`
`
`
`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
`
`U.S. Patent No.: 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
`
`
`
`
`
`
`Inter Partes Review No. IPR2016-01268
`
`
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`
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`PETITIONER’S REPLY BRIEF
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`
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`TABLE OF CONTENTS
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`Page
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`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER ADVOCATES AN IMPROPERLY
`NARROW CONSTRUCTION OF “SUPPORTED BY” ............................... 5
`
`III. CLAIMS 2 AND 3 ARE UNPATENTABLE ................................................. 8
`
`A.
`
`Claim 2 Is Obvious ................................................................................ 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`Hon 043’s Cavity Wall Provides Weight-Bearing
`Support For The Porous Body .................................................... 8
`
`Hon 043’s Cavity Wall Provides Axial Support
`For The Porous Body ................................................................ 11
`
`Hon 043’s Cavity Wall Provides Radial Support In
`Over-Pressure Situations ........................................................... 15
`
`The Proposed Combination Teaches A Heating
`Wire Wound On A Part Of The Porous Component ................ 20
`
`The Combination Of Hon 043 With Whittemore Is The
`Substitution Of One Known Element For Another To
`Achieve A Predicted Result ................................................................ 22
`
`Claim 3 Is Also Obvious Over The Combination of Hon
`043 With Whittemore .......................................................................... 27
`
`B.
`
`C.
`
`IV. CONCLUSION .............................................................................................. 28
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`
`i
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`
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`CASES
`
`TABLE OF AUTHORITIES
`
`Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc.,
`923 F. Supp. 2d 602 (D. Del. 2013) .....................................................................26
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................27
`
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .............................................................................. 8
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................24
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ............................................................... 22, 26, 27
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ..............................................................................27
`
`KSR Int’l v. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 8
`
`OTHER AUTHORITIES
`
`MPEP §2143 ..................................................................................................... 22, 27
`
`
`
`ii
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`EXHIBITS LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 1001: U.S. Pat. No. 8,365,742 to Lik Hon
`
`Exhibit 1002: Chinese Pat. No. 2719043Y to Lik Hon
`
`Exhibit 1003:
`
`Certified English translation of Chinese Pat. No. 2719043Y to
`Lik Hon
`
`Exhibit 1004: U.S. Pat. No. 2,057,353 to C. L. Whittemore, Jr
`
`Exhibit 1005:
`
`Application Data Sheet of April 5, 2011 Filed in U.S. Pat. Appl.
`No. 13/079,937
`
`Exhibit 1006:
`
`Preliminary Amendment of April 5, 2011 Filed in U.S. Pat.
`Appl. No. 13/079,937
`
`Exhibit 1007:
`
`Non-Final Office Action of July 19, 2012 in U.S. Pat. Appl. No.
`13/079,937
`
`Exhibit 1008:
`
`Amendment of August 3, 2012 in U.S. Pat. Appl. No.
`13/079,937
`
`Exhibit 1009: PCT Pub. No. WO2007131449
`
`Exhibit 1010: English translation of PCT Pub. No. WO2007131449
`
`Exhibit 1011: Board’s Decision Denying Institution in IPR2015-00859
`
`Exhibit 1012:
`
`Patent Owner’s Preliminary Response to Petition for IPR of
`US8,365,742
`
`Exhibit 1013: Petition for IPR of US8,365,742 in IPR2015-00859
`
`Exhibit 1014: Board's Order Dismissing Petition IPR2015-01587
`
`Exhibit 1015: Declaration of Dr. Robert Sturges
`
`Exhibit 1016: Rohsenow, “Heat, Mass, And Momentum Transfer”
`
`Exhibit 1017:
`
`WO 2005/099494, which is the PCT application equivalent of
`Hon (CN 2719043) (“Hon ’494”)
`
`Exhibit 1018:
`
`Certified English translation of WO 2005/099494 pursuant to 37
`C.F.R. 42.63(b)
`
`iii
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`
`
`
`
`
`
`Exhibit 1019:
`
`Updated translator declaration attached to the Certified English
`translation of Chinese Pat. No. 2719043Y to Lik Hon that was
`previously submitted as Exhibit 1003 submitted in accordance
`with PTAB Order in Paper 10.
