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 SUPPLEMENTAL
`BRIEF REGARDING TESTIMONY OF MR. RICHARD MEYST IN
`RELATED IPR2016-01692
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`LEGAL137070002.1
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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
`______________
`
`
`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S REPLY TO PETITIONER’S SUPPLEMENTAL
`BRIEF REGARDING TESTIMONY OF MR. RICHARD MEYST IN
`RELATED IPR2016-01692
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`LEGAL137070002.1
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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 (Paper 45), Patent Owner
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`respectfully submits this Reply to Petitioner’s Supplemental Brief (Paper 51).
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`I.
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`The Board Should Not Consider Petitioner’s Comments on Mr. Meyst’s
`Testimony from IPR2016-01692
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`Petitioner was not diligent in calling Mr. Meyst’s IPR2016-01692 testimony
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`to the Board’s attention. Petitioner could have deposed Mr. Meyst earlier and
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`addressed his testimony here in its Reply brief, which was due July 5, 2017. Paper
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`11 at 7. Mr. Meyst’s declaration in IPR2016-01692 was filed on May 25, 2017.
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`Ex. 1015 at 44:20–25; see IPR2016-01692, Ex. 2030. Petitioner waited eight
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`weeks to depose Mr. Meyst on July 21, 2017. Ex. 1035. In fact, Petitioner did not
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`ask for Mr. Meyst’s deposition until the day after its Reply was due here. Ex.
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`2037; Paper 17 at 7.
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`Even then, Petitioner still was not diligent in calling Mr. Meyst’s testimony
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`to the Board’s attention. Observations on cross-examination were due August 25,
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`2017. Paper 11 at 7. The Trial Practice Guide contemplates an “opposing party”
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`filing observations with the Board’s authorization. 77 Fed. Reg. at 48,768 (Aug.
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`14, 2012). Petitioner waited until September 1, 2017—six weeks after taking the
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`deposition—to even request permission to file observations. The Board should not
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`consider Petitioner’s unreasonably delayed observations.
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`LEGAL137070002.1
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`Case IPR2016-01268
`Patent No. 8,365,742
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`II. Mr. Meyst’s Testimony Is Consistent and Reliable
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`Rigidity of Hon ’043’s Porous Body. Contrary to Petitioner’s assertion, Mr.
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`Meyst did not opine that “Hon ’043’s porous body requires no support because it is
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`a rigid material.” Paper 51 at 1. Instead, Mr. Meyst opined that “the compressive
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`forces in Hon ’043” are not “strong enough to cause any noticeable deformation of
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`porous body 27,” and that “if pressure outside the atomizer were 2 psi higher than
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`inside, that is not enough pressure to cause the porous body” to collapse. Ex. 2015,
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`¶¶ 70, 80. That opinion is consistent with Mr. Meyst’s testimony that the porous
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`component “could be a very soft, pliable material” and is not “necessarily a rigid
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`material.” Paper 51 at 1–2.
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`Stress-Strain Curves. Petitioner mischaracterizes Mr. Meyst’s opinion as
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`“an effort to demonstrate that Hon 043’s porous body is necessarily made from a
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`rigid material.” Paper 51 at 2. In the cited paragraphs, Mr. Meyst relies on stress-
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`strain curves to show that 2 psi of pressure would not cause Hon ’043’s porous
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`body to collapse. Ex. 2015, ¶¶ 76–85. Petitioner is correct that Mr. Meyst testified
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`the stress-strain curves depict a “compressive load” and agreed with Petitioner’s
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`attorney that they reflect “a different measurement than measuring how much a
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`material may bend.” Ex. 1035, 68:1–70:12. But Mr. Meyst also explained that
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`“how much a material may bend” is not the relevant measurement. He testified
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`Case IPR2016-01268
`Patent No. 8,365,742
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`that “compressive force” is the correct measurement because if overpressure were
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`to occur around the atomizer, “there would be forces compressing the elements
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`inside.” Ex. 1035, 79:14–81:7.
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`Tensile Strength. Petitioner reads too much into paragraph 86 of Mr.
