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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 REPLY TO PATENT OWNER’S BRIEF REGARDING
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`DR. ROBERT H. STURGES’ TESTIMONY IN IPR2016-01692 PURSUANT
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`TO BOARD’S SEPTEMBER 14, 2017 ORDER (PAPER 45)
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`I.
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`Dr. Sturges Did Not “Change” His Opinion About Hon 043’s Ejection
`Holes
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`Dr. Sturges did not change his opinion about Hon 043’s ejection holes.
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`Consistent with the teachings of Hon 043, Dr. Sturges opines in his Reply
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`Declaration that the droplets ejected from Hon 043’s ejection holes are not
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`atomized. Ex. 1027, ¶¶59-61; see also Ex. 1003-00011 (“To simplify the design,
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`the first piezoelectric element 23 on the atomizer 9 can be omitted, and the
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`atomization of the nicotine solution will be made only by the heating element
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`26.”).
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`In contending that Dr. Sturges’ Reply Declaration reflects a “change” in
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`opinion, P.O. points to Dr. Sturges’ previous testimony in the 1692 IPR. But that
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`testimony does not demonstrate any purported “change” in opinion. A review of
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`that testimony reveals that Dr. Sturges was merely responding to questions about
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`atomizers generally, and not whether Hon 043’s ejection holes are atomizers. See
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`Ex. 2029, 87:6-95:1.
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`Indeed, it is Meyst – not Dr. Sturges – who vacillates about Hon 043’s
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`ejection holes. In support of P.O.’s Preliminary Response, Meyst never referred to
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`the droplets ejected from Hon 043’s ejection holes as atomized. See Ex. 2001,
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`¶32. However, in an effort to muster support for a “teaching away” argument (i.e.,
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`that Hon 043 modified with Whittemore’s wick would allegedly absorb
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`purportedly atomized droplets ejected from Hon 043’s ejection holes), Meyst
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`1
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`shifted gears and opined for the first time that Hon 043’s ejection holes are
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`“essentially a plain orifice atomizer.” Ex. 2015, ¶37. But when confronted with
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`the express teachings of Hon 043 during cross-examination, Meyst waivered,
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`explaining that he needed “more time” to review Hon 043 before he could stand by
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`his opinion that Hon 043’s ejection holes are atomizers. Ex. 1023, 70:4-8; 80:12-
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`82:13.1
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`II. Dr. Sturges’ Opinions About Fluid Flow Are Reliable
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`In an effort to make Fig. 6-1b of Sabersky relevant (and thus a figure with
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`respect to which Dr. Sturges should have been intimately familiar), P.O.
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`incorrectly – and for the first time2 – argues that Hon ‘043’s heating wire is a
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`slender body that would cause a diffusing wake akin to the “slender strut”
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`illustrated in Fig. 6-1b instead of the cylinder that causes an eddying wake as
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`illustrated in Fig. 6-1d of Sabersky.3 But the evidence is to the contrary. Hon 043
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`itself refers to “eddy flow” (not diffusing flow) through the atomization chamber,
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`1 Meyst ultimately clung to the opinion that Hon 043’s ejection holes are
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`atomizers. See id., 148:1-158:7.
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`2 P.O. ignores the Board’s instruction that new arguments should not be raised in
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`this supplemental briefing. Paper 45, p. 4.
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`3 Sabersky is marked as Ex. 2033 in both this IPR and the 1692 IPR.
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`2
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`and P.O.’s expert Meyst acknowledged that Hon 043’s heating wire contributes to
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`that eddy flow. Ex. 1003, p. 11; Ex. 1035, 52:7-19; 54:7-21. Thus, and consistent
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`with Dr. Sturges’ opinion, the PHOSITA would have understood that the eddying
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`flow caused by Hon 043’s heating wire is similar to the eddying flow illustrated in
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`Fig. 6-1d, and not the diffusing flow illustrated in Fig. 6-1b.
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`Also without merit is P.O.’s argument that Dr. Sturges “believes” that Hon
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`043’s heating wire is a “slender body.” But no such testimony exists. Rather, Dr.
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`Sturges’ opinion that Hon 043’s heating wire has a “small . . . diameter” is entirely
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`consistent with the wire having a cylindrical shape. Moreover, Hon 043’s heating
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`wire can have both a cylindrical shape while also being configured into the very
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`loose “coil” illustrated in Fig. 6 of Hon 043.
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`Finally, and ignored by P.O., Dr. Sturges explained that additional
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`information beyond that provided by Sabersky would be necessary to assure
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`creation of a diffusing wake, but acknowledged that a PHOSITA would have been
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`capable of creating such a system. Ex. 2029, 114:8-115:21.
