UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`R. J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`
`
`Case No. IPR2016-01268
`Patent No. 8,365,742
`
`______________________________________________________________
`
`DECLARATION OF RICHARD MEYST IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 1 of 37
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`R. J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`
`
`Case No. IPR2016-01268
`Patent No. 8,365,742
`
`______________________________________________________________
`
`DECLARATION OF RICHARD MEYST IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 1 of 37
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`
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`I, Richard Meyst, declare as follows:
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`Personal Background
`1.
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`I am currently the President and Chief Executive Officer of Fallbrook
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`Engineering, Inc. I am an engineer and consultant in the field of electromechanical
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`devices, including medical devices. A copy of my CV, which includes, among
`
`other things, my academic credentials and my employment history, is attached as
`
`Exhibit A.
`
`2.
`
`I have been retained by Patent Owner Fontem Holdings 1 B.V. as an
`
`expert witness in the above-captioned proceeding. I am being compensated for the
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`time I spend on this proceeding at a rate of $425 per hour. My field of expertise in
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`this matter is electromechanical and medical devices. This Declaration is based
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`upon my knowledge, skill, experience, training, and education in my field of
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`expertise, and upon information reviewed in connection with my retention as an
`
`expert witness in this matter.
`
`3.
`
`I received an M.S. (1972) and B.S. (1971) in mechanical engineering
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`from the University of Wisconsin, Madison. My undergraduate academic work
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`focused on design, manufacturing methods, fluid mechanics, and heat transfer. My
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`graduate academic focus was on computer-based automatic controls of systems
`
`and my Master’s thesis was on the concept development, design, fabrication, and
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`testing of a prototype bench-top implantable mechanical human heart.
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`Additionally, I have participated in industry seminars and training programs
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`covering design of experiments, statistical analysis, biocompatibility testing,
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`sterilization method selection and validation, design of plastic parts, design for
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`manufacturability, package design and testing, cellular therapy, and many others.
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`4.
`
`As an engineer, designer, consultant, program manager and
`
`entrepreneur at Fallbrook Engineering, Inc., I have been involved in the advanced
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`design and development of a wide range of medical technology products for the
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`healthcare industry for more than 25 years. Prior to 1989 when I became a partner
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`in Fallbrook Engineering, I held various engineering and management positions at
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`healthcare, medical device, and consumer product companies, including USCI (a
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`division of CR Bard, Inc.), Fenwal (a division of Baxter Travenol Laboratories),
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`Oak Communication, Imed Corp., a division of Warner Lambert, and Diatek Corp.
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`5.
`
`During my 40+ year professional career, I have focused on
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`electromechanical devices and related technologies requiring expertise in design,
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`fluid mechanics, thermodynamics, heat transfer, electronic power sources, circuit
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`design and fabrication, sensors, manufacturing technologies, and other areas of
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`engineering design and manufacturing methods. Based on my experience, I have
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`developed extensive knowledge in medical product design and development,
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`
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`product prototyping, design verification and validation, production startup,
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`manufacturing engineering, risk analysis, and strategic planning. In addition to
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`doing engineering work, my responsibilities have included running a medical
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`design and development consulting firm which includes assembling and managing
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`technical teams to develop new medical, consumer, industrial, and professional
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`products.
`
`6.
`
`I have also been a Principal Investigator on several NIH SBIR grants
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`from the National Heart, Lung, and Blood Institute developing a device for the
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`improved collection of Umbilical Cord Blood Stem Cells. I have served on the
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`Board of Directors for the Society of Plastics Engineers/Medical Plastics Division
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`and am a long time member. I am a member of the American Association of
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`Blood Banks, the Association for the Advancement of Medical Instrumentation,
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`the San Diego Regulatory Affairs Network, the American Association for Clinical
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`Chemistry, and the American Filtration & Separation Society.
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`7.
`
`I have also been a long-time member of the Medical Device Steering
`
`Committee of BIOCOM, the largest regional life science association in the world.
