; as such, the frame
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`necessarily supports the weight of the porous body. Ex. 1023 (Meyst Dep. Tr.) at
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`34:16-23, 40:4-13. Meyst also testified that the atomizer “somehow” must be
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`connected with the shell via the porous component and/or the frame, and regardless
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`of the point of connection, the 742 patent’s frame supports the porous component.
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`Id. at 30:6-34:24; Ex. 2015 at ¶ 29. Meyst further explained that even if the
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`atomizer is secured to the shell via the porous component, the portion of the 742
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`patent’s frame enclosed by the porous component (the horizontal portion) provides
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`weight-bearing support by holding up the mass of the top part of the porous
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`component against the downward gravity force. Ex. 1023 (Meyst Dep. Tr.) at
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`48:21-49:14. Meyst’s reasoning with respect to the 742 patent also applies to the
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`Hon 043 device, which includes a porous body made from the same wide range of
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`materials identified in the 742 patent for making the porous component. Ex. 1003
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`at claim 11; 7:9-10 (porous body is made from foam nickel, stainless steel fiber
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`felt, high molecule polymer foam or foam ceramic); Ex. 1001, 5:50-52 (The porous
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`12
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`R.J. Reynolds Vapor Exhibit 1027-00013
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`
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`component (81) is made of foamed nickel, stainless steel fiber felt, macromolecular
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`polymer foam or foamed ceramics.”). As shown in the below side by side
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`annotation of Fig. 6 of Hon 043 and Fig. 18 of the 742 patent, the cavity wall
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`surrounded by the porous body in Hon 043 holds up at least the weight of the top
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`part of the porous body against the downward gravity force in the same manner
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`that the 742 patent’s frame holds up at least the weight of the top part of the porous
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`component.
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`Ex. 1003 at Fig. 6
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`Ex. 1001 at Fig. 18
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`23. Hon 043’s Atomization Cavity Wall Provides Axial Support And
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`Prevents Axial Displacement Of Porous Body With Respect To The Cavity
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`Wall. As I explained in my Petition Declaration, “[t]he PHOSITA would have
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`recognized that the porous body is attached to the cavity wall 25 via either a
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`friction fit or through a bonding material to prevent axial displacement of the
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`porous body under the shear forces exerted at the interface of cavity wall 25 with
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`13
`
`
`Porous
`Body
`
`Force of
`gravity
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`Atomization
`Cavity Wall
`
`Frame
`
`Porous
`component
`
`Force of
`gravity
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`R.J. Reynolds Vapor Exhibit 1027-00014
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`
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`the porous body 27 when the porous body is inserted into the storage porous body
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`28. The shear forces could be particularly significant when the porous body and
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`the solution storage body 28 are made from materials that have similar and
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`relatively high rigidity.” Ex. 1015 at ¶ 45. My opinion has not changed. The
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`atomization cavity wall 25 prevents axial displacement of the porous body 27 with
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`respect to the cavity wall 25. To be clear, the axial forces that result from inserting
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`the porous body into the liquid storage body are distributed along the cavity wall-
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`porous body interface and taken up as shear forces at that interface. My deposition
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`testimony is also consistent in this regard. Ex. 2016 (Sturges Dep. Tr.) at 117:7-
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`14, 118:10-119:12. The cavity wall-porous body interface where axial
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`displacement of the porous body 27 relative to the cavity wall 25 is prevented is
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`shown below in bright green in annotated Fig. 6.
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`24. Meyst mischaracterized my testimony, referring to a different type of
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`axial displacement: axial movement of the atomizer 9 including the porous body
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`
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`14
`
`
`Interface
`where axial
`displacement
`is prevented
`
`R.J. Reynolds Vapor Exhibit 1027-00015
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`
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`27 with respect to shell 14. Ex. 2015 at ¶¶ 52-55 (note that in Meyst’s annotated
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`Fig. 1, Meyst described the movement of the blue-highlighted component, which is
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`the atomizer 9, to the left or right of the red annotated axis in the device). Meyst’s
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`annotated Fig. 1 is copied below.
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`Ex. 2015 at ¶ 52
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`
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`25. Meyst’s characterization of my opinion is not supported by my
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`deposition testimony and declaration opinions in context. I testified that cavity
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`wall 25 prevents the axial displacement of porous body 27 with respect to cavity
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`wall 25, thereby preventing deformation of the porous body along the interface
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`between the cavity wall and porous body. Cavity wall 25 will not prevent the axial
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`movement of porous body 27 with respect to shell 14.
