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 BRIEF REGARDING TESTIMONY FROM DR.
`ROBERT H. STURGES IN IPR2016-01692
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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 BRIEF REGARDING TESTIMONY FROM DR.
`ROBERT H. STURGES IN IPR2016-01692
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Pursuant to the Board’s September 14, 2017 Order expunging Patent
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`Owner’s observations (Paper 38) and authorizing supplemental briefing, Patent
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`Owner Fontem Holdings 1 B.V. respectfully submits the following brief regarding
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`the testimony of Petitioner R.J. Reynolds Vapor Company’s declarant, Dr. Robert
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`H. Sturges, taken in co-pending IPR2016-01692 on May 10, 2017 (Ex. 2029).
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`I.
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`It Is Proper for the Board to Consider Patent Owner’s Comments on
`Dr. Sturges’ Testimony from IPR2016-01692
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`Exhibit 2029 is properly part of the record in this proceeding because Dr.
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`Sturges authenticated the exhibit and testified about it in this proceeding on July
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`18, 2017. Ex. 2030 at 50:18–51:22. The Board should also consider Patent
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`Owner’s comments on the testimony. First, the testimony was taken on May 10,
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`2017, after Patent Owner had filed its last substantive paper, and was therefore
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`unavailable when Patent Owner filed its Opposition. Paper 24 (filed April 4,
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`2017); 77 Fed. Reg. at 48,767 (Aug. 14, 2012). Second, the testimony is
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`relevant—it addresses the same prior art that is at issue in this IPR, as well as a
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`related patent. Ex. 2030 at 51:12–22; see Ex. 2029. Third, Patent Owner was
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`diligent in calling relevant testimony to the Board’s attention. Paper 11 at 5–7;
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`Paper 38.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`II. Dr. Sturges’ Testimony in Exhibit 2029 Is Relevant to His Testimony in
`This Proceeding
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`Dr. Sturges’s testimony in Exhibit 2029 contradicts his Reply Declaration
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`regarding Hon ’043’s ejection hole. In IPR2016-01692, Dr. Sturges testified that
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`prior to Hon ’043, “dispersion of ejected liquid in atomizers were well known” and
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`that a person of ordinary skill could modify a “plain atomizer opening” to modify
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`the spray pattern. Ex. 2029, 87:6–95:1. Specifically, Dr. Sturges testified that
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`“prior to Hon ’043, one skilled in the art was fully capable of changing the spray
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`formation and dispersion of an ejected liquid in an atomizer” by “changing the
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`atomizer opening.” Ex. 2029, 90:16-24. 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.
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`The testimony relates to the credibility and reliability of Dr. Sturges’s
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`opinions regarding whether a person of ordinary skill would have understood
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`Hon ’043’s ejection hole is a plain-orifice atomizer. In Exhibit 2029, Dr. Sturges
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`testified about a reference he cited to support his opinion that Hon ’043’s ejection
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`holes emit “a cone-shaped spray.” Ex. 2029, 88:7-24; see also Ex. 1027 ¶ 57 (“the
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`spray from the ejections [in Hon ’043] is conical”). He testified that one could
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`“change the cone shape to a different shape” by changing a “plain atomizer
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`opening to something of a different form.” Ex. 2029, 89:17-24. But during that
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`Patent No. 8,365,742
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`deposition, he “realized that [that reference] also discloses fan-shaped sprays.” Id.,
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`92:10-94:7. Disclosure of a fan-shaped spray supports Patent Owner’s position.
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`Paper 24 at 49; Ex. 2015 ¶ 98. So in his Reply Declaration, Dr. Sturges changed
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`his view. Now he argues “Hon 043 is not a plain orifice atomizer.” Ex. 1027 ¶ 60.
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`Dr. Sturges’s testimony in Exhibit 2029 shows that his opinions on fluid
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`flow in this proceeding are not reliable. Dr. Sturges testified in IPR2016-01692
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`that a person of ordinary skill would “certainly” have the knowledge of the
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`Sabersky book. Ex. 2029, 112:12-17. He also testified that one would need to
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`know “a great deal more than is discussed” in that book to model a diffusing wake.