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`I was recently a juror in the annual Medical Design Excellence Awards
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`competition, the premier awards program for the medical technology community,
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`as well as a judge in the San Diego CONNECT capital competition for startup
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`companies. I am also an experienced inventor and innovator. My inventions have
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`been awarded 16 U.S. Patents, and I have applications pending. I have been an
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`invited speaker and have presented talks at numerous scientific and medical
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`industry meetings. Exhibit A includes a list of my patents, publications and
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`presentations, and professional associations.
`
`8.
`
`I have also served as an independent technical expert witness or
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`consultant relating to numerous intellectual property and patent litigations, product
`
`failure analyses, analyses of the use and misuse of various medical devices,
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`development contract disputes, and medical product liability matters. A list of my
`
`expert assignments within the past four years appears in Exhibit A.
`
`Items Reviewed
`9.
`
`I have reviewed the specification, claims, and file history of U.S.
`
`Patent No. 8,365,742 (“’742 Patent,” Ex. 1001). I have also reviewed the Petition
`
`for Inter Partes Review filed by Petitioner R. J. Reynolds Vapor Company in this
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`matter (Paper 2; “Petition”) and related exhibits, including the declaration of
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`Petitioner’s expert, Dr. Robert Sturges (“Sturges” ) (Ex. 1015). I have paid
`
`particular attention to the exhibits that are discussed in this declaration. I
`
`understand Petitioner has argued claims 2 and 3 of the ‘742 patent are unpatentable
`
`on Ground 1 that claims 2 and 3 would have been obvious based on CN2719043
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`(Hon ‘043)( Ex. 1002) and U.S. Patent No. 2,057,353 (Whittemore) (Ex. 1004).
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`Conclusions Reached
`10. For the reasons described below, I conclude that claims 2 and 3 are
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`patentable over Hon ‘043 and Whittemore and that Petitioner has not shown a
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`reasonable likelihood that claims 2 or 3 is obvious over Hon ‘043 and Whittemore.
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`The ’742 Patent and Claims
`11. One of the problems the ’742 Patent addresses is the lack of atomizing
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`efficiency in electronic cigarettes: “The electronic cigarettes currently available on
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`the market . . . are complicated in structure. They don't provide the ideal aerosol
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`effects, and their atomizing efficiency is not high.” ’742 Patent, Ex. 1001, Col. 1,
`
`lines 21–24, which I abbreviate below in the format of col. : line number(s). The
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`’742 Patent focuses on this problem by addressing how air flows through the
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`electronic cigarette, including the use of an atomizer having a porous component
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`supported on a frame, and via a heating wire wound on the porous component and
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`aligned with the run-through hole, or in the path of air flowing through the run-
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`through hole.
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`12. Air flow is a key concept in the ’742 Patent. The resistance to air
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`flow through the electronic cigarette during inhalation should generally simulate
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`that of a real tobacco cigarette. If the air flow resistance is too high, the user’s
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`inhalation effort will be unduly high and the air flow rate through the e-cigarette
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`(which entrains the nicotine vapor) will be too low. On the other hand, if the air
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`flow resistance is too low, the user will inhale excessive air and the air flow rate
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`will be too high.
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`13. The ’742 Patent’s atomizer is designed to atomize liquid into vapor at
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`a desired atomization rate. The atomization rate factors into the design of the air
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`flow characteristics of the electronic cigarette, including air flowing through the
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`run-through hole, and the heating wire wound on the porous component in the air
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`flow path. These design elements help to improve the aerosol effects and
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`atomizing efficiency of the claimed electronic cigarette.
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`14. The ’742 Patent is also directed to a device that can provide nicotine,
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`without depriving the user of the “smoking habit.” ’742 Patent, Ex. 1001 at 1:18-
`
`20. The problem to be solved is not just in the ability to efficiently deliver
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`nicotine. The rituals of the smoking must be provided. The solution to the
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`problem is the claimed electronic cigarette which can efficiently provide nicotine
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`and also satisfy the smoking habit. The smoking habit is satisfied via a device that
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`simulates the feel and experience of smoking.
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`15. The ’742 Patent claims recite an atomizer having a frame, and the
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`frame has a run-through hole. Claim 2 states that the frame supports the porous
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`component.