`
`Exhibit 1020: Supplemental Declaration of Dr. Robert Sturges
`
`Exhibit 1021: Declaration of Huo Gejun
`
`Exhibit 1022:
`
`Excerpt from Rough Deposition Transcript of Richard P. Meyst,
`June 6, 2017 in IPR2016-01272 Marked as an Exhibit at Meyst
`6/7/17 Deposition
`
`Exhibit 1023: Deposition Transcript of Richard P. Meyst, June 7, 2017
`
`Exhibit 1024: Merriam-Webster Definition of “Support” And “Frame”
`
`Exhibit 1025: Oxford Modern English Definition of “Support”
`
`Exhibit 1026: Oxford Dictionary Definition of “Support”
`
`Exhibit 1027: Reply Declaration of Dr. Robert Sturges
`
`Exhibit 1028: Mitchell et al, AAPS PharmaSciTech 2003, 4 (4) Article 54
`
`Exhibit 1029: Breon et al., Science 2002, 295 (5556), pp. 834-838
`
`Exhibit 1030: U.S. Pat. No. 4,957,543 to Babjak et al.
`
`Exhibit 1031: U.S. Pat. No. 6,932,925 to Kishi et al.
`
`Exhibit 1032: Sabersky & Acosta, Fluid Flow in Fluid Mechanism
`
`Exhibit 1033: Declaration of James Donnelly
`
`iv
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`
`
`I.
`
`INTRODUCTION
`
`The conclusion of obviousness is straightforward. Hon 043 discloses an
`
`electronic cigarette having the claimed features with the sole exception that Hon
`
`043’s heating wire is not “wound on a part of the porous component.” However,
`
`that teaching is provided by Whittemore. Whittemore discloses a vaporizing unit
`
`with a heating coil wrapped around a portion of a porous wick. It would have been
`
`obvious to substitute Whittemore’s wire coiled wick for Hon 043’s heating wire,
`
`because this is merely the substitution of one known element (Whittemore’s wire
`
`coiled wick) for another (Hon 043’s heating wire) to achieve a predictable result:
`
`atomization of liquid. That should be the end of it. Claims 2 and 3 are not
`
`patentable.
`
`Patent Owner (“P.O.”) devotes a majority of its opposition to arguing that
`
`Hon 043 is missing the “supported by” limitation of claim 2. But for purposes of
`
`the “supported by” limitation, Hon 043’s cavity wall (i.e., frame) is not materially
`
`different from the frame disclosed in the 742 patent. They both provide the same
`
`type of support for the porous component.
`
`In an effort to argue otherwise, P.O. advocates an improperly narrow
`
`construction of “supported by” as limited to weight-bearing support to the
`
`exclusion of any other manner of support. But P.O.’s construction is contrary to
`
`the specification of the 742 patent, and the plain and ordinary meaning of
`
`
`
`
`
`“support.” As properly construed, “supported by” encompasses all manners of
`
`support, including not only weight-bearing support, but also support against axial
`
`and/or radial forces that may act upon the porous body.
`
`Moreover, even under P.O’s improperly narrow construction, Hon 043’s
`
`porous body is “supported by” the cavity wall. Hon 043’s cavity wall provides
`
`weight-bearing support; it must according to the laws of gravity. Hon 043’s cavity
`
`wall also provides support against axial and radial forces directed at the porous
`
`body. The weight-bearing, axial, and radial support provided by Hon 043’s cavity
`
`wall are all encompassed by claim 2’s “supported by” limitation as properly
`
`construed.
`
`P.O.’s charge that Sturges “recant[ed]” his opinion that Hon 043’s frame
`
`provides axial support is without merit. To get there, P.O. incorrectly characterizes
`
`Sturges’ opinions. But Sturges has consistently opined that Hon 043’s frame
`
`provides support against axial compression of the porous body when it is inserted
`
`into Hon ‘043’s liquid-supplying bottle. The axial support provided by the cavity
`
`wall also preserves the integrity of Hon 043’s atomization chamber. Indeed, P.O.’s
`
`expert Meyst agrees.
`
`In an attempt to debunk the notion that Hon 043’s cavity wall provides radial
`
`support against over-pressure situations, P.O. argues that over-pressure situations
`
`would not occur. But to support that argument, P.O. must modify one end of Hon
`
`2
`
`
`
`
`
`043’s atomizer to include an “exit hole” that simply does not exist. P.O.’s other
`
`arguments are also without merit. The user would not necessarily expel the device
`
`while coughing or sneezing, and may even deliberately blow into Hon 043’s device
`
`out of curiosity or with intent to damage the device. In any event, Hon 043’s
`
`cavity wall provides radial support for the porous body, particularly when the
`
`porous body is made from one of the relatively compliant materials disclosed by
`
`Hon 043.