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`26. Preventing axial displacement of porous body 27 relative to cavity
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`wall 25 and preventing porous body 27 from deforming are two ways of describing
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`the same support that cavity wall 25 provides to porous body 27. Ex. 2016
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`15
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`R.J. Reynolds Vapor Exhibit 1027-00016
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`
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`(Sturges Dep. Tr.) at 118:10-119:12. Axial displacement of the porous body
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`relative to the cavity wall results in deformation of the porous body. As a
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`PHOSITA would have understood from Hon 043, axial displacement relative to
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`cavity wall and deformation is prevented by a friction fit or bonding fit between
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`the cavity wall 25 and porous body 27. Without a contacting fit to allow the cavity
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`wall to take up the axially directed or compression forces at the end of the porous
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`body during assembly with the liquid-supplying bottle, the porous body could be
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`subjected to deforming stresses.
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`27. With respect to Hon 043, a PHOSITA would have understood that the
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`compressive forces created when bulge 36 is impressed into liquid-supply bottle 11
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`would cause axial displacement of porous body 27 with respect to cavity wall 25,
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`and thus deformation of porous body 27, but for support from cavity wall 25.
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`Distributing stress through transfer of the compressive forces from the porous body
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`to the cavity wall would prevent deformation. Id. Meyst’s declaration testimony
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`agrees with me in this regard. Figures in Meyst’s declaration, copied below, show
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`that when forcibly impressed into the liquid-supplying bottle, the porous body is
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`deformed at the bulge and bottom portions where there is no cavity wall support
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`while the portion of the porous body around the cavity wall does not deform
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`because the cavity wall reacts to the forcible impression through shear forces
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`spread out along the cavity wall, thus providing axial support for the porous body.
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`16
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`R.J. Reynolds Vapor Exhibit 1027-00017
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`
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`Ex. 2015 at ¶¶ 73-74 (red arrows and annotations added)
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`
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`28. Meyst states that “Hon 043 does not suggest a compressive force
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`strong enough to cause the porous body 27 to deform.” Ex. 2015 at ¶¶ 59-62, 70-
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`75; Paper 24 at pp. 25-26, 29-30. I disagree. Hon 043 teaches that the impression
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`of bulge 36 of the porous body 27 into the liquid-supplying bottle 11 is forcible.
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`Ex. 1003 at Figs. 1-3, 11; see also Ex. 2016 (Sturges Dep. Tr.) at 116:3-10,
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`118:21-119:12, 170:25-171:11. As shown in the annotated Fig. 11 below, the
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`liquid-supplying bottle 11 containing solution storage porous body 28 has an
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`undeformed, flat surface at the left side facing the atomizer prior to impression
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`while the liquid-supplying bottle 11 has a deformed/indented surface after
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`impression as shown in annotated Figs. 1-3. Hon 043 also describes that in Fig. 2,
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`“a spring piece 33 for pressing the liquid-supplying bottle l1 on the atomizer 9 is
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`provided on one end of the liquid-supplying bottle 11.” (Ex. 1003 at 12) (emphasis
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`17
`
`
`Compression
`
`Compression
`
`R.J. Reynolds Vapor Exhibit 1027-00018
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`
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`added). A PHOSITA would have understood that “pressing” means more than just
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`making contact of any sort.
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`
`
`
`
`18
`
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`Spring piece pressing
`
`Indentation
`
`Fig. 2 of Hon 043
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`Liquid-supplying bottle
`
`Atomizer
`
`Bulge 36 of
`porous body 27
`
`Fig. 1 of Hon 043
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`Indentation
`
`Atomizer
`
`Liquid-supplying bottle
`
`Fig. 3 of Hon 043
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`Bulge 36 of
`porous body 27
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`Liquid-supplying bottle
`
`Atomizer
`
`Indentation
`
`R.J. Reynolds Vapor Exhibit 1027-00019
`
`
`
`
`
`29. Meyst also states that compressive forces, if applied to the porous
`
`body, would weaken the porous body along the edges of the cavity wall. Ex. 2015
`
`at ¶¶ 59-65, 74-75; Paper 24 at pp. 27-28. This, however, is irrelevant with respect
`
`to the support issue because regardless of whether the edges are weakened or not,
`
`cavity wall supports porous body by preventing axial displacement/deformation of
`
`the porous body by transferring the compressive forces to the cavity wall under the
`
`shear forces that exist as a result of the contact fit between the porous body and the
`
`cavity wall. The bulge portion of porous body cannot “absorb” forces on its own.