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`16. The ’742 Patent specification reads: “In the fifth preferred
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`embodiment, as shown in FIGS. 17 and 18, the atomizer assembly is an atomizer
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`(8), which includes a frame (82), the porous component (81) set on the frame (82),
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`and the heating wire (83) wound on the porous component (81). The frame (82)
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`has a run-through hole (821) on it.” ’742 Patent, Ex. 1001 at 5:42–47.
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`17. Claims 2 and 3 of the ’742 Patent recite “a frame” having a “run-
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`through hole.” “The frame (82) has a run-through hole (821) on it.” ’742 Patent,
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`Ex. 1001 at 5:46–47. The run-through hole 821 extends through the frame.
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`18. Claims 2 and 3 of the ’742 Patent recite “a heating wire wound on a
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`part of the porous component.” The description of Fig. 18 includes: “The porous
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`component (81) is wound with heating wire (83) in the part that is on the side in
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`the axial direction of the run-through hole (821).” ’742 Patent, Ex. 1001 at 5:47–
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`49. The heating wire is in contact with part of the porous component.
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`19. The ’742 Patent states: “the atomizer assembly is an atomizer (8),
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`which includes a frame (82), the porous component (81) set on the frame (82), and
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`the heating wire (83) wound on the porous component (81). The frame (82) has a
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`run-through hole (821) on it. The porous component (81) is wound with heating
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`wire (83) in the part that is on the side in the axial direction of the run-through hole
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`(821).” ’742 Patent, Ex. 1001 at 5:43–49.
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`20.
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`In Figures 17 and 18 (reproduced below), the heating wire 83 is
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`wound on a part of the porous component in alignment with run-through hole 821.
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`
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`21. The run-through hole 821 is not visible in Figure 17 because in this
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`view it is hidden behind the part of the porous component on which the heating
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`wire 83 is wound. Consequently, that part of the porous component is aligned with
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`the run-through hole to a degree that the line-of-site of the run-through hole 821 is
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`partially or fully blocked. This alignment is shown by the centerline added
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`through Figures 17 and 18 above. This alignment may be visualized by the result
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`of poking a hypothetical rod through run-through hole 821. The hypothetical rod
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`will hit heating wire 83. The context of the ’742 Patent shows that “substantially
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`aligned with the run-through hole” means the porous body is in line with or in the
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`path of the run-through hole.
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`Claim Construction.
`22.
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`I understand that claim terms are generally given their ordinary and
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`customary meaning as understood by a person of ordinary skill in the art at the
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`time of the invention when read in the context of the specification and prosecution
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`history unless a patentee sets out a different definition or clearly disavows claim
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`scope. I also understand that in the context of a proceeding in front of the Board, a
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`claim is given the broadest reasonable construction in light of the specification. I
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`further understand that extrinsic evidence such as expert or inventor testimony,
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`dictionaries, and learned treatises can help determine the meaning of claim terms,
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`although that evidence is less significant than the claims, specification, and
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`prosecution history.
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`23.
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`It is also my understanding that claims are to be interpreted from the
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`perspective of a person of ordinary skill in the relevant art at the time of invention.
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`To assess the level of ordinary skill in the art, I understand that one may consider
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`such factors as: (1) the educational level of the inventor; (2) type of problems
`
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity with
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`which innovations are made; (5) sophistication of the technology; and (6)
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`educational level of active workers in the field. As used herein “POSITA,” “one
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`skilled in the art,” and similar variations of those terms refer to a person of
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`ordinary skill in the art at the time of the invention of the ’742 Patent, which is
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`presumed to be the filing date of the ’742 Patent’s earliest priority application. I
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`understand that the relevant time for assessing the level of skill in the art is the
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`earliest time of filing of an application supporting the claimed inventions, which in
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`this case for the ᾽742 patent is May 16, 2006, the filing date of the Chinese priority
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`application, CN ’200620090805. In my opinion, a person of ordinary skill in the
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`art of the ’742 Patent would be a person with a mechanical or electrical
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`engineering degree, industrial design degree, or similar technical degree, or
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`equivalent work experience, and 5-10 years of working in the area of
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`electromechanical devices, including medical devices. The definition of a person
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`of ordinary skill in the art offered by Petitioner and Sturges is a person with at least
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`the equivalent of a Bachelor’s degree in electrical engineering, mechanical
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`engineering, or biomedical engineering or related fields, along with at least 5 years
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`of experience designing electromechanical devices, including those involving
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`circuits, fluid mechanics and heat transfer. Petition (Paper 2), at 11; Sturges (Ex.