`
`P.O. also resorts to repeating the tired mantra that Petitioner’s proposed
`
`substitution of Whittemore’s wire wrapped wick for Hon 043’s heating wire is
`
`based upon “hindsight,” yet never disputes that the proposed combination is the
`
`substitution of one known element (Whittemore’s heating wire coil/wick
`
`configuration) for another (Hon 043’s heating wire) to achieve the predicted result
`
`of atomization. Instead, P.O. argues that improved atomization efficiency would
`
`not have motivated the PHOSITA to make the proposed substitution. But P.O.
`
`demands more than the law requires. The substitution of one known element for
`
`another to achieve predictable results is obvious, no additional motivation is
`
`required.
`
`Nevertheless, improved atomization efficiency would indeed have motivated
`
`the PHOSITA to substitute Whittemore’s thermally more efficient wire wrapped
`
`wick for Hon 043’s convective heating wire. P.O’s arguments to the contrary are
`
`3
`
`
`
`
`
`without merit. First, P.O. relies on an incorrect characterization of Hon 043, which
`
`was exposed during cross-examination of P.O.’s expert Meyst. Contrary to P.O.’s
`
`representation, Hon 043 always requires a heating element, a piezoelectric element,
`
`or both for atomization. The PHOSITA would have understood that Hon 043 is
`
`not nearly as energy efficient as P.O. and its expert contend. Second, even if, as
`
`P.O. contends, there were additional ways of improving Hon 043’s atomization
`
`efficiency (e.g., by increasing the surface area of Hon 043’s heating wire), that
`
`does not make the proposed substitution of Whittemore’s thermally more efficient
`
`wire wrapped wick for Hon 043’s heating wire non-obvious.
`
`Finally, P.O. argues that the proposed combination does not satisfy claim 3’s
`
`requirement that a portion of the porous component is located “between” the frame
`
`and outlet. P.O. is again mistaken. Hon 043 meets the “between” limitation to the
`
`same extent, if not more so, than the alleged invention described in the 742 patent.
`
`The bulge of Hon 043’s porous body is unquestionably located between the cavity
`
`wall and the outlet of Hon 043’s device.
`
`The Board’s initial reaction in granting review was correct. Claims 2 and 3
`
`are merely the result of substituting one known element (Whittemore’s heating
`
`wire coil/wick) for another (Hon 043’s heating wire) to achieve a predictable
`
`result. See Paper No. 10 at 14. The full record confirms that claims 2-3 should be
`
`cancelled.
`
`4
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`
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`
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`II. PATENT OWNER ADVOCATES AN IMPROPERLY NARROW
`CONSTRUCTION OF “SUPPORTED BY”
`
`P.O.’s preliminary response provided no proposed construction for
`
`“supported by.” Paper 8 at 13. And the Board in its institution decision
`
`determined that none of the claims terms require construction. Paper 10 at 8.
`
`Now, after institution, P.O. argues that “supported by” should be narrowly
`
`construed as limited to weight-bearing support (i.e.,“bear all or part of the weight
`
`of; hold up”) to the exclusion of all other manners of support. Paper 24 (“Opp.”) at
`
`8-11. P.O.’s narrow construction is contrary to the specification of the 742 patent,
`
`and the plain and ordinary meaning of “support.”
`
`The plain and ordinary meaning of “support” is not limited to weight-
`
`bearing support, but also also encompasses “to hold up or serve as a foundation or
`
`prop for” (Ex. 1024), or “keep from falling or sinking or failing,” “give strength
`
`to” (Ex. 1025). Consistent with these definitions, the specification of the 742
`
`patent teaches that the frame “gives strength to” and “keeps” the porous
`
`component from “failing” under a variety of forces.
`
`P.O.’s expert Meyst agrees that claim 2 is directed to the embodiments
`
`illustrated in Figs. 17-18 of the 742 patent. Ex. 1023 at 10:7-12. Annotated Fig.