`
`The compressive forces are transferred throughout the entire porous body and then
`
`to the cavity wall by virtue of the shear forces resulting from the contact fit. These
`
`compressive forces could otherwise lead to deformation of the porous body but for
`
`the axial support from the cavity wall.
`
`30. Patent Owner also misinterpreted the teachings of Hon 043,
`
`incorrectly alleging that forces capable of deforming the porous body would exist
`
`“[o]nly by assuming a skilled person will intentionally make problematic material
`
`design choices.” Paper 24 at pp. 25-26. This statement is incorrect and
`
`19
`
`
`No indentation on the left surface
`of solution storage body 28 when it
`is not pressed against atomizer 9
`
`R.J. Reynolds Vapor Exhibit 1027-00020
`
`
`
`unfounded. As such, I note that Meyst, Patent Owner’s expert, did not offer an
`
`opinion in this regard. Although forces capable of deforming the porous body may
`
`exist given the wide range of possible materials identified in Hon 043 for the
`
`porous body, they are not a problem in Hon 043 because of the support provided
`
`by cavity wall (that is, the deforming forces are reacted to by the cavity wall). By
`
`providing the cavity wall, Hon 043 permits the wide range of design choices
`
`identified by Hon 043 such as, for example, low rigidity, compliant high molecule
`
`polymer foams for the porous body, which is used to transfer liquid from the
`
`liquid-supplying bottle to the atomization chamber. Ex. 1003 at 9, 11; Ex. 1020
`
`(Sturges Supplemental Declaration) at 4-8: Ex. 2016 (Sturges Dep. Tr.) at 53:22-
`
`54:13. Indeed, since Hon 043 teaches an atomization cavity wall, a PHOSITA
`
`would have recognized that the porous body could easily be made from a low
`
`rigidity material. Ex. 2016 (Sturges Dep. Tr.) at 127:7-17. A PHOSITA would
`
`have understood that such low rigidity materials could also sag and/or collapse
`
`when saturated with liquid. As a PHOSITA would have understood, the support
`
`provided by cavity wall permits the selection of a wide range of materials,
`
`including low rigidity materials, for the porous body in the Hon 043 atomizer. Id.
`
`at 126:12-17, 127:7-17, 186:23-187:15.
`
`31. Patent Owner alleged that atomization cavity wall would not prevent
`
`the porous body from deforming because “the cavity wall is entirely encased
`
`20
`
`
`R.J. Reynolds Vapor Exhibit 1027-00021
`
`
`
`within the porous body.” Paper 24 at pp. 26-28; Ex. 2015 at ¶¶ 71-75. I disagree.
`
`Patent Owner confused the role of support/deformation prevention with that of
`
`shear forces. The compressive forces cause the axial displacement (deformation).
`
`Due to the contact fit, the compressive forces are taken up by shear forces at the
`
`cavity wall-porous body interface, which prevents axial displacement of the porous
`
`body relative to the cavity wall. Ex. 2016 (Sturges Dep. Tr.) at 115:19-116:2,
`
`117:7-120:16, 126:4-127:6. But, besides compressive forces, body forces (gravity
`
`or shock due to dropping, over-pressure) also cause deformation, which is a result
`
`of Newton's laws of motion, even if the cavity wall is entirely encased within the
`
`porous body. Id. at 126:4-127:6, 187:7-188:2. Also, a porous body made of a low
`
`rigidity polymer foam (within the teachings of Hon 043) deforms when loaded
`
`with liquid but for the support from the cavity wall enclosed in the porous body.
`
`Id. at 187:7-188:2; Ex. 1020 (Sturges Supplemental Declaration) at ¶¶ 4-8.