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`1015), ¶¶29-30. My opinions set forth herein are the same under either definition.
`
`24.
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`I have reviewed the claims of the ’742 Patent, and based on the claim
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`language, specification, prosecution history, and extrinsic evidence, I describe my
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`opinions below as to how a person of ordinary skill in the art at the time of the
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`invention would have interpreted certain claim terms.
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`25.
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`I understand that in IPR 2015-00859 (the “VMR Decision,” Ex.
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`1011), the Board construed “frame” to mean “a rigid structure” and “porous
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`component” to mean “a component of the atomizer assembly in the electronic
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`cigarette that includes pores and is permeable to liquid, such as cigarette solution
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`from the cigarette solution storage area.” VWR Decision (Ex. 1011), pp. 8, 10. I
`
`use these constructions in conducting my review.
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`Obviousness Analysis
`26.
`I understand an inter partes review will be instituted only if the
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`Petitioner has shown a reasonable likelihood that a claim is unpatentable based on
`
`the cited prior art.
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`27.
`
`I understand that a patent may not be obtained if the differences
`
`between the claimed invention and the prior art are such that the claimed invention
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`as a whole would have been obvious at the time of the invention to a person of
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`ordinary skill in the art. To my understanding, a claimed invention is not obvious
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`just because each of its elements was independently known in the prior art.
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`Instead, it is my understanding that there must be an explicit analysis showing
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`there was a reason to combine the known elements in the manner covered by the
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`claims.
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`28. My understanding is that obviousness is not proven by mere
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`conclusory statements or conclusory expert testimony. Instead, I understand there
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`must be some articulated reasoning with rational underpinning to satisfy the legal
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`standard for proving obviousness. I also understand that obviousness cannot be
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`based on a hindsight combination of components.
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`29.
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`I understand that Petitioner has argued that claims 2 and 3 are
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`unpatentable on the ground that they are obvious based on Chinese Patent No.
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`2719043Y (“Hon ’043,” Ex. 1002; “Hon ’043 English translation,” Ex. 1003; Hon
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`PCT equivalent, Ex. 1017; and Hon PCT English translation, Ex. 1018) in
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`combination with U.S. Patent No. 2,057,353 (“Whittemore”) (Ex. 1004). Petition,
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`pp. 6-7 (Paper 2). After reviewing and analyzing the claims, the specification, the
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`Petition, and the documents cited in the Petition, in my opinion, claims 2 and 3 of
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`the ’742 Patent are patentable, and Petitioner has not shown a reasonable
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`likelihood that either of these claims are obvious over Hon ’043 in combination
`
`with Whittemore. I reached these conclusions based on my analysis as further
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`described below. As described above, Sturges and I define a person of ordinary
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`skill in the art at the time of the invention differently, but my conclusions regarding
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`patentability are the same under either definition.
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`Ground 1: Alleged Obviousness over Hon ’043 and Whittemore
`In my opinion, claims 2 and 3 of the ’742 Patent are not obvious over
`30.
`
`Hon ’043 in view of Whittemore because (a) Hon ’043 has no frame supporting a
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`porous component; (b) Hon ’043 as modified by Whittemore has no porous
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`component supported by a frame; and (c) a person of ordinary skill would not
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`modify Hon ’043 in view of Whittemore as described in the Petition.
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`Overview of Hon ’043
`31. Fig. 6 of Hon ’043 is shown below.
