Case IPR2016-01268
`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON
`CROSS-EXAMINATION OF DR. ROBERT H. STURGES
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`LEGAL136561340.1
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`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON
`CROSS-EXAMINATION OF DR. ROBERT H. STURGES
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`LEGAL136561340.1
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Pursuant to the Board’s Scheduling Order (Paper 11), Patent Owner Fontem
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`Holdings 1 B.V. respectfully submits the following observations regarding the
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`cross-examination testimony of Petitioner R.J. Reynolds Vapor Company’s Reply
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`declarant, Dr. Robert H. Sturges.
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`Patent Owner cross-examined Dr. Sturges on two occasions after filing its
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`Opposition on April 4, 2017. Paper 24. On July 18, 2017, Patent Owner cross-
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`examined Dr. Sturges regarding his reply declaration. Ex. 1027; Ex. 2030. Prior
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`to that deposition, on May 10, 2017, Patent Owner cross-examined Dr. Sturges in
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`IPR2016-01692, where the same prior art and a related patent is at issue. Ex. 2029.
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`Patent Owner’s observations address both depositions.
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`I.
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`Airflow in Hon ’043
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`1.
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`In Exhibit 2030, on page 20, lines 11-14, when asked if a droplet
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`could “enter the porous body and not be reabsorbed,” Dr. Sturges testified that that
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`is “not suggested” nor “expected given the teachings of [Hon] ’043.” This
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`testimony is relevant to the Petition at 15-16, 24-26, and 34-35, the Opposition at
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`31-40 and 43-45, the Reply at 15-20, Exhibit 1015 ¶¶ 47-49 and pp. 32-35, Exhibit
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`1027 ¶¶ 33-43 and 54, and Exhibit 2015 ¶¶ 42-46, 76-79, and 91-94. The
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`testimony is relevant because it shows that a skilled person would have
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`understood: (1) that Hon ’043’s atomizer has an exit hole to allow atomized
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`droplets to exit without being reabsorbed by the porous body; and (2) that Hon
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`’043 teaches away from placing a portion of the porous body “in the path of air” or
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`substantially aligned with the run-through hole due to the risk that droplets ejected
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`from the ejection holes would be reabsorbed instead of “further atomized.”
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`2.
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`In Exhibit 2030, on page 47, lines 1-14, Dr. Sturges testified that he
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`did not know the purpose of the “arch space under the [bulge] section” that is
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`shown on pages 13 and 14 of Exhibit 1027, which reproduce Figure 6 of Hon ’043.
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`This testimony is relevant to the Petition at 15-16, the Opposition at 31-42, the
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`Reply at 15-20, Exhibit 1015 ¶¶ 47-49 and pages 32-33, Exhibit 1020 ¶¶ 12-13,
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`Exhibit 1027 ¶¶ 34-45, and Exhibit 2015 ¶¶ 42-46 and 76-88. The testimony is
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`relevant because it goes to the credibility and reliability of Dr. Sturges’s testimony
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`about the exit hole in Hon ’043’s atomizer.
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`3.
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`In Exhibit 2030, on page 78, line 15 through page 79, line 18, Dr.
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`Sturges testified that Hon ’043 does not show any deformation of bulge 36 when it
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`is inserted into the liquid supply. This testimony is relevant to the Petition at 15-
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`16, the Opposition at 20-42, the Reply at 11-20, Exhibit 1015 ¶¶ 44-49 and pages
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`32-33, Exhibit 1020 ¶¶ 12-13, Exhibit 1027 ¶¶ 23-45, and Exhibit 2015 ¶¶ 42-46,
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`66-88, and 98-100. The testimony is relevant because it goes to the credibility and
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`reliability of Dr. Sturges’s opinions on the precision of Hon ’043’s drawings
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`regarding deformation of the porous body and the presence of an exit hole in the
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`atomizer. Specifically, it demonstrates that Dr. Sturges understands Hon ’043’s
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`figures do not precisely depict every element that a person of ordinary skill would
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`understand to be present in an actual device.
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`4.
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`In Exhibit 2030, on page 75, line 9 through page 76, line 20, Dr.
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`Sturges testified that a person of ordinary skill would have understood that
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`Hon ’043’s piezoelectric element 35 would have atomized more efficiently if
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`ejected liquid droplets made direct contact with it. This testimony is relevant to the
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`Petition at 18-19, the Opposition at 13-14 and 48-49, Exhibit 1027 ¶¶ 62-64, and
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`Exhibit 2015 ¶¶ 98-100. The testimony is relevant because it shows a skilled
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`person would have understood Hon ’043 teaches focusing the ejection holes at the
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`center of piezoelectric element 35 “to achieve the effect of strong ultrasonic
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`atomization.” Ex. 1003 at 11.
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`5.