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`Ex. 2029, 113:25–115:4. This testimony is relevant to Exhibit 1027 ¶¶ 56-60,
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`Exhibit 1032, Exhibit 2016 at 92:20-93:20, and Exhibit 2033 at 170-171.
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`The testimony relates to the credibility and reliability of Dr. Sturges’s
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`opinions on fluid flow. Specifically, Dr. Sturges relies on page 171 of the
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`Sabersky book to model an eddying wake from a cylinder without being familiar
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`with page 170, which at Figure 6-1b illustrates “[f]low past a slender body without
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`separation” forming a diffusing wake. Ex. 2033 at 170. And while Dr. Sturges
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`believes Hon ’043’s heating wire is a slender body because it is “small in
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`diameter,” Ex. 1027 ¶ 56, he instead cites Figure 6-1d on page 171, which
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`illustrates “[s]eparation behind a cylinder.” Ex. 2033 at 171. But Dr. Sturges
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`Patent No. 8,365,742
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`describes Hon ’043’s heating element as a “coil,” which is not a cylinder. Ex.
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`2030, 65:18-24, 69:21-70:4; Ex. 2016, 70:23-71:7.
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`Dr. Sturges’ testimony from IPR2016-01692 undermines his opinions
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`regarding whether Hon ’043’s porous body is “supported by” the cavity wall. In
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`Exhibit 2029, Dr. Sturges testified that the term “set on” does not require
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`“supported by.” Ex. 2029, 82:5-18. This testimony is relevant to Exhibit 1027
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`¶ 22 because it demonstrates that Dr. Sturges’ reasoning is contradictory.
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`Specifically, while Dr. Sturges testified in Exhibit 2029 that “set on” does not
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`require “supported by,” in Exhibit 1027 he argues that “set on” necessarily requires
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`“supported by” as follows: “the porous component in the 742 patent is set on the
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`frame; as such, the frame necessarily supports the weight of the porous body.” Ex.
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`1027 ¶ 22 (emphasis added). Petitioner will argue in response that Dr. Sturges was
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`referring to Patent Owner’s expert’s opinion, not his own. But Dr. Sturges testifies
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`that this was his own opinion: “Meyst’s testimony supports my opinion that the
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`cavity wall in Hon 043 provides weight-bearing support to the porous body.” Ex.
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`1027 ¶ 22 (emphasis added).
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`Dr. Sturges’s testimony from IPR2016-01692 undermines his opinion about
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`whether Hon ’043 discloses a “friction fit” or “bonding material.” In Exhibit 2029,
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`Dr. Sturges testified that the phrase “set on a frame” means “to cause to sit on a
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`Case IPR2016-01268
`Patent No. 8,365,742
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`frame” and that one item is “set on” another if “it’s not attached to it or glued to it
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`in any other way.” Ex. 2029, 28:25–31:5. This testimony is relevant to the
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`Petition at 15-16, the Opposition at 20-30, the Reply at 15, Exhibit 1015 ¶ 45,
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`Exhibit 1027 ¶¶ 18-20 and 23-25, Exhibit 2015 at ¶¶ 41 and 56-62, and Exhibit
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`2016 at 113:6-114:14. The testimony relates to the credibility and reliability of Dr.
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`Sturges’s opinions regarding a friction fit or bonding material. Specifically, Dr.
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`Sturges testified in Exhibit 2016 that Hon ’043 discloses that “the porous body is
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`set on the cavity walls.” Ex. 2016 at 113:6-114:14. In Exhibit 2029, Dr. Sturges
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`adds that “set on” means “not attached to it or glued to it in any other way.” Ex.
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`2029, 28:25–31:5. Petitioner’s theory that Hon ’043 discloses the “supported by”
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`limitation depends on Hon ’043 disclosing the porous body being “attached” to the
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`cavity wall via a friction fit or with a bonding material. Paper 2 at 15-16; Ex. 1015
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`¶¶ 45-46. But Dr. Sturges’ testimony in Ex. 2029 contradicts that view by
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`suggesting that Hon ’043 does not disclose a friction fit or bonding material.
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`Date: September 20, 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
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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 20, 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 BRIEF REGARDING
`TESTIMONY FROM DR. ROBERT H. STURGES IN
`IPR2016-01692
`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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