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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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`PETITIONER’S RESPONSES TO PATENT OWNER'S MOTION FOR
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`OBSERVATIONS ON CROSS-EXAMINATION OF DR. ROBERT H.
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`STURGES RE-FILED PURSUANT TO BOARD’S ORDER OF
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`SEPTEMBER 14, 2017 (PAPER 45)
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`Pursuant to the Board’s Scheduling Order (Paper 11) and Board’s Order of
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`September 14, 2017 (Paper 45), R.J. Reynolds Vapor Company (“Petitioner”)
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`hereby re-files Petitioner’s Responses to Patent Owner Fontem Holdings 1 B.V.’s
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`(“P.O.”) Motion for Observations on Cross-Examination of Dr. Robert H. Sturges.
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`Pursuant to Paper 45, Petitioner’s re-filed Responses delete reference to Sturges’
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`1692 Transcript (Ex. 2029).
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`I.
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`Airflow in Hon 043
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`Response to Observation No. 1: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 18:24-20:14, which includes additional context omitted by P.O., Dr.
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`Sturges is referring to Hon 043’s large diameter droplets, which Hon 043
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`distinguishes from small diameter droplets. See Ex. 1003 at 11 (“After the
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`atomization, the large diameter droplets stick to the wall under the action of eddy
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`flow and are reabsorbed by the porous body 27 via the overflow hole 29, whereas
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`the small diameter droplets float in stream and form[] aerosols, which are sucked
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`out via the aerosol passage 12, gas vent 17 and mouthpiece 15.”). In Ex. 2030,
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`20:2-10, Dr. Sturges testified that “the droplet” (that is, Hon 043’s large diameter
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`droplets, referred to as “the droplet” or “those droplets” in this line of questioning)
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`is reabsorbed by Hon 043’s porous body. In Ex. 2030, 20:11-14, Dr. Sturges
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`testified that Hon 043 does not suggest that “the droplet[s]” (that is, Hon 043’s
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`1
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`large diameter droplets) passing through Hon 043’s overflow hole 29 would enter
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`the porous body without being reabsorbed. With respect to Hon 043’s small
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`diameter droplets, Dr. Sturges testified in Ex. 2016, 100:9-16 that those droplets
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`“pass from the cavity in the atomizer to the downstream end of the atomizer
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`through the porous body.” This testimony is relevant to Petition (Paper 2) at 15-
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`16, 25-29, 34-35, Opposition (Paper 24) at 31-40 and 43-45, Reply (Paper 30) at
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`15-20, Ex. 1015 (Sturges Petition Declaration) at ¶¶ 47-49 and pp. 32-35, 38-39,
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`Ex. 1020 (Sturges Supplemental Declaration) at ¶¶ 9-13, Ex. 1027 (Sturges Reply
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`Declaration) at ¶¶ 33-45, 54 and 67, and Ex. 2015 (Meyst Declaration) at ¶¶ 42-46,
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`76-79, and 91-94. The testimony is relevant because it demonstrates that (1) a
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`PHOSITA would have understood that Hon 043 does not require an exit hole at the
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`downstream end of the atomizer in order for the small diameter droplets to exit or
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`for the Hon 043 device to otherwise properly function, and (2) does not support
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`P.O.’s contention that Hon 043 purportedly “teaches away” from placing a wick in
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`the airflow path as taught by Whittemore.
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`Response to Observation No. 2: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 47:1-14, Dr. Sturges testified that he does not know the purpose for the
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`“arch space under the bold [sic, bulge] section” illustrated in Fig. 6 of Hon 043.
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`However, regardless of its purpose, Dr. Sturges testified elsewhere that the arch
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`2
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`space under the bulge does not depict an exit hole. See Ex. 1027, ¶¶ 34-45; Ex.
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`1034, ¶6. This testimony is relevant to Petition (Paper 2) at 15-16, 25-29, and 34-
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`35, Opposition (Paper 24) at 31-40 and 43-45, Reply (Paper 30) at 15-20, Ex. 1015
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`(Sturges Petition Declaration) at ¶¶ 47-49 and pp. 32-35, 38-39, Ex. 1020 (Sturges
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`Supplemental Declaration) at ¶¶ 9-13, Ex. 1027 (Sturges Reply Declaration) at ¶¶
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`33-45, 54 and 67, and Ex. 2015 (Meyst Declaration) at ¶¶ 42-46, 76-79, and 91-94.