`
`32. Meyst opines that a PHOSITA would not have been concerned by
`
`deformation of Hon 043’s porous body. Ex. 2015 at ¶¶ 68 (“a person of ordinary
`
`skill would not have been concerned about deformation of Hon 043’s porous body
`
`27”), 69 (“if contact between the porous body 27 and solution storage body 28
`
`caused the porous body to deform, it would not impact the porous body’s functions
`
`of transporting liquid from the liquid supply to the ejection holes or reabsorbing
`
`large liquid droplets through the overflow holes”); Paper 24 at p. 29. I disagree. A
`
`21
`
`
`R.J. Reynolds Vapor Exhibit 1027-00022
`
`
`
`PHOSITA would have understood that deformation, particularly permanent
`
`deformation, of Hon 043’s could negatively affect the performance of Hon 043’s
`
`device. Deforming the porous body would impact the rate at which liquid travels
`
`through the porous body via capillary action, because, among other things,
`
`deformation would affect the spacing and size of the pores. Deformation that
`
`changes the size of the atomization cavity and/or misaligns the ejection holes,
`
`heating elements, and/or piezoelectric elements could also negatively impact
`
`performance. A PHOSITA would have understood all of this, and would have also
`
`understood that the problem of deformation is addressed by the support that cavity
`
`wall 25 provides the porous body 27.
`
`33. Hon 043’s Atomization Cavity Wall Provides Radial Support To
`
`Porous Body. As I explained in my Petition Declaration, Supplemental
`
`Declaration and deposition testimony, atomization cavity wall provides radial
`
`support to porous body when a user inadvertently blows into the mouthpiece
`
`and/or when the porous body 27 is saturated with liquid. As such, the cavity wall
`
`prevents deformation and/or maintains the shape and strength of the porous body
`
`in over-pressure and/or liquid saturation situations. Ex. 1015 at ¶¶ 47-49; Ex. 1020
`
`(Supplemental Declaration) at ¶¶ 4-11; Ex. 2016 (Sturges Dep. Tr.) at 126:4-127:6,
`
`186:23-188:2.
`
`22
`
`
`R.J. Reynolds Vapor Exhibit 1027-00023
`
`
`
`34. Meyst argued that the atomizer 9 has an open exit on the bulge 36 of
`
`the porous body 27. As such, Patent Owner argued that “one skilled in the art
`
`would understand that the atomized droplets Hon 043 exit the atomization cavity
`
`through an opening on one end—the droplets do not pass through the liquid-filled
`
`porous body.” According to Meyst, the exit hole essentially acts as a pressure relief
`
`hole that prevents over-pressure situations. Thus, because over-pressure situations
`
`are allegedly avoided, radial support for the porous body in over-pressure
`
`situations is unnecessary. Ex. 2015 at ¶¶ 42-43, 76-79; Paper 24 at pp. 3, 31-40. I
`
`disagree that there is an exit hole as Meyst alleges. Meyst relies on a hand drawn
`
`figure allegedly showing an open exit at a downstream end of Hon 043’s atomizer.
`
`
`
`Ex. 2015 at ¶ 42
`
`23
`
`
`R.J. Reynolds Vapor Exhibit 1027-00024
`
`
`
`Ex. 2015 at ¶ 79
`
`
`
`35. A PHOSITA, however, would have understood that Hon 043 does not
`
`disclose an open exit at or near the bulge 36 at the downstream end of the atomizer
`
`9. First, Hon 043 does not describe, nor do Hon 043’s drawings show, an exit
`
`hole. Figs. 6 and 8 are sectional views of atomizer 9. Figs. 6 and 8 do not show
`
`any open exit through porous body 27 at or near bulge 36 at the downstream end of
`
`atomizer 9. The small scallop-shaped space (highlighted in yellow in annotated
`
`Fig. 6 below) at the downstream top of atomization cavity 10 is an inner dome
`
`shaped cavity behind the bulge, not an opening. A PHOSITA understanding
`
`standard drawing practices would have readily discerned this fact. Moreover, the
`
`top of the dome is below the shoulder surrounding the bulge 36. As such, the
`
`dome is buried under both bulge 36 and the shoulder. The dome thus does not run
`
`through porous body 27, and cannot be an open exit as Meyst argued.
`
`24
`
`
`R.J. Reynolds Vapor Exhibit 1027-00025
`
`
`
`Ex. 1003 at Fig. 6 (Annotated)
`
`
`
`36. Second, as revealed by the ejections holes 24 through the porous
`
`body, the patentee knew how to illustrate and describe a hole if one was
`
`contemplated. No such hole is illustrated or described at the porous body’s bulge
`
`section. Also, the 742 patent and Hon 043 have the same, sole inventor, Lik Hon.
`
`The 742 patent shows an
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