`
`18 illustrates the contacting fit between the frame 82 and the porous component 81
`
`(Ex. 1023 at 84:24-85:4), and a preferred manner in which the porous component
`
`is supported by the frame:
`
`5
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`
`
`
`
`
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`The frame 82 provides weight-bearing (green arrows), axial (FA arrow), and radial
`
`(FR arrow) support for the porous component 81.
`
`As P.O.’s expert Meyst acknowledges, regardless of how the atomizer is
`
`attached within the e-cigarette housing, the portion of the frame 82 located inside
`
`of porous component 81 provides weight-bearing support, i.e., support against
`
`gravity. Ex. 1023, 40:4-13, 48:21-49:14. Indeed, that is just basic physics. Ex.
`
`1027, ¶¶ 21-22.
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`The frame 82 also provides axial support for the porous component 81.
`
`Inserting porous component 81 into liquid storage component 9 causes an axial
`
`directed compressive force on the porous component 81. Ex. 1023, 88:25-89:11;
`
`Ex. 1001 at 5:48-50, Fig 19; Ex. 1027, ¶ 9.
`
`6
`
`Frame
`
`Porous
`component
`
`Fig. 18 of
`742 patent
`
`FR
`
`FR
`
`Fa
`
`Fa
`
`Contacting fit
`
`
`
`
`
`
`
`The frame 81 supports the porous component against these axial directed
`
`forces. The axial directed forces are taken up by the shear force at the frame-
`
`porous component interface. Ex. 1027, ¶¶ 9, 23-32.
`
`As is evident from Fig. 18, the frame 82 also supports the porous body 81
`
`against radial directed forces. Radial directed forces could be the result of the user
`
`blowing into the device, from normal handling, or the user inadvertently dropping
`
`the device. Id., ¶¶ 10, 33.
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`In an effort to manufacture intrinsic record support for its improperly narrow
`
`construction, Patent Owner relies on the “supports” 841 disclosed in Figs. 13 and
`
`16 of the 742 Patent. According to Patent Owner, because the “supports” 841
`
`purportedly provide weight-bearing support for the heating cylinder 821, the
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`“supported by” limitation of claim 2 is necessarily limited to weight-bearing
`
`support. However, Figs. 13 and 16 are directed to a different embodiment. There
`
`is simply nothing in the 742 patent that overcomes the plain and ordinary meaning
`
`7
`
`Atomizer
`
`Perforated component
`for liquid storage
`
`Protuberance 812 of
`porous component 81
`
`
`
`
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`of “supported by.” Ex. 1023 at 13:2-14; Ex. 1027, ¶¶ 11-13. See Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
`
`The specification’s statement that the porous component is “set on” the
`
`frame does not support P.O.’s improperly narrow construction of “supported by.”
`
`Opp. at 10-11. Meyst explained that “set on” and “supported by” do not mean the
`
`same thing. Ex. 1023 at 37:23-39:7. If the patentee wanted to claim that the
`
`porous component is “set on” rather than “supported by” the frame, then it should
`
`have done so. See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
`
`Cir. 2004).
`
`Also misplaced is P.O.’s reliance on the Board’s prior construction of
`
`“supported by” in IPR 2015-00859. See Opp. at 19-20; Ex. 1011 at 15-16. That
`
`construction is not controlling here. Petitioner was not a party to the 859 IPR, and
`
`the Board is in any event free to reconsider its prior construction on the more fully
`
`developed record of this IPR.
`
`III. CLAIMS 2 AND 3 ARE UNPATENTABLE
`
`A. Claim 2 Is Obvious
`
`1. Hon 043’s Cavity Wall Provides Weight-Bearing
`Support For The Porous Body
`
`Hon 043 teaches the “supported by” limitation of claim 2, even under P.O.’s
`
`improperly narrow construction. As shown by the side-by-side figures below, Hon
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`043’s cavity wall 25 provides weight-bearing support (i.e., support against gravity
`
`8
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`
`
`
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`as shown by green arrows) for the porous component 27 in the same manner as the
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`742 patent. Ex. 1027, ¶¶ 21-22. There is no material difference between the
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`weight-bearing support provided by the frame of the 742 patent and Hon 043’s
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`cavity wall. See Ex. 2016, 186:23-188:2 (Hon 043’s cavity wall 25 prevents
`
`porous body 27 from “sag[ging] like a horse’s back under the weight of gravity.”);
`
`Ex. 1023 at 30:5-32:10, 48:9-49:14 (the portion of frame 82 located inside porous
`
`body 81 supports the porous body against gravity).