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`The testimony is relevant because it demonstrates that Dr. Sturges’ deposition and
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`declaration testimony concerning Hon 043’s failure to disclose an open exit hole is
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`credible and reliable, and regardless of the purpose for the “arch space under the
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`[bulge] section,” it is not an exit hole.
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`Response to Observation No. 3: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 78:15-79:4, Dr. Sturges testified that Figs. 1-3 in Hon 043 do not show
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`the bulge 36 deforming when it is inserted into the liquid supply. In Ex. 2030,
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`79:5-8, Dr. Sturges testified that bulge 36 could deform if it was made of a “softer”
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`or “less rigid material [] than liquid supply.” In Ex. 2030, 22:12-24:1, Dr. Sturges
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`also testified that Hon 043 shows the liquid supply “deforming” when contacted by
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`Hon 043’s bulge. In Ex. 2030, 38:7-39:1, Dr. Sturges testified that, because of the
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`cavity wall, “one would not expect a significant deformation [of Hon 043’s porous
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`body] under gravity.” This testimony is relevant to Petition (Paper 2) at 15-16,
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`3
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`Opposition (Paper 24) at 20-42, Reply (Paper 30) at 11-20, Ex. 1015 (Sturges
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`Petition Declaration) at ¶¶ 44-49 and pages 31-35, Ex. 1020 (Sturges Supplemental
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`Declaration) at ¶¶ 4-13, Ex. 1027 (Sturges Reply Declaration) at ¶¶ 23-45, and Ex.
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`2015 (Meyst Declaration) at ¶¶ 42-46, 66-88, and 98-100. The testimony is
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`relevant because it demonstrates that Hon 043’s drawings are consistent with Dr.
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`Sturges’ opinions concerning how the PHOSITA would have understood the
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`teachings of Hon 043, including the extent to which Hon 043’s porous body would
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`deform but for the support provided by the cavity wall, and the lack of an exit hole.
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`Response to Observation No. 4: P.O.’s observation further confirms the
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`motivation for modifying Hon 043 as taught by Whittemore. In Ex. 2030, 75:9-
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`76:20, Dr. Sturges testified that the second piezoelectric supplies energy to “some”
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`of the liquid droplets that are ejected from Hon 043’s ejection holes by either direct
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`or indirect energy transmission, and that “one skilled in the art at the time of the
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`‘742 patent was filed [would have understood] that direct transfer of energy from
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`the piezoelectric element to the liquid droplets was more efficient than indirect”
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`transfer of energy. This testimony is relevant to Petition (Paper 2) at 18-19,
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`Opposition (Paper 24) at 13-14 and 48-49, Ex. 1027 (Sturges Reply Declaration) at
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`¶¶ 62-64, and Ex. 2015 (Meyst Declaration) at ¶¶ 98-100. The testimony is
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`relevant because it supports Dr. Sturges’ opinion that a PHOSITA would have
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`4
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`been motivated to modify Hon 043 by adding Whittemore’s wick in order to obtain
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`reliable and consistent direct transfer of heat energy.
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`Response to Observation No. 5: (Deleted pursuant to the Board’s Order of
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`September 14, 2017 (Paper 45))
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`Response to Observation No. 6: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. Dr.
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`Sturges accurately characterizes Hon 043’s disclosure with respect to the short and
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`long stream ejection holes. In Ex. 2030, 31:25-32:6, Dr. Sturges testified that,
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`according to Hon 043, the short- and long-stream ejection holes differ in size and
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`that, in the figures, the short ejection holes are not shown with a corresponding
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`portion through a part of the porous body. In Ex. 2030, 13:24-16:24, Dr. Sturges
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`also explained that “the reduced pressure of the high-speed stream” in Hon 043’s
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`ejection holes functions to deliver liquid into Hon 043’s atomization cavity 10.
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`This testimony is relevant to Petition (Paper 2) at 15-16, 15-29, Opposition (Paper
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`24) at 45-50, Reply (Paper 30) at 22-25, Ex. 1027 (Sturges Reply Declaration) at
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`¶¶ 52, 57-60, and Ex. 2015 (Meyst Declaration) at ¶¶ 37 and 98. The testimony is
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`relevant because it demonstrates that Dr. Sturges’ opinions regarding fluid flow in
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`Hon 043 are credible and reliable.