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`In Exhibit 2029, on page 87, line 6 through page 95, line 1, Dr.
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`Sturges testified that prior to Hon ’043, “dispersion of ejected liquid in atomizers
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`were well known” and that a person of ordinary skill could modify a “plain
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`atomizer opening” to modify the spray pattern. This testimony is relevant to the
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`Opposition at 45-50, the Reply at 22-25, Exhibit 1027 ¶¶ 57-60, Exhibit 2015 ¶¶
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`37 and 98, and Exhibit 2016 at 68:3-6. The testimony is relevant because it goes to
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`the credibility and reliability of Dr. Sturges’s opinions regarding fluid flow and it
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`demonstrates that a person of ordinary skill would have understood Hon ’043’s
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`ejection hole is a plain-orifice atomizer.
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`6.
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`In Exhibit 2030, on page 31, line 17 through page 33, line 8, Dr.
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`Sturges testified that he did not know why Hon ’043 discusses both short and long
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`stream ejection holes or why one skilled in the art would choose one or the other.
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`This testimony is relevant to the Opposition at 45-50, the Reply at 22-25, Exhibit
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`1027 ¶¶ 57-60, and Exhibit 2015 ¶¶ 37 and 98. The testimony is relevant because
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`it goes to the credibility and reliability of Dr. Sturges’s opinions regarding fluid
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`flow.
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`7.
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`In Exhibit 2029, on page 112, lines 12-17, Dr. Sturges testified that a
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`person of ordinary skill would “certainly” have the knowledge of the Sabersky
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`Fluid Flow book. In Exhibit 2029, on page 113, line 25 through page 115, line 4,
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`Dr. Sturges testified that a person of ordinary skill would need to know “a great
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`deal more than is discussed” in that book to model a diffusing wake. This
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`testimony is relevant to Exhibit 1027 ¶¶ 56-60, Exhibit 1032, Exhibit 2016 at
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`92:20-93:20, and Exhibit 2033 at 170-171. The testimony is relevant is relevant
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`because it goes to the credibility and reliability of Dr. Sturges’s opinions on fluid
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`flow. Specifically, Dr. Sturges relies on the content of page 171 of the Fluid Flow
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`book without being familiar with the content of page 170, despite both pages
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`discussing the formation of wakes.
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`8.
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`In Exhibit 2030, on page 68, lines 1-6, Dr. Sturges testified that the air
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`flowing into Whittemore is not entrained with liquid droplets. This testimony is
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`relevant to the Opposition at 45, the Reply at 21, Exhibit 1027 ¶ 67, and Exhibit
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`2015 ¶¶ 92 and 104. The testimony is relevant because it explains why
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`Whittemore does not express concern about placing porous material in the path of
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`airflow and is consistent with Mr. Meyst’s explanation that Hon ’043 (not
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`Whittemore) teaches away from placing porous material in the path of airflow.
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`9.
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`In Exhibit 2030, on page 65, line 6 through page 66, line 11, Dr.
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`Sturges testified that his proposed combination retains all the elements of Hon ’043
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`and that a slipstream would form around the proposed wire/wick heating element.
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`This testimony is relevant to the Opposition at 50-51, the Reply at 25, Exhibit 1027
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`¶¶ 57-58 and 67, Exhibit 2015 ¶ 104. The testimony is relevant because it shows
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`that Dr. Sturges’s proposed combination does not solve the problem he says
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`motivates the combination: a “slipstream” preventing liquid droplets ejected from
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`the ejection holes from contacting the heating element.
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`II. Whether Hon ’043’s Porous Body Is “Supported By” the Cavity Wall
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`10.
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`In Exhibit 2030, on page 61, lines 16-24, Dr. Sturges testified that his
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`interpretation of the term “supported by” is broader than the interpretation applied
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`by the Board in IPR2015-00859 (Exhibit 1011). This testimony is relevant to the
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`Opposition at 8-11 and 19-20, the Reply at 5-11, Exhibit 1011 at 15-16, Exhibit
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`1015 ¶¶ 41-50, Exhibit 1020 ¶¶ 4-11, Exhibit 1027 ¶¶ 6-17 and 21-48, and Exhibit
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`2015 ¶¶ 25-30 and 50. The testimony is relevant because it shows Dr. Sturges
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`applied an interpretation of “supported by” that is broader than the broadest
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`reasonable interpretation.
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`11.
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`In Exhibit 2030, on page 40, line 7, through page 41, line 20, Dr.
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`Sturges testified that “[t]he porous body is supporting the cavity wall because the
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`cavity wall is inside it” and that the weight of Hon ’043’s cavity wall is “supported
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`by the lower part of the porous body.” This testimony is relevant to the Reply at 8-
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`11, Exhibit 1027 ¶¶ 16-17 and 21-22, and Exhibit 2015 ¶ 50. The testimony is
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`relevant because it shows Hon ’043’s cavity wall (the purported “frame”) does not
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`support its porous body—instead, the porous body supports the cavity wall.