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`III. Dr. Sturges’ Testimony Does Not “Undermine” His Opinion That Hon
`043’s Porous Body Is “Supported By” The Cavity Wall
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`Dr. Sturges has consistently opined in the 1692 IPR that the “set on”
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`limitation of the 548 patent encompasses but does not require that the frame
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`provide weight-bearing support for the porous component. Ex. 2029, 28:25-34:18,
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`80:13-82:22. Notwithstanding P.O.’s argument to the contrary, that testimony is
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`3
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`not inconsistent with Dr. Sturges’ opinion in this IPR that Hon 043’s cavity wall
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`provides weight-bearing support for the porous body as articulated in Ex. 1027,
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`¶22.
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`In ¶22, Dr. Sturges cites to Meyst’s testimony that the frame of the 742
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`patent provides weight-bearing support for the porous component. Ex. 1023,
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`34:16-23, 40:4-13. As Dr. Sturges explains, Meyst’s reasoning about weight-
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`bearing support applies with equal force to the cavity wall of Hon 043. Ex. 1027,
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`¶22. Dr. Sturges did not opine, nor did he otherwise adopt as his own Meyst’s
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`opinion, that the term “set on” requires weight-bearing support. That is a separate
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`issue, which is not even addressed by Dr. Sturges in ¶22.
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`IV. Dr. Sturges’ Testimony Does Not “Undermine” His Opinion That Hon
`043 Discloses a Friction Fit Or Bonding Material
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`P.O. reads far too much into Dr. Sturges’ deposition testimony from the
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`1692 IPR in an effort to create the misimpression that if Hon 043’s porous body is
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`“set on” the cavity wall (as Dr. Sturges opines in the 1692 IPR) then that
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`necessarily means that the porous body cannot be “attached” to the cavity wall by a
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`friction fit or with a bonding material as he testifies in this IPR. P.O.’s argument is
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`without merit.
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`First, there is no material dispute in this IPR that the PHOSITA would have
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`understood that Hon 043’s porous body is attached in some fashion to the cavity
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`wall. See e.g. Ex. 1015, ¶ 45; Ex. 1020, ¶¶ 4-8; Ex. 1027, ¶¶ 18-20. Indeed, P.O.’s
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`4
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`expert Meyst agrees. Although he quibbles about whether there is a friction,
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`bonding material or a “line-to-line” fit between Hon 043’s cavity wall and porous
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`body, Meyst nevertheless concedes that Hon 043’s porous body and cavity wall are
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`attached to each other. Specifically, as Meyst testified, Hon 043’s porous body
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`and cavity wall “work together in cooperation to form one part which doesn’t
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`allow for any movement” of the two parts relative to each other. Ex. 1035, 58:7-
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`59:13 (emphasis added).
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`Second, P.O. takes Dr. Sturges’ 1692 IPR testimony out of context. Using
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`the example of a pen and a pen cap, Dr. Sturges explained that while the pen cap
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`may be “set on” the pen, the pen cap may not necessarily be “supported by” the
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`pen. Whether the pen cap is supported by the pen depends on whether the pen – as
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`opposed to the pen cap - is being held by the user. Ex. 2029, 29:15-33:12. When
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`asked if Dr. Sturges believed that “cap is sitting on the pen,” he answered: “I think
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`that's fair, yes. It's not screwed to it, it's not attached to it or glued to it in any other
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`way, so I think it's set on.” Ex. 2029, 30:25-31:5. But Dr. Sturges never testified,
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`as P.O. incorrectly suggests, that an object that is glued or otherwise attached to
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`another objection cannot also be “set on” that object.
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`V. Conclusion
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`Dr. Sturges’ testimony and opinions in this IPR and in the 1692 IPR are
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`consistent. Claims 2-3 of the 742 patent are obvious, and should be canceled.
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`5
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`Dated: September 27, 2017
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`Respectfully submitted,
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`Ralph J. Gabric
`/s/
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`Ralph J. Gabric, Reg. No. 34,167
`Lead Counsel for Petitioner
`BRINKS GILSON & LIONE
`455 N. Cityfront Plaza Drive Ste 3600
`Chicago, IL 60611-5599
`T: 312-321-4200
`F: 312-321-4299
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`6
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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 27, 2017, a complete and entire copy of this PETITIONER’S REPLY
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`TO PATENT OWNER’S BRIEF REGARDING DR. ROBERT H. STURGES’
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`TESTIMONY IN IPR2016-01692 PURSUANT TO BOARD’S SEPTEMBER 14,
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`2017 ORDER (PAPER 45) was served by Electronic submission through the
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`USPTO Patent Trial and Appeal Board End-to-End System and e-mail at the
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`addresses below:
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`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)
`Nathan R. Kassebaum (NKassebaum@perkinscoie.com)
`Amy Candeloro (ACandeloro@perkinscoie.com)
`patentprocurement@perkinscoie.com
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`Dated: September 27, 2017
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`Yuezhong Feng
`/s/
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`Yuezhong Feng (Reg. No. 58,657)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
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