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 REPLY TO
`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
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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 REPLY TO
`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Petitioner characterizes its expert’s Reply Declaration opinions as legitimate
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`responses to Patent Owner’s arguments rather than new prima facie evidence. As
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`shown below, the record contradicts Petitioner.
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`I.
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`Axial Displacement “With Respect To” the Porous Body
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`Patent Owner did not “mischaracterize” Dr. Sturges’s opinion. Paper 42 at
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`8. Dr. Sturges’s Petition Declaration recites that the cavity wall prevents “axial
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`displacement when the porous body 27 is forcibly inserted” into the liquid supply.
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`Ex. 1015 ¶ 44. When asked at cross-examination what he meant “in paragraph 44
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`by axial displacement,” Dr. Sturges confirmed there is “displacement in the
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`direction of the axis, meaning bringing the porous body and the liquid supply bottle
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`into relative motion.” Ex. 2016 at 117:7–14 (emphasis added). He elaborated:
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`Q. So axial displacement means that the atomizer would move
`along the long axis of the e-cigarette when the liquid supply
`bottle is inserted into the e-cigarette; is that what you mean?
`A: Relative to each other, yes.
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`Id. at 117:15–19 (emphasis added). In response, Patent Owner’s expert explained
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`that the cavity wall cannot prevent Dr. Sturges’s purported axial displacement of
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`the porous body because the cavity wall is entirely inside the porous body. Ex.
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`2015 ¶¶ 51–55. So, in reply, Dr. Sturges admitted the cavity wall “will not prevent
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`the axial movement of porous body 27 with respect to shell 14,” and claimed for
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`Case IPR2016-01268
`Patent No. 8,365,742
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`the first time that he meant “axial displacement of porous body 27 with respect to
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`cavity wall 25.” Ex. 1027 ¶ 25. Petitioner’s and Dr. Sturges’s changing the
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`meaning of “axial displacement” for the first time on reply deprives Patent Owner
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`a full opportunity to respond with evidence.
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`II. Deformation
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`Petitioner asserts that Patent Owner’s Opposition “challenged Dr. Sturges’
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`opinion about deformation.” Paper 42 at 8. But Patent Owner’s Opposition
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`explained that Dr. Sturges never offered an opinion on deformation as follows:
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`“Petitioner’s brief and two expert declarations say nothing about deformation
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`prevention.” Paper 24 at 1.
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`Tacitly admitting that its Petition did not rely on deformation, Petitioner
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`argues Patent Owner “elicited” Dr. Sturges’s opinion during cross-examination.
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`Id. at 9. But Patent Owner did not question Dr. Sturges about deformation.
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`Instead, Patent Owner asked Dr. Sturges about his opinion that the cavity wall
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`prevents axial displacement described in Section I above. See Ex. 1015 ¶ 44. To
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`Patent Owner’s surprise, Dr. Sturges said the cavity wall does not prevent axial
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`displacement, and for the first time opined about deformation:
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`Q. And the purpose of this cavity wall is to prevent axial
`displacement; is that correct?
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`Patent No. 8,365,742
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`A. It’s not to prevent the axial displacement. It’s to prevent the
`porous body from deforming….
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`Ex. 2016 at 117:20–118:4. Petitioner cannot rely on its expert’s unsolicited cross-
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`examination testimony to introduce a new theory of “support” for the first time in
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`reply, now that Patent Owner has no opportunity to respond with evidence.
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`III. Sag and Weight-Bearing Support
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`Petitioner argues Dr. Sturges’s new opinions about “sag” due to “low
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`rigidity” are appropriate because Patent Owner “alleged that Hon 043’s cavity wall
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`does not provide weight-bearing support for the porous body” and “disputed the
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`rigidity of Hon 043’s porous body.” Paper 42 at 8. But it is the Petition—not
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`Patent Owner—that cited the Board’s previous findings that “support” means “bear
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`all or part of the weight of: hold up,” and that Hon ’043’s cavity wall is not
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`“supported” by the porous body. Paper 2 at 14–15; Ex. 1011 at 15–16. Instead of
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`disputing those findings, the Petition said the “cavity wall 25 provides support for
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`porous body 27 in several ways” besides bearing its weight. Paper 2 at 15. Patent
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`Owner pointed out that Petitioner relies on the plain meaning of “supported by”
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`because the Petition did not set forth a specific construction, and that Petitioner’s
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`proposed “several ways” of support are not encompassed by the plain meaning.
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`Paper 24 at 19. If Petitioner wanted to dispute the Board’s previous finding about
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`Patent No. 8,365,742
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`weight-bearing support, it should have done so in the Petition, not for the first time
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`in reply.
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`IV. Misalignment
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`Petitioner admits Dr. Sturges’s “misalignment” opinion is new, but argues it
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`is proper because it is “replying to Meyst’s opinion” that there is no friction fit or
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`bonding material disclosed in Hon ’043. But in the Petition, Petitioner and Dr.
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`Sturges alleged the porous body was attached to the cavity wall “by a friction fit or
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`with a bonding material to prevent axial displacement of the porous body,” with no
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`mention of preventing angular displacement or misalignment. Paper 2 at 15–16;
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`Ex. 1015 ¶ 45. In response, Patent Owner’s expert explained that the cavity wall
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`could not prevent axial displacement even with a friction fit or bonding material
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`because, as noted in Section I above, the cavity wall in completely within the
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`porous body. Ex. 2015 ¶ 55. So Dr. Sturges changed his opinion again, now
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`alleging for the first time in reply that the cavity wall would “rattle around” and
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`become “misaligned.” Ex. 1027 ¶¶ 18–19. That reply opinion should be excluded
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`because Patent Owner has no opportunity to respond with evidence.
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`V. The Requested Relief is Appropriate
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`Petitioner cites CBM2012-00003 to assert that Patent Owner’s request to
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`exclude the Sturges Reply Declaration is “over-reaching.” Paper 42 at 6–7. But in
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`Patent No. 8,365,742
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`that decision, the motion “did not contain any meaningful discussion of the
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`arguments” and failed to “identify where in the record an objection originally was
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`made.” CBM2012-00003, Paper 78 at 68–69. The Board also found the motion
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`overreaching because the moving party “should ensure that the relief requested is
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`commensurate in scope with its substantive analysis and supporting evidence.” Id.
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`at 68. Here, although Patent Owner identifies selected paragraphs of Dr. Sturges’s
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`Reply Declaration, the identified subject matter permeates his new opinions such
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`that excluding the entire declaration is appropriate. See Ex. 2032 at 4–5 (“These
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`declarations are not limited to responding to arguments raised by Petitioner’s
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`opposition.…and should be expunged.”); Ex. 2034 at 6 n.2 (“The fact that two
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`declarations may contain some material appropriate for a response does not require
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`our consideration of them, as the Board will not attempt to sort the proper from the
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`improper portions.”).
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`Date: September 15, 2017 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
`Counsel for Patent Owner
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`Case IPR2016-01268
`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 of service:
`Manner of service:
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`Persons served:
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`September 15, 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 REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
`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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` /Amy Candeloro/
`Amy Candeloro
`Paralegal
`Perkins Coie LLP
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