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`Response to Observation No. 7: (Deleted pursuant to the Board’s Order of
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`September 14, 2017 (Paper 45))
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`5
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`Response to Observation No. 8: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony.
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`P.O. ignores the testimony that immediately follows the cited testimony. In Ex.
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`2030, 68:7-69:20, Dr. Sturges testified that liquid is vaporized by Whittemore’s
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`wire-wrapped wick and exits at Whittemore’s outlet 5. This testimony is relevant
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`to Opposition (Paper 24) at 45, Reply (Paper 30) at 21, Ex. 1027 (Sturges Reply
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`Declaration) at ¶¶ 54, 67, and Ex. 2015 (Meyst Declaration) at ¶¶ 92, 104. The
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`testimony is relevant because it demonstrates that the PHOSITA would have
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`understood that the function of Whittemore’s wire-wrapped wick is to
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`vaporize/atomize liquid, not reabsorb vaporized/atomized liquid. Thus, the
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`PHOSITA would not have been concerned that a wire-wrapped wick as taught by
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`Whittemore would reabsorb vaporized/atomized liquid droplets, nor would the
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`PHOSITA have otherwise been discouraged from modifying Hon 043 to include
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`Whittemore’s wire-wrapped wick.
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`Response to Observation No. 9: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony.
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`P.O. ignores that the proposed combination solves the slipstream problem, not by
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`eliminating the slipstream but instead by compensating for the slipstream by
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`delivering liquid directly to Hon 043’s heating element using a porous wick as
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`taught by Whittemore. (Remaining text deleted pursuant to the Board’s Order of
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`6
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`September 14, 2017 (Paper 45). This testimony is relevant to Opposition (Paper
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`24) at 50-51, Reply (Paper 30) at 25, Ex. 1027 (Sturges Reply Declaration) at ¶¶
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`57-60 and 67, Ex. 2015 (Meyst Declaration) at ¶ 104. The testimony is relevant
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`because it demonstrates that the PHOSITA would have been motivated to
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`compensate for slipstream (and address the problem of liquid droplets bypassing
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`Hon 043’s heating wire) by modifying Hon 043 to include Whittemore’s wire
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`wrapped wick so that liquid is delivered to, and brought into direct contact with,
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`the heating element.
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`II. Whether Hon 043’s Porous Body Is “Supported By” The Cavity Wall
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`Response to Observation No. 10: The interpretation of “supported by” in
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`IPR2015-00859 (Exhibit 1011) was an uncontested preliminary construction, and
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`is not binding in this IPR. Dr. Sturges’ proposed construction is consistent with
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`the broadest reasonable interpretation of “supported by.” In Ex. 2030, 82:9-83:3,
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`Dr. Sturges testified that the broadest reasonable interpretation of the term
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`“supported by” is “[t]o hold up, to serve as a foundation or prop for, carry all or
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`part of the weight of, or give strength to.” This testimony is relevant to Opposition
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`(Paper 24) at 8-11, 19-20, Reply (Paper 30) at 5-20, Ex. 1011 at 15-16, Ex. 1015
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`(Sturges Petition Declaration) at ¶¶ 41-50, Ex. 1020 (Sturges Supplemental
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`Declaration) at ¶¶ 4-11, Ex. 1027 (Sturges Reply Declaration) at ¶¶ 6-48, and Ex.
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`2015 (Meyst Declaration) at ¶¶ 25-30, 50. The testimony is relevant because it
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`7
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`demonstrates that Hon 043’s cavity wall provides various types of support for the
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`porous body, including weight bearing support and thus Hon 043 discloses the
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`“supported by” limitation under either party’s proposed constructions.
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`Response to Observation No. 11: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 39:22-40:1, just prior to the testimony cited by P.O., Dr. Sturges testified
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`that the cavity wall in Hon 043 supports the porous body by “hold[ing] up at least
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`the weight of the top part of the porous body.” In Ex. 2030, 38:7-39:1, Dr. Sturges
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`testified that the cavity wall in Hon 043 supports the porous body, thereby
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`preventing the deformation of the porous body under the force of gravity. In Ex.