`
`.
`
`
`
`
`
`In an attempt to distinguish the 742 patent from Hon 043, P.O. argues that
`
`cavity wall 25 (unlike frame 81) cannot provide weight-bearing support because it
`
`is surrounded completely by the porous body 27. Opp. at 20; Ex. 2015, ¶50. But
`
`this is a distinction without a difference. As Meyst explained, the portion of the
`
`frame 82 located “inside” the atomizer (and thus inside porous component 81) is
`
`what provides support against gravity, i.e., weight-bearing support. Ex. 1023 at
`
`9
`
`Porous
`Body
`
`Force of
`gravity
`
`Atomization
`Cavity Wall
`
`Frame
`
`Porous
`component
`
`Force of
`gravity
`
`
`
`
`
`21:14-22:22, 31:6-32:10, 48:5-49:14. It necessarily follows then that Hon 043’s
`
`cavity wall 25, which is also located inside the porous body, provides the same
`
`weight-bearing support for the porous body 27. Thus, it is immaterial that Hon
`
`043’s cavity wall is enclosed completely by the porous body. The frames of both
`
`Hon 043 and the 742 patent provide weight-bearing support. Ex. 2016, 126:12-17,
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`186:23-187:15; Ex. 1027, ¶¶ 21-22.
`
`P.O. also overstates the Board’s holding in the VMR IPR. Opp. at 20; Ex.
`
`1011 at 16. Unlike in the VMR IPR, Petitioner in this IPR has plainly
`
`demonstrated that Hon 043’s cavity wall 25 provides weight-bearing support for
`
`porous body 27. See also Paper 10 at 7-8.
`
`Also without merit is P.O.’s charge that Sturges conflated the teachings of
`
`Hon 043 with the 742 patent. Opp. at 22-23. Sturges correctly noted that both
`
`Hon 043 and the 742 patent teach a porous component “set on” a frame. Ex. 2016
`
`at 113:9-114:9. Not only is Sturges absolutely correct, as shown in the figures
`
`below, but also the relevant issue for claim 2 is not whether Hon 043 teaches the
`
`porous body “set on” the frame (it does), but whether the porous body is
`
`“supported by” the cavity wall 25; it is.
`
`10
`
`
`
`
`
`
`
`And even though Hon 043’s cavity wall performs a multitude of additional
`
`functions (e.g. forming atomization cavity 10), Opp. at 23-24, it also provides
`
`support for the porous body 27. Ex. 2016, 186:23-188:2; Ex. 1027, ¶¶21-22
`
`2. Hon 043’s Cavity Wall Provides Axial Support For
`The Porous Body
`
`As illustrated in the annotated figures below, when Hon 043’s atomizer is
`
`inserted into the liquid supplying bottle 11, Hon 043’s cavity wall 25 provides
`
`axial support for the porous body 27. Ex. 1015 at ¶¶ 44-45. The axial support is
`
`provided by distributing the compressive forces to the cavity wall through the
`
`shear forces at the cavity wall-porous body interface. Id. at 45-46; Ex. 1027, ¶¶ 23,
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`26-27, 30-31.
`
`11
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`
`
`
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`
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`Notwithstanding P.O.’s hollow accusations, Sturges did not recant his
`
`opinion that Hon 043’s cavity wall provides axial support. Sturges merely
`
`explained that the axial displacement referred to in his declaration is axial
`
`displacement of the porous body 27 along the length of cavity wall 25 when Hon
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`043’s atomizer 9 is inserted into the liquid supply bottle 11. Ex. 2016 at 118:5-20;
`
`Ex. 1015 at ¶ 44; Ex. 1027, ¶¶ 23-26. The resulting compressive forces are taken
`
`up by the leading edge of cavity wall 25 and dispersed along the cavity wall-
`
`porous body interface, which minimizes axial deformation and maintains the
`
`integrity of the atomization cavity 10. Ex. 2016 at 115:1-18, 118:21-122:1; Ex.
`
`1015 at ¶¶ 45-46; Ex. 1027, ¶¶ 23-26.
