Case IPR2016—01268
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`Patent No. 8,365,742
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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,
`Petitioners
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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
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`Patent NO. 8,365,742
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
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`UNDER 37 C.F.R. § 42.64(b)(1)
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`LEGAL136151328 1
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`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
`
`V.
`
`FONTEM HOLDINGS 1 B.V.,
`
`Patent Owner
`
`Case IPR2016-01268
`
`Patent NO. 8,365,742
`
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`
`UNDER 37 C.F.R. § 42.64(b)(1)
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`LEGAL136151328 1
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`Case IPR2016-01268
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`Patent No. 8,365,742
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`Pursuant to 37 CPR. § 42.64(b)(1), Patent Owner Fontem Holdings 1 B.V.
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`objects to the evidence submitted by Petitioner R.J. Reynolds Vapor Company
`
`with the Reply (Paper 30) filed July 5, 2017.
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`Exhibit 1022
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`Patent owner objects to Exhibit 1022 (Rough transcript of June 6, 2017
`
`deposition of Richard Meyst in IPR2016-01272) under FRE 401 and 402. Because
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`Petitioner does not rely on Exhibit 1022 in its Reply, the Exhibit does not include
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`any fact of consequence and has no tendency to make a fact more or less probable
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`than it would be without its admission.
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`Patent Owner further objects to Exhibit 1022 as an incomplete copy, and
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`thus an inadmissible duplicate pursuant to FRE 1002 and 1003.
`
`If the Board
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`admits Exhibit 1022, Patent Owner objects that it is only part of a writing under
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`FRE 106.
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`Exhibit 1027
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`Patent Owner objects to Exhibit 1027 (Reply Declaration of Robert H.
`
`Sturges) as outside of the scope permitted by 37 CPR. § 42.23(b) and therefore
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`unfairly prejudicial under FRE 403. Patent Owner further objects to Exhibit 1027
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`as lacking sound evidentiary basis, biased, vague, misleading, confusing the issues,
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`and more prejudicial than probative under FRE 403. The following examples are
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`LEGAL136151328.1
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`illustrative.
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`Case IPR2016—01268
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`Patent No. 8,365,742
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`Paragraphs 9, 16, 25-33, 44, and 46 of Exhibit 1027 offer opinions
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`regarding “deformation” that were not raised in the Petition or in
`
`Exhibits 1015 or 1020, and do not respond to arguments raised in
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`Patent Owner’s Response.
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`Paragraphs 18, 19, and 23-32 of Exhibit 1027 offer opinions regarding
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`axial displacement “with respect to” or “relative to” the cavity wall
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`that were not raised in the Petition or in Exhibits 1015 or 1020, and do
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`not respond to arguments raised in Patent Owner’s Response.
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`Paragraphs 10, 30, 31, and 44 of Exhibit 1027 offer opinions
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`regarding radial support of liquid—filled “low rigidity” porous material
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`that were not raised in the Petition or in Exhibits 1015 or 1020, and do
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`not respond to arguments raised in Patent Owner’s Response.
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`Paragraphs l8 and 19 offer opinions regarding “misalignment” that
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`were not raised in the Petition or in Exhibits 1015 or 1020, and do not
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`respond to arguments raised in Patent Owner’s Response.
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`Paragraphs 33—67 offer opinions regarding airflow, aerosols, pore
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`sizes,
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`“standard
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`drawing
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`practices,”
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`“aerodynamic
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`forces,”
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`compression, tensile strength, “providing the needed holes,” electrical
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`Case IPR2016—01268
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`Patent No. 8,365,742
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`resistance,
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`atomization,
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`a “slipstream,” thermal efficiency,
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`and
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`“heating wire in lightbulbs, heaters and other things” that are not
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`based on sufficient facts or data and are not the product of reliable
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`principles and methods.
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`If Sturges is presented as a lay witness, Patent Owner objects under FRE 701
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`that the testimony is based on alleged scientific and/or technical knowledge.
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`If
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`Sturges is presented as an expert witness, Patent Owner objects under FRE 702
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`that the testimony is not based upon sufficient facts or data and is not the result of
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`application of reliable principles and methods. Patent Owner further objects under
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`FRE 703 that the facts or data are not of a type reasonably relied upon by experts.