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`
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`32. Fig. 6 shows the porous body 27; the part of the porous body referred
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`to as the porous bulge 36; the atomizing cavity 10; the heating element 26; the
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`cavity wall 25; the first piezo element 23 and long stream ejection holes 24. The
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`cavity wall 25 is surrounded by the porous body 27. The wall 25 can be made of
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`aluminum oxide or ceramic. Hon ’043 (Ex. 1003), at 9. Hon ’043 operates as
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`explained at pages 10-11:
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`“The air enters the normal pressure cavity 5 through the air inlet 4, passes
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`through the air passage 18 of the sensor and then the through hole in the
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`vapor-liquid separator 7, and flows into the atomization cavity 10 in the
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`atomizer 9. The high speed stream passing through the ejection hole drives
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`the nicotine solution in the porous body 27 to eject into the atomization
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`cavity 10 in the form of droplet, where the nicotine solution is subjected to
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`the ultrasonic atomization by the first piezoelectric element 23 and is further
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`atomized by the heating element 26. After the atomization, the large
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`diameter droplets stick to the wall under the action of eddy flow and are
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`reabsorbed by the porous body 27 via the overflow hole 29, whereas the
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`small diameter droplets float in stream and forms aerosols, which are sucked
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`out via the aerosol passage 12, gas vent 17 and mouthpiece 15.”
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`Hon ’043 has no Frame Supporting a Porous Component.
`33.
`In the VMR Decision the Board found that the ordinary meaning of
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`“support” is “bear all or part of the weight of: hold up”. The Board pointed to the
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`lack of explanation as to how the porous component 27 is held up by the cavity
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`wall 25. VMR Decision (Ex. 1011), at 15-16. I agree with that finding. As the
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`cavity wall 25 is inside of the porous body 27, it does not hold up the porous body
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`27.
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`34. The Petition (Paper 2) at page 4, 15 and 16, and Sturges (Ex. 1015) at
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`¶¶44-48, describe the cylindrical wall 25 as a “frame” which supports the porous
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`body 27, stating:
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`“To begin with, porous body 27 is attached to cavity wall 25 either by
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`a friction fit or with a bonding material to prevent axial displacement of the
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`porous body under the shear forces at the interface of cavity wall 25 and
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`porous body 27 when the porous body is inserted into the solution storage
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`body 28 (see Fig. 11 of Hon ‘043) of the liquid supplying bottle 11.”
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`Petition (Paper 2) at 15-16.
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`35. Hon ’043 (Ex. 1003) does not discuss the cavity wall 25 as being
`
`attached to the porous body, preventing axial displacement, or shear forces. When
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`the porous body is inserted into the solution storage body 28, there are no shear
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`forces acting on the cavity wall 25, because the cavity wall 25 is inside of the
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`porous body 27 as shown in Fig. 6 of Hon ’043.
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`36. Sturges says that a person of ordinary skill would have recognized
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`that the porous body is attached to the cavity wall via either a friction fit or through
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`a bonding material. Sturges (Ex. 1015), ¶45. I disagree. No friction fit or bonding
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`material is needed because the atomization cavity wall is enclosed on all sides
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`within the porous body and cannot move. No friction is necessary and providing a
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`friction fit would complicate making the device described in Hon ’043 because a
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`friction fit requires precise mechanical tolerances on the mating components, and a
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`pressing step to fit them together. This could be especially problematic with the
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`cavity wall which is ceramic, suggesting it is also brittle.
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`37. Hon ’043 (Ex. 1003) at 11 says:
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`
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`“After the atomization, the large diameter droplets stick to the wall under the
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`action of eddy flow and are reabsorbed by the porous body 27 via the overflow
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`hole 29….”
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`38. The overflow hole 29 is shown in the cylindrical sidewall of the cavity
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`wall 25, in Fig. 7 of Hon ’043. A bonding material, if used, would interfere with
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`this reabsorption by forming a barrier between the atomization cavity wall 26 and
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`the porous body 27 which would block the overflow hole 29. Use of a bonding
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`material also conflicts with explanation of air flow given at page 33 of Sturges,
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`because a bonding material would similarly interfere with the flow of air as
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`proposed in Sturges (Ex. 1015).