`
`As the below figures from Meyst’s declaration confirm, but for the cavity
`
`wall 25, the forces referenced by Sturges would cause axial deformation of the
`
`porous body, and destroy the atomization cavity when the atomizer is inserted into
`
`the liquid supply. Ex. 1027, ¶ 27.
`
`12
`
`Porous
`Body
`
`Compressional
`force
`
`Bonding or
`friction fit
`
`Leading
`edge
`
`Atomization
`Cavity Wall
`
`atomization
`cavity wall 25
`
`Compressional
`force
`
`Atomizer
`9
`
`Liquid-Supplying Bottle
`11
`
`
`
`
`
`
`
`
`
`
`
`Ex. 2015 at ¶¶ 73-74 (red arrows and annotations added)
`
`These figures from Meyst’s declaration also belie P.O’s contention that the cavity
`
`wall would need to extend “all the way to the outer edges of the porous body” in
`
`order to provide axial support for the porous body. Opp. at 27.
`
`P.O. notes that Hon 043’s cavity wall 25 does not completely prevent all
`
`axial deformation, and that the edges of the cavity wall are a potential failure point
`
`when the axial compressive forces are “strong enough.” Opp. at 27-28. But none
`
`of that matters. Even if not entirely full-proof, Hon 043’s cavity wall nonetheless
`
`supports the porous body.
`
`P.O suggests that there are no axial compressive forces in Hon 043, because
`
`there allegedly is no “forcible” contact between Hon 043’s porous body 27 and
`
`solution storage body 28. Opp. at 26. But that argument is belied by Hon 043,
`
`13
`
`Compression
`
`Compression
`
`
`
`
`
`which shows the bulge of the porous body inserted into the liquid-supplying bottle
`
`with a force sufficient to causes an indentation in the material 9. Ex. 2016 at
`
`116:3-10; Ex. 1027, ¶ 28. P.O. also ignores the express disclosure of Hon 043’s
`
`Figure 2, which illustrates a spring piece 33 “pressing the liquid-supplying bottle
`
`11 on the atomizer 9.” Id.; Ex. 1003 at 7, 12 (emphasis added).
`
`
`
`
`
`
`
`
`
`P.O. argues that the axial support provided by cavity wall 25 is unnecessary,
`
`because the PHOSITA would avoid selecting similarly rigid materials for the
`
`porous body 27 and storage body 28. See Opp. at 26. But this deliberately misses
`
`the point. Because of the support provided by cavity wall 25, porous body 27 can
`
`14
`
`Bulge 36 of
`porous body 27
`
`Fig. 1 of Hon 043
`
`Indentation
`
`Atomizer
`
`Liquid-supplying bottle
`
`Spring piece
`pressing
`
`Indentation
`
`Fig. 2 of Hon 043
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`Liquid-supplying bottle
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`Atomizer
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`
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`
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`be made from a wide range of materials, including those having a rigidity that is
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`greater than, less than, or the same as storage body 28. Ex. 1020 at ¶¶ 4-8; Ex.
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`1027, ¶¶ 30, 32.
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`P.O. also disputes that Hon 043 teaches a friction fit at the cavity wall-
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`porous body interface. Opp. at 22. But Figs. 6 and 8 of Hon 043 both show a
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`contacting, and thus friction, fit between the cavity wall 25 and porous body 27.
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`Ex. 2016 at 114:19-115:5; Ex. 1027 at ¶¶ 18-20.1
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`3. Hon 043’s Cavity Wall Provides Radial Support In
`Over-Pressure Situations
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`P.O. argues that a purported “exit” hole located at the downstream end of the
`
`atomizer acts as a pressure relief valve that precludes over-pressure situations. As
`
`such, according to the P.O., there is no need for cavity wall 25 to provide radial
`
`support for the porous body 27. Opp. at 31. The fatal flaw with P.O’s argument is
`
`that it manufactures an exit hole in Hon 043 where none exists.
`
`
`
`1 Contrary to P.O.’s argument, the PHOSITA would have understood that a
`
`bonding material easily could be applied to the porous body in a manner that
`
`would not interfere with reabsorption of nicotine solution through overflow holes
`
`29 of cavity wall 25. Ex. 1027, ¶ 20.
`
`15
`
`
`
`
`
`P.O. contends that parties to previous proceedings allegedly agreed that the
`
`sketch below accurately depicted Hon 043’s atomizer. Opp. at 34.