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`Meyst’s declaration. Paper 51 at 3; Ex. 2015 ¶ 86. That two-sentence paragraph
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`merely notes that ceramics “have a tensile strength similar to that of metals” and
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`thus “ceramics’ strain would also be essentially zero.” Ex. 2015 ¶ 86. Petitioner
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`asserts that tensile strength is not relevant. Paper 51 at 3. However, the Materials
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`Data Book relied upon by Petitioner confirms that ceramics are much stronger in
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`compression than in tension, reciting that “ceramics are of the order of 10 times
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`stronger in compression than in tension.” Ex. 1020-00028.
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`Line-to-Line Fit. Petitioner confuses the meaning of “interfering fit” and
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`“line-to-line” fit. Paper 51 at 4. As Mr. Meyst testified, a line-to-line fit is not a
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`“friction” or interfering fit. Ex. 1035, 25:2–27:8. Mr. Meyst also testified that the
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`device is “going to work whether the porous component is slightly loose, line to
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`line, or has an interference fit,” but that an interference fit may be detrimental
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`because it “could distort one of the parts.” Ex. 1035, 28:15–23, 30:6–17. Mr.
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`Meyst’s testimony does not support the proposition that Hon ’043’s “cavity wall
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`prevents axial displacement of the porous body relative to the cavity wall.” Paper
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`Case IPR2016-01268
`Patent No. 8,365,742
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`51 at 4. When asked if there would be relative movement, Mr. Meyst testified:
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`“There’s no place for item number 25 to move to. It’s held in place top, bottom
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`and all the way around on the outside.” Ex. 1035, 58:7–22. Item 25 is the cavity
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`wall, not the porous body 27. Ex. 1003 at 9. In other words, Mr. Meyst testified
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`that the porous body is preventing movement, not the cavity wall. This is
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`consistent with Mr. Meyst’s opinion that the cavity wall cannot support the porous
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`body as alleged because the cavity wall is internal to the porous body. Ex. 2015
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`¶ 51.
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`Internal Diameter And Holding In Place. Petitioner appears to argue that
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`because the ’742 Patent’s frame is both touching the porous component and
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`holding it in place, Hon ’043’s cavity wall necessarily holds the porous body in
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`place because it touches the porous body. But the ’742 Patent and Hon ’043
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`disclose different atomizer arrangements. Compare Ex. 1003, Fig. 6 with Ex.
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`1001, Fig. 18. Mr. Meyst explained that to hold Hon ’043’s porous body in place,
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`the porous body “would need to be anchored to something external,” and that the
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`cavity wall cannot hold the porous body in place because the cavity wall is internal
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`to the porous body. Ex. 2015 ¶¶ 53–55. Conversely, the frame in the ’742 Patent
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`is external to the porous component and thus can hold the porous component in
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`place. Ex. 1001, Fig. 18.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Wire-Wrapped Improvement. Petitioner accuses Mr. Meyst of admitting
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`that “the wire-wrapped porous component of the 742 patent improves upon the
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`Hon 043 device.” Paper 51 at 5. Indeed, Mr. Meyst’s declaration includes a
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`section devoted to why the ’742 Patent is an improvement over the prior art. Ex.
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`2015 ¶¶ 47–49. Mr. Meyst has never disputed that the ’742 Patent’s claims were
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`an improvement. Instead, Mr. Meyst explained that those claims were not obvious
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`to a person of ordinary skill in view of the references at issue here. See, e.g., Ex.
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`2015 ¶ 92.
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`III. Conclusion
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`The Board should not consider Petitioner’s comments on Mr. Meyst’s
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`testimony from IPR2016-01692 because Petitioner was not diligent and was
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`untimely in raising the issue. Regardless, Mr. Meyst’s testimony is consistent, and
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`supports Patent Owner’s positions.
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`Date: September 27, 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 27, 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
`SUPPLEMENTAL BRIEF REGARDING
`TESTIMONY OF MR. RICHARD MEYST IN
`RELATED 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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`LEGAL137070002.1
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