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`39. At page 16 the Petition (Paper 2) says:
`
`“In addition, the leading edge of the cavity wall 25 provides further
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`support for the porous body in the area of bulge 36. Ex.1015 at ¶¶ 45-46.
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`The cavity wall 25 also provides radial support when pressure increases in
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`the low pressure area surrounding the atomizer 9, such as when the user
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`deliberately or accidentally blows into the mouthpiece 15. In that situation,
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`the cavity wall 25 provides radial support to porous body 27, and thus
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`prevents the body 27 from impinging upon and/or destroying the
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`atomization cavity 10. Id. at 47-50.”
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`40.
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`In my opinion the porous body does not need, and is not provided
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`with, any radial support. I find nothing in Hon ’043 to support these conclusions in
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`the Petition.
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`41.
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`In Hon ’043 the cavity wall 25 provides a surface for large droplets to
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`stick to, and it does not support anything. Hon ’043 at page 11 says:
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`“After the atomization, the large diameter droplets stick to the wall
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`under the action of eddy flow and are reabsorbed by the porous body 27 via
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`the overflow hole 29, whereas the small diameter droplets float in stream
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`and forms aerosols, which are sucked out via the aerosol passage 12, gas
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`vent 17 and mouthpiece 15.” Hon ’043 (Ex. 1003), at 11.
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`42. Pages 25-26 of the Petition (Paper 2) and page 33 of Sturges (Ex.
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`1015) describe an air stream moving radially through the wall 25 as in the marked
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`up Fig. 6 from page 26 of the Petition shown below.
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 18 of 37
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`43. This Fig. 6 above shows air moving radially outwardly through both
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`the cavity wall 25 and the porous body 27.
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`44.
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`In my view this description is incorrect, for the following reasons.
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`45. The porous body 27 is constantly saturated with liquid because it is in
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`contact with liquid from the liquid supplying bottle 11. The porous body is shown
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`with thick walls. These factors tend to make the porous body impermeable to air
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`flow through the walls of the porous body. The atomization cavity wall 25 is made
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`of aluminum oxide or ceramic, so that the cavity wall 25 is also largely or
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`completely impermeable. If the cavity wall 25 was permeable then the overflow
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`holes 29 discussed in Hon ’043 would not be needed.
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`46. Drawing air radially through the cylindrical sidewalls of the porous
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`body as shown in the marked up Fig. 6 from the Petition, if at all possible, would
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`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 19 of 37
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`require substantial vacuum (well beyond normal inhalation). This is because the
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`cavity wall 25 and the porous body 27 have insufficient permeability, or no
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`permeability to allow air flow through them.
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`47. Fig. 6 and the explanation of Fig. 6 in the Petition (Paper 2) and at
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`page 33 of Sturges (Ex. 1015) are also incorrect because vapor or aerosol passing
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`through the sidewalls of the porous body 27 would be reabsorbed back into the
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`porous body. The result would be a non-functioning device.
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`48. Fig. 6 of Hon ’043 shows that the porous body 27 has side openings,
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`as labelled below. The hand drawn figure on the right below shows a front
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`perspective view of my understanding of the porous body 27 of Hon ’043.
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`Page 20 of 37
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`49. The bulge 36 part of the porous body 27 has openings on either side,
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`so that the downstream end of the atomization cavity 10 is not closed off against
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`air flow. Rather, air flows out through the side openings as shown, and not at all
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`radially out through the walls of the atomization cavity wall 25 and the porous
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`body 27 as proposed in the Petition. With this understanding of Hon ’043, there is
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`no low pressure area surrounding the porous body 27, as argued at page 16 of the
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`Petition relative to “a porous component supported on a frame”. There are also no
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`high pressure surfaces, and no low pressure surfaces of the porous body 27, as
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`argued at pages 25-26 of the Petition relative to “a heating wire wound on a part of
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`the porous component in the path of air flowing through the run-through hole”.
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`50. Sturges discusses the check valve 31, the vapor-liquid separator 7, and
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`element 8 of Hon ’043 which is the negative pressure cavity (referred to as a “low
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`pressure volume” by Sturges), presumably as support for his argument that
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`blowing into the mouthpiece can create an overpressure situation causing the
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`atomization cavity wall 25 to support the porous body 27. Sturges (Ex. 1015), ¶49.