`
`
`
`But that is not exactly true. The parties merely acknowledged that it was P.O.’s
`
`position that the above sketch illustrated the open and unrestricted downstream end
`
`of Hon 043. Ex. 2021 at 15-16; Ex 2020 at 4. Moreover, even if there was an
`
`agreement that the above sketch accurately depicts Hon 043’s atomizer, it is not
`
`binding on the current Petitioner, who was not a party to those proceedings.
`
`Also, the above sketch does not appear anywhere in Hon 043, and it is not
`
`even clear who prepared it. P.O.’s expert Meyst attempts to reconcile the proposed
`
`sketch with Fig. 6 of Hon 043, arguing that the scalloped shaped space below the
`
`bulge in Fig. 6 corresponds to the exit hole illustrated in the sketch:
`
`16
`
`
`
`
`
`Ex. 2015 at ¶ 79
`
`
`
`But as Sturges explains, this is merely an enclosed empty space, not an exit hole.
`
`Ex. 1027, ¶¶ 34-39. Indeed, as shown by the ejection holes 24 included in Fig. 6,
`
`Hon knew how to illustrate a hole where one exists. Hon 043 simply does not
`
`illustrate or otherwise describe a hole in the area of the bulge 36, and P.O.’s
`
`attempt to manufacture one should be rejected.
`
`Also without merit is Meyst’s suggestion that an exit hole must necessarily
`
`exist, because without one Hon 043’s device allegedly would not properly
`
`function. According to Meyst, without an exit hole, a substantial majority of the
`
`airflow entering Hon 043’s device would allegedly bypass Hon 043’s atomization
`
`cavity. Ex. 2015 at ¶ 44. But if the exit hole were so important, one would expect
`
`that Hon 043 to have illustrated or otherwise described it. Meyst is in any event
`
`wrong. As Sturges explains, Hon 043 does not require an exit hole to function
`
`17
`
`
`
`
`
`properly. Ex. 1027 at ¶¶ 40-45. And even if it were as critical as Meyst suggests,
`
`this does not permit P.O. to redesign Hon 043 by arbitrarily adding an exit hole
`
`where none exists.
`
`Hon 043’s Figs. 1 and 2 also belie Meyst’s opinion that a downstream exit
`
`hole is necessary for the proper functioning of Hon’s device. In Fig. 2, the
`
`atomizer 9 (and thus porous body 27) is rotated by 180 degrees with an end of the
`
`atomizer that indisputably has no exit hole positioned downstream of the
`
`atomization cavity. Ex. 1003 at 12. If Hon 043’s Fig. 2 embodiment does not
`
`require an exit hole, then why does Hon 043’s Fig. 1 embodiment require one as
`
`alleged by Meyst? Under Meyst’s misguided opinion, the Fig. 2 embodiment,
`
`which has no exit hole, should suffer from the same alleged problems identified by
`
`Meyst, yet Hon 043 never articulates any such concerns. Meyst has no answer for
`
`this, and admitted that he did not even consider Hon’s Fig. 2 embodiment in
`
`reaching his opinion that the Fig. 1 embodiment requires an exit hole. Ex. 1023 at
`
`120:8-123:8.
`
`Thus, Meyst’s contention that, without the phantom exit hole, air could not
`
`exit Hon 043’s device without the porous body 27 reabsorbing atomized droplets
`
`lacks merit. Ex. 2015 at ¶ 45. As the PHOSITA would have understood, the
`
`droplets in Hon 043’s aerosol (which range in the microns size) are much smaller
`
`than the pores of the porous body 27 (which range in the hundreds of micron size).
`
`18
`
`
`
`
`
`Hon 043’s aerosol can easily pass through Hon 043’s porous body without being
`
`reabsorbed. Ex. 1027 at ¶ 42.2 Meyst’s hose and sponge analogy is inapt. In stark
`
`contrast to Hon 043’s device, the pores of a sponge are not designed to allow
`
`passage of the relatively large liquid droplets that are sprayed from a hose.
`
`Meyst also speculates that the pressure differential allegedly caused by a
`
`lack of an exit hole would cause liquid to seep out at the low-pressure, downstream
`
`end of the porous body. Ex. 2015 at ¶ 46. Not so. The PHOSITA would have
`
`understood that Hon 043’s porous body is designed such that the pressure of the
`
`user inhaling is sufficient to pull aerosol through the porous body but not
`
`sufficient to pull liquid out of the porous body. Ex. 1027 at ¶ 43.