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`Patent Owner
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`further objects to Exhibit 1027 to the extent
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`that any
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`paragraph relies upon an exhibit that is objected to herein or that Patent Owner
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`objected to previously for the reasons set forth in those objections. Any paragraph
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`in Exhibit 1027 that relies upon any exhibit not relied upon by the PTAB to
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`institute this proceeding is further objected to as not being relevant and therefore
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`being inadmissible under FRE 401 and 402.
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`Exhibit 1028
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`Patent Owner objects to Exhibit 1028 (Mitchell, AAPS PharmSciTech 2003
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`4 Article 54) as hearsay under FRE 801 and 802.
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`Case IPR2016-01268
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`Patent No. 8,365,742
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`Patent Owner further objects to Exhibit 1028 as outside of the scope
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`permitted by 37 CPR. § 42.23(b) and as irrelevant, misleading, confusing the
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`issues, and unfairly prejudicial under FRE 401 , 402, and 403.
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`Exhibit 1029
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`Patent Owner objects to Exhibit 1029 (Breon, Science 01 Feb 2002 Vol 295
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`Issue 5556 pp 834-838) as hearsay under FRE 801 and 802.
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`Patent Owner further objects to Exhibit 1029 as outside of the scope
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`permitted by 37 C.F.R. § 42.23(b) and as irrelevant, misleading, confusing the
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`issues, and unfairly prejudicial under FRE 401, 402, and 403.
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`Exhibit 1030
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`Patent Owner objects to Exhibit 1030 (US. Patent No. 4,957,543) as outside
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`of the scope permitted by 37 C.F.R. § 42.23(b) and as irrelevant, misleading,
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`confusing the issues, and unfairly prejudicial under FRE 401, 402, and 403.
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`Exhibit 1031
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`Patent Owner objects to Exhibit 1031 (US. Patent No. 6,932,925) as outside
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`of the scope permitted by 37 CPR. § 42.23(b) and as irrelevant, misleading,
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`confusing the issues, and unfairly prejudicial under FRE 401, 402, and 403.
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`Case IPR2016—01268
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`Patent No. 8,365,742
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`Exhibit 1032
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`Patent Owner objects to Exhibit 1032 (Sabersky and Acosta, 1964 (excerpt))
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`as hearsay under FRE 801 and 802.
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`Patent Owner further objects to Exhibit 1032 as outside of the scope
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`permitted by 37 C.F.R. § 42.23(b) and as irrelevant, misleading, confusing the
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`issues, and unfairly prejudicial under FRE 401, 402, and 403.
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`Patent Owner further objects to Exhibit 1032 as an incomplete copy, and
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`thus an inadmissible duplicate pursuant to FRE 1002 and 1003.
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`If the Board
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`admits Exhibit 1022, Patent Owner objects that it is only part of a writing under
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`FRE 106.
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`Date: July 12, 2017
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`By:
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`Respectfully submitted,
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`/Michael J. Wise/
`Michael J. Wise, Reg. No. 34,047
`Perkins Coie LLP
`
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
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`Facsimile: 310-788-3399
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`MWiseQElPerki nsCoie.com
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`LEGAL136151328.]
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`Case IPR2016-01268
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`Patent No. 8,365,742
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that service on Petitioner was made as
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`follows, in accordance with 37 CFR 42.6(e):
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`Date ofservice:
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`July 12, 2017
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`Manner ofservice:
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`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End—to-End System
`2. Electronic mail
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`D0cument(s) served:
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`PATENT OWNER’S OBJECTIONS TO
`PETITIONER’S EVIDENCE UNDER 37 C.F.R. §
`
`42.64(b)(1)
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`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Backup Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
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`Suite 3600 NBC Tower
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`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
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`1‘gab1‘ic@brin_k§gilson.com
`rmallin@brinksgilson.com
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`yfi:ng@brinksgilson.com
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`/Peter Sher/
`
`Peter Sher
`
`Paralegal
`Perkins Coie LLP
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`Persons sewed?
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`LEGAL136151328.1
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