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`12.
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`In Exhibit 2030, on page 42, line 2 through page 43, line 4, Dr.
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`Sturges testified that a person of ordinary skill could have chosen a material “such
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`that deformation, sagging, deflection of the porous body is not an issue” in
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`Hon ’043. This testimony is relevant to the Opposition at 25-30, the Reply at 11-
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`15, Exhibit 1027 ¶¶ 16, 25-32 and 44-46, and Exhibit 2015 ¶¶ 66-69. The
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`testimony is relevant because it shows that Hon ’043’s cavity wall does not support
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`the porous body against deformation because a skilled person would not have been
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`concerned about the porous body deforming.
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`13.
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`In Exhibit 2030, on page 45, line 6 through page 46, line 15, Dr.
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`Sturges testified that Hon ’043’s “cavity wall would not play a role in preventing
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`axial displacement” at any point beyond one end of the cavity wall. This testimony
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`is relevant to the Petition at 15-16, the Opposition at 20-25, the Reply at 11-15,
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`Exhibit 1015 ¶¶ 44-45, Exhibit 1027 ¶¶ 23-32, and Exhibit 2015 ¶¶ 51-55 and 70-
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`75. The testimony is relevant because it shows that Hon ’043’s cavity wall does
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`not prevent the porous body from being displaced axially.
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`14.
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`In Exhibit 2029, on page 82, lines 5-18, Dr. Sturges testified that the
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`term “set on” does not require “supported by.” This testimony is relevant to
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`Exhibit 1027 ¶ 22. The testimony is relevant because it goes to the credibility and
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`reliability of Dr. Sturges’s opinions regarding the “supported by” limitation and the
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`presence of a friction fit or bonding material. Specifically, Dr. Sturges testified in
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`Exhibit 2029 that “set on” does not require “supported by” and in Exhibit 1027 that
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`“the 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.”
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`III. Whether Hon ’043 Discloses a Friction Fit or Bonding Material
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`15.
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`In Exhibit 2030, on page 21, line 10 through page 22, line 11, Dr.
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`Sturges testified that a friction fit requires “an interference between one body and
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`another” and that “two parts touching each other wouldn’t necessarily mean there
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`is a friction fit.” This testimony is relevant to the Petition at 15-16, the Opposition
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`at 20-30, the Reply at 15, Exhibit 1015 ¶ 45, Exhibit 1027 ¶¶ 18-19 and 23-25, and
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`Exhibit 2015 ¶¶ 41 and 56-62. The testimony is relevant because Hon ’043 does
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`not disclose any “interference” or friction fit between the porous body and cavity
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`wall.
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`16.
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`In Exhibit 2030, on page 29, lines 1-17, Dr. Sturges testified that
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`“[t]here is a certain distance separating the disk-shaped part of the cavity wall and
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`the coil 26. Maintaining that distance would be a function of the lead wire, there
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`being no other teaching that the coil is held at that distance in any other way.”
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`This testimony is relevant to Exhibit 1027 ¶¶ 18-19 and 23-25. The testimony is
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`relevant because it shows that Hon ’043’s lead wires (shown as “squiggly lines” in
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`Fig. 6, see Exhibit 2030, page 24, lines 6-12) prevent “potential movement of the
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`heating element” without the need for a friction fit or bonding material.
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`In Exhibit 2029, on page 28, line 25 through page 31, line 5, Dr.
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`17.
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`Sturges testified that the phrase “set on a frame” means “to cause to sit on a frame”
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`and that one item is “set on” another if “it’s not attached to it or glued to it in any
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`other way.” This testimony is relevant to the Petition at 15-16, the Opposition at
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`20-30, the Reply at 15, Exhibit 1015 ¶ 45, Exhibit 1027 ¶¶ 18-20 and 23-25,
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`Exhibit 2015 at ¶¶ 41 and 56-62, and Exhibit 2016 at 113:6-114:14. The testimony
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`is relevant because it goes to the credibility and reliability of Dr. Sturges’s
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`opinions regarding a friction fit or bonding material. Specifically, Dr. Sturges
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`testified in Exhibit 2016 that Hon ’043 discloses that “the porous body is set on the
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`cavity walls,” which he explained in Exhibit 2029 means “not attached to it or
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`glued to it in any other way.”
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`Date: August 25, 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
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
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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 of service:
`Manner of service:
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`Persons served:
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`August 25, 2017
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION OF
`DR. ROBERT H. STURGES
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Backup Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
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`
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` /Peter Sher/
`Peter Sher
`Paralegal
`Perkins Coie LLP
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`LEGAL136561340.1
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