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`Hon ’043 does not mention any overpressure situation. Since elements 31, 7 and 8
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`in Hon ’043 are spaced apart from porous body 27, they are unrelated to the
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`configuration of the atomization cavity wall 25 and the porous body 27.
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`Page 21 of 37
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`51. Sturges also says that the check valve 31 is provided to prevent
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`overpressure. Sturges (Ex. 1015), ¶49. Hon ’043 discusses the check valve 31:
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`“As shown in FIG. 10, a silicon gel check valve 31 may cover the outside of
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`the through hole on the vapor-liquid separator 7. During smoking, a stream
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`reaches the through hole, as the air pressure in the through hole increases, the
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`silicon gel check valve 31 is opened and the stream passes; otherwise, the silicon
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`gel check valve 31 is closed.” Hon ’043 (Ex. 1003), at p. 11.
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`52. The check valve 31 in Hon ’043 is provided to maintain air flow in the
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`forward direction through the device. With the check valve 31 covering the
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`through hole in the vapor -liquid separator 7, the check valve 31 also acts to
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`prevent liquid from moving upstream past the vapor -liquid separator and into
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`contact with the circuit board 3. The check valve 31 is not provided to prevent
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`overpressure.
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`Hon ’043 as Modified by Whittemore has no Porous Component Supported
`by a Frame.
`53. The Petition does not argue that Whittemore discloses “a porous
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`component supported by a frame.” The Petition only argues that this limitation is
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`disclosed in Hon ’043--which it is not, for the reasons given above--and for these
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`reasons it is my opinion that the combination of Hon ’043 and Whittemore does
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`not disclose “a porous component supported by a frame” as recited in claim 2.
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`Page 22 of 37
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`A Person of Ordinary Skill Would Not Modify Hon ’043 in view of
`Whittemore as Described in the Petition
`54. The explanations for modifying Hon ’043 in view of Whittemore are
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`at pages 8, 18 and 19 of the Petition (Paper 2), which state that the modified Hon
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`’043 would be more thermally efficient because the heating element is in direct
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`contact with the liquid, providing more efficient heating, and lower heating
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`temperatures.
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`55. The Petition provides no image or discussion of what the modification
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`of Hon ’043 would actually be. In my opinion the modification of Hon ’043
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`discussed in the Petition would offer no improvement over Hon ’043.
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`56.
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`In Hon ’043 the porous body 27 moves liquid from the solution
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`storage body 28 for vaporization.
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`“The solution storage porous body 28 in the liquid-supplying bottle 11
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`will be in contact with the bulge 36 on the atomizer 9, thereby achieving the
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`capillary infiltration liquid-supplying.” Hon ’043 (Ex. 1003) at11.
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`57.
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`In Whittemore the wick D performs this function. Substituting the
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`wick/heating wire configuration of Whittemore for the heating wire 26 of Hon
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`’043 results in a redundant design having both the porous body 27 of Hon ’043 and
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`the wick D of Whittemore. On the other hand, if the porous body 27 and the
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`Page 23 of 37
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`heating wire 26 of Hon ’043 are removed in making the modification, then the
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`atomizer of Hon ’043 is entirely discarded and replaced with something else
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`having little relation to the atomizer disclosed in Hon ’043.
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`58.
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` The Petition does not explain or illustrate what the modification of
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`Hon ’043 would be. Sturges says:
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`“As the PHOSITA would have readily understood, the thermal
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`efficiency of Hon ‘043 could be improved by simply including a wick inside
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`the windings of the heating element as disclosed in Whittemore. The wick
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`would thus pull liquid nicotine from the porous body 27 (via capillary
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`action) into direct contact with the heating element 26.” Sturges (Ex. 1015),
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`¶59.
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`59. Actually making this modification however would require making
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`holes in the atomization cavity wall 25 to put the wick into contact with the porous
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`body 27 of Hon ’043, which could have uncerta
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