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`2016, 126:10-127:2; 186:23-187:15, Dr. Sturges testified that Hon 043’s cavity
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`wall supports the weight of the liquid filled porous body, which “would sag rather
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`like a horse’s back under the weight of gravity” without “the support of the cavity
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`wall.” This testimony is relevant to Reply (Paper 30) at 8-11, Ex. 1027 (Sturges
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`Reply Declaration) at ¶¶ 16-17, 21-22, 46-48, and Ex. 2015 (Meyst Declaration) at
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`¶ 50. The testimony is relevant because it demonstrates that that Hon 043’s porous
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`body is supported by the cavity wall even if, as P.O. alleges, the porous body also
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`provides support for the cavity wall.
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`Response to Observation No. 12: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`8
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`Ex. 2030, 42:13-43:4, Dr. Sturges testified that a PHOSITA “could choose a
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`material such that deformation, sagging, deflection of the porous body is not an
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`issue.” (emphasis added). However, in Ex. 1027, ¶ 30 Dr. Sturges explained that a
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`PHOSITA could also choose from “the wide range of possible materials identified
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`in Hon 043 for the porous body.” “By providing the cavity wall, Hon 043 permits
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`the wide range of design choices identified by Hon 043 such as, for example, low
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`rigidity, compliant high molecule polymer foams for the porous body, which is
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`used to transfer liquid from the liquid-supplying bottle to the atomization
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`chamber.” This testimony is relevant to Opposition (Paper 24) at 25-30, Reply
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`(Paper 30) at 11-15, Ex. 1020 (Sturges Supplemental Declaration) at ¶¶ 4-11, Ex.
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`1027 (Sturges Reply Declaration) at ¶¶ 16, 23-32, 44-46, and Ex. 2015 (Meyst
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`Declaration) at ¶¶ 66-69. The testimony is relevant because it demonstrates that
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`the PHOSITA would have understood that, because of the support provided by
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`Hon 043’s cavity wall, the porous body can be made from the wide range of
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`materials identified in Hon 043.
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`Response to Observation No. 13: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 45:6-15, Dr. Sturges testified that “cavity wall would prevent
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`compression or deformation of the porous body for the portion of the porous body
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`along the length of the cavity wall.” This testimony is relevant to Petition (Paper
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`9
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`2) at 15-16, Opposition (Paper 24) at 20-25, Reply (Paper 30) at 11-15, Ex. 1015
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`(Sturges Petition Declaration) at ¶¶ 44-45, Ex. 1027 (Sturges Reply Declaration) at
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`¶¶ 23-32, and Ex. 2015 (Meyst Declaration) at ¶¶ 51-55, 70-75. The testimony is
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`relevant because it demonstrates that Hon 043’s cavity wall 25 prevents both
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`deformation and axial displacement of the porous body 27 relative to the cavity
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`wall.
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`Response to Observation No. 14: (Deleted pursuant to the Board’s Order of
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`September 14, 2017 (Paper 45))
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`III. Whether Hon 043 Discloses A Friction Fit Or Bonding Material
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`Response to Observation No. 15: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 21:10-22:11, Dr. Sturges testified that a friction fit requires “an
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`interference between one body and another wherein one may be fitted into another
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`or one may be in forcible contact with another.” In response to a hypothetical, Dr.
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`Sturges agreed that “[i]f you had a flat body and then another body sitting on top of
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`that flat body held on there by gravity,” then you “wouldn’t refer to that as a
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`friction fit because there isn’t any fit defined” in the hypothetical. He then
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`explained that a “fit” in engineering parlance, means that there is “a relationship
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`between the inner and outer dimensions of the two parts respectively.” Thus, Dr.
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`Sturges agreed that two parts that merely touch each other does not “necessarily
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`10
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`mean there is a fiction fit.” This testimony is relevant to Petition (Paper 2) at 15-
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`16, Opposition (Paper 24) at 20-30, Reply (Paper 30) at 15, Ex. 1015 (Sturges
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`Petition Declaration) at ¶ 45, Ex. 1027 (Sturges Reply Declaration) at ¶¶ 18-20, 23-
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`32, and Ex. 2015 (Meyst Declaration) at ¶¶ 41, 56-62. The testimony is relevant
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`because it establishes that a PHOSITA would have understood that Hon 043’s
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`porous body and cavity wall do not merely touch each other but instead have “a
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`relationship between the inner and outer dimensions of the two parts respectively”
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`to prevent movement of the cavity wall and porous body relative to each other. As
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`the PHOSITA would have understood, this relationship is achieved by either a
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`friction fit or bonding material between Hon 043’s porous body and cavity wall.