`
`At bottom, there is no exit hole at the downstream end of Hon 043’s
`
`atomizer, nor is one required for Hon’s device to properly function. Accordingly,
`
`over-pressure situations will occur when the user blows into Hon 043’s device.
`
`Finally, P.O. argues that the user would expel the Hon 043 device before the
`
`internal pressure reached the maximum expiratory pressure of 2 psi. Alternatively,
`
`even if the backpressure reached 2 psi, P.O. argues that the porous body would be
`
`
`
`2 Meyst agrees that Hon’s porous body 27 is formed by a network of
`
`interconnecting pores. Ex. 2016 at 50:8-14.
`
`19
`
`
`
`
`
`sufficiently rigid to withstand these internal pressures without support from the
`
`cavity wall. Opp. at 40-42. P.O. is mistaken on both fronts.
`
`The user would not necessarily expel the Hon 043 device while coughing or
`
`sneezing. For example, the user may hold the device in place by gripping it with
`
`their teeth and/or hands while coughing or sneezing. Alternatively, a user may
`
`deliberately blow into the device either out of curiosity or with intent to damage
`
`the device. The PHOSITA would have understood that, in these situations, Hon
`
`043 cavity wall 25 provides radial support. Ex. 2016, 133:6-21.
`
`P.O’s argument that the porous body 27 is sufficiently rigid to withstand
`
`internal pressures reaching 2 psi is inconsistent with its position that the PHOSITA
`
`would have understood that Hon 043’s porous body may be made from a
`
`compliant material that is “soft and flexible.” Opp. at 30. As Sturges explains, the
`
`PHOSITA would have understood that many of the materials disclosed for Hon
`
`043’s porous body are sufficiently compliant that they will radially compress under
`
`pressures of 2 psi or less but for the support provided by cavity wall 25. Ex. 1027
`
`at ¶ 44.
`
`4.
`
`The Proposed Combination Teaches A Heating Wire
`Wound On A Part Of The Porous Component
`
`In an effort at misdirection, P.O. alleges that the only portion of Hon 043’s
`
`porous body in the path of airflow is the bulge, but that wrapping heating wire
`
`around the bulge section would result in a “device that would not function.” Opp.
`
`20
`
`
`
`
`
`at 43-44. But this is not the modification that the PHOSITA would make. Ex.
`
`2016, 154:10-157:21; Ex. 1012 at 38; Ex. 1027 at ¶¶ 49-50. Rather, the obvious
`
`modification is to simply substitute Whittemore’s wire wrapped wick, which is “a
`
`heating wire wound on a part of the porous component,” for Hon 043’s heating
`
`wire. Id.
`
`P.O. also contends that nothing in Hon 043 teaches placing a wire wrapped
`
`porous body in the path of airflow. Opp. at 45. But this is taught by Whittemore.
`
`Ex. 1004 at Figs. 2-3; Ex. 1027 at ¶ 54. Similarly, Hon 043 places his heating wire
`
`in the path of airflow. Thus, substituting Whittemore’s wire wrapped wick for Hon
`
`043’s heating wire, both of which are in the path of airflow, necessarily results in
`
`the porous body being located in the path of airflow. Id.
`
`P.O’s “teaching away” argument is similarly without merit. The PHOSITA
`
`would not have been concerned that atomized droplets would be reabsorbed by
`
`Whittemore’s wick in the proposed combination. Whittemore, which locates the
`
`wick in the atomization chamber, expresses no concern about the wick reabsorbing
`
`atomized droplets. Ex. 1027 at ¶ 67. The PHOSITA would have been similarly
`
`unconcerned. To the contrary, Whittemore’s heated wick is configured to release
`
`rather than absorb atomized liquid. Id.
`
`21
`
`
`
`
`
`B.
`
`The Combination Of Hon 043 With Whittemore Is The
`Substitution Of One Known Element For Another To
`Achieve A Predicted Result
`
`P.O. never disputes that the proposed modification is the substitution of one
`
`known element (Whittemore’s wire wrapped wick) for another (Hon 043’s heating
`
`element) to achieve a predictable result of atomizing liquid. That should be the
`
`end of it; nothing more is required to demonstrate that the proposed combination is
`
`obvious. See KSR Int’l
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