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`Response to Observation No. 16: P.O.’s observation relies upon out of
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`context and incomplete testimony, and is not supported by the cited testimony. In
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`Ex. 2030, 27:3-28:1, which P.O. did not cite, Dr. Sturges testified that the “sole
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`function” of Hon 043’s lead wires is to “provide electricity to the heating wire,”
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`that there “is no other teaching in [Hon 043] that they” provide any other function,
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`and that the PHOSITA would not have understood that Hon 043’s wire leads could
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`provide any other function. In Ex. 2030, 28:2-19, which P.O. also ignores, Dr.
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`Sturges explained that, because the lead wires are flexible, “one wouldn’t expect”
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`that the wire leads shown in Fig. 6 of Hon 043 to hold the heating wire in place.
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`In Ex. 2030, 28:20-29:23, which P.O. also ignores, when asked whether the
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`11
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`flexible lead wires “could” hold the heating wire in place, Dr. Sturges responded
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`“[t]hat depends on how the flexible wires are constrained themselves,” and merely
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`acknowledged that “if the flexible wires are properly constrained, they could hold
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`the heating wire in place.” In Ex. 1027, ¶18, Dr. Sturges explained that if Hon
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`043’s porous body and cavity wall were permitted to move with respect to each
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`other, this would result in misalignment of the ejection holes, movement of the
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`heating wire and piezoelectric element, and displacement of the heating wire and
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`piezoelectric element relative to the ejection holes. This testimony is relevant to
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`Petition (Paper 2) at 15-16, Opposition (Paper 24) at 20-30, Reply (Paper 30) at 15,
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`Ex. 1015 (Sturges Petition Declaration) at ¶ 45, Ex. 1027 (Sturges Reply
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`Declaration) at ¶¶ 18-20, 23-32, and Ex. 2015 (Meyst Declaration) at ¶¶ 41, 56-62.
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`The testimony is relevant because it demonstrates that, regardless of whether the
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`wire leads play a role in holding the heating element in place, the PHOSITA would
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`have nevertheless understood that a friction or bonding fit prevents Hon 043’s
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`porous body and cavity wall from moving with respect to each other. Otherwise,
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`the ejection holes would become misaligned, and the heating element (even if held
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`in place by the wire leads) and piezoelectric element would become displaced.
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`Response to Observation No. 17: (Deleted pursuant to the Board’s Order of
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`September 14, 2017 (Paper 45))
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`1. Dated: September 18, 2017
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`2. Respectfully submitted,
`3.
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`12
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`4. /s/
`Ralph J. Gabric
`
`
`5. Ralph J. Gabric, Reg. No. 34,167
`6. Lead Counsel for Petitioner
`7. BRINKS GILSON & LIONE
`8. 455 N. Cityfront Plaza Drive Suite
`3600
`Chicago, IL 60611-5599
`T: 312-321-4200
`F: 312-321-4299
`
`
`
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`13
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that on
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`September 18, 2017, a complete and entire copy of this PETITIONER’S
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`RESPONSES TO PATENT OWNER'S MOTION FOR OBSERVATIONS ON
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`CROSS-EXAMINATION OF DR. ROBERT H. STURGES RE-FILED
`
`PURSUANT TO BOARD’S ORDER OF SEPTEMBER 14, 2017 (PAPER 45)
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`was served by Electronic submission through the USPTO Patent Trial and Appeal
`
`Board End-to-End System and e-mail at the addresses below:
`
`Michael J. Wise, Lead Counsel (MWise@perkinscoie.com)
`Joseph P. Hamilton, Back-up Counsel
`(JHamilton@perkinscoie.com)
`Jenna M. DeRosier (JDeRosier@perkinscoie.com)
`Tyler R. Bowen, Back-up Counsel
`(TBowen@perkinscoie.com)
`Amy Candeloro (ACandeloro@perkinscoie.com)
`patentprocurement@perkinscoie.com
`
`
`
`Dated: September 18, 2017
`
`
`
`
`
`
`
`Yuezhong Feng
`/s/
`
`
`Yuezhong Feng (Reg. No. 58,657)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`
`14
`
`
`
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