`
`
`
`
`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 IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`Held: October 10, 2017
`____________
`
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and JO-
`ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`RALPH J. GABRIC, ESQUIRE
`ROBERT S. MALLIN, ESQUIRE
`YUEZHONG FENG, Ph.D., ESQUIRE
`Brinks, Gilson & Lione
`455 North Cityfront Plaza Drive
`Suite 3600
`Chicago, Illinois 60611-5599
`
`ON BEHALF OF PATENT OWNER:
`
`MICHAEL J. WISE, ESQUIRE
`JOSEPH HAMILTON, ESQUIRE
`NATHAN KASSEBAUM, ESQUIRE
`Perkins Coie
`1888 Century Park East
`Suite 1700
`Los Angeles, California 90067-1721
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`
`
`October 10, 2017, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE KOKOSKI: Good afternoon. We will now hear
`argument in case number IPR2016-01268, RJ Reynolds Vapor Company
`versus Fontem Holdings 1 B.V., which concerns U.S. patent number
`8,365,742. I am Judge Kokoski, and with me in Alexandria is Judge
`McNamara. Judge Plenzler is appearing remotely.
`At this time we would like counsel to state their appearances for
`the record, starting with counsel for petitioner.
`MR. GABRIC: Good afternoon, Your Honors. My name is
`Ralph Gabric on behalf of petitioner.
`MR. WISE: Good afternoon, Your Honor. My name is
`Michael Wise. I'm here on behalf of the patent owner.
`JUDGE KOKOSKI: Just before we begin, we would just like
`to remind the parties that this hearing is open to the public, and the full
`transcript of the hearing will be made part of the record. Also please
`keep in mind that whatever is projected on the screen will not be
`viewable by Judge Plenzler. When you refer to an exhibit on the screen,
`please state the slide or page number to which you are referring for the
`record. This is also important for clarity in the transcript.
`In order to keep this hearing focused on the merits of the case,
`we ask counsel not to interrupt the other side to make objections. Any
`objections can be discussed during response and rebuttal time.
`Petitioner bears the burden of proof that the claims at issue are
`unpatentable and may proceed first. You have a total of 30 minutes and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 3
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`may reserve some of that time for rebuttal. How much time would you
`like to reserve?
`MR. GABRIC: Fifteen minutes. And Your Honor, we have a
`set of slides, hard copies, if we may approach.
`JUDGE KOKOSKI: Sure. You may begin when you are
`
`ready.
`
`MR. GABRIC: Good afternoon. As I said, I'm Ralph Gabric,
`counsel for petitioner. With me is Robert Mallin.
`This is a straightforward case of obviousness. Claims 2 and 3
`are obvious over the combination of Hon '043 and Whittemore, and I'll
`explain why. Let's start with the claims. Claims 2 and 3 are at issue.
`And the claims are directed to an electronic cigarette having various
`components. All the action revolves around the atomizer assembly and
`in particular a heating wire wound on a part of the porous component.
`One of the issues you need to decide is whether one of skill in the art
`would have been motivated to modify Hon '043 to have a heating wire
`wound on a part of the porous component.
`So what are we talking about? This is Figure 8 in the '742
`patent and has a porous component 81, a frame 82, a heating wire 83
`wound around a part of the porous component. You have a run-through
`hole on the left. And that empty space is an atomization chamber where
`atomization takes place. The porous liquid travels through that porous
`component into that atomization cavity where it's heated by direct heat in
`the heating wire and it's atomized and vaporized and drawn out of the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 4
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`atomizer assembly and sucked in by the user. That's what we are talking
`about.
`
`This is Hon '043. Hon '043 is also directed to an electronic
`cigarette. This is the atomizer assembly. I'm sorry Your Honor who is
`remote, this is slide 3 I'm on. Figure 6 is the atomizer assembly from
`Hon '043. It's very similar to the atomizer in the '742 patent in some key
`respects. It too has a porous body. It also has a frame which is a cavity
`wall 25. Inside that cavity wall is an atomization cavity where
`atomization takes place. It has ejection holes on the left. And the way
`this device works is liquid travels through the porous body to the vicinity
`of the ejection holes. And those ejection holes spit out liquid droplets
`into the atomization cavity. They float around in there and they are
`heated by convective heat, indirect heat.
`They get atomized. At least some of them do, the small
`droplets. Hon refers to small droplets. They get atomized, are carried
`out of the device via an aerosol. Large droplets are left behind. Hon
`himself recognizes that I don't atomize everything. There's large droplets
`that are left behind. They circle through an eddy air flow through there
`attached to the cavity wall and get reabsorbed in the porous body through
`a hole in the cavity wall.
`So Dr. Sturges, our expert, in the petition opines that one
`skilled in the art looking at Hon '043 would say that's very inefficient.
`That's a very inefficient way to atomize liquid, this indirect heat. It
`requires a lot of heat, a lot of battery power. There must be a better way.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`How can I improve Hon '043? How can I improve its atomizing
`efficiency so I don't have to rely on direct heat?
`Whittemore provides the answer. I'm on slide 4. Whittemore
`teaches a wire-wrapped wick, a heating wire wrapped around a wick.
`This is a vaporization device. And the wick is element D and the wire or
`filament is 3. And the way Whittemore works is he pulls liquids from
`that reservoir, medicament X, via capillary action through the wick and
`brings it into direct contact with the heating wire to give you direct heat.
`Much more efficient than indirect heat for vaporizing the liquid.
`So what would one skilled in the art do? This is the solution to
`the problem anyone would have recognized with Hon. They would say I
`am just going to simply take the wire-wrapped wick from Whittemore
`and replace Hon's heating wire. And what does that give me? It gives
`me predictable results. Those predictable results are -- and I've got it
`illustrated on the bottom conceptually what this would look like.
`The wick pulls liquid out of the porous body of Hon '043 into
`direct contact with the heating wire to atomize the liquid. Efficient
`heating. That's entirely what one would predict by making the
`substitution. So where does that take us?
`JUDGE KOKOSKI: Before you move on, one question, if you
`can go back to slide 5, in the proposed combination, the picture you have
`on the bottom, the heating wire wrapped around, I guess, what you are
`saying would have been Whittemore's wick in the combination, is that
`essentially an extension of the porous component through the atomization
`cavity -- and through the atomization cavity wall 25?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 6
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`MR. GABRIC: Yes.
`JUDGE KOKOSKI: So it would go through the wall? The
`wall wouldn't be solid, then?
`MR. GABRIC: There would be a hole to accommodate that
`wick because one skilled in the art would know that I need -- the whole
`point of this is to get the liquid from the porous component to the heating
`wire. In order to do that, I have to have access to the porous component.
`So that wick is going to have to have access to the porous component.
`One logical way to do it is to have a hole in the wall, put that wick in the
`wall and a porous component and pull liquid into the atomization
`chamber for direct heating by the wire.
`JUDGE KOKOSKI: Would placing a hole in that wall affect
`the wall's ability to support the porous component, which I believe is
`what you are saying that's the supported -- it's providing support for the
`porous component?
`MR. GABRIC: No, it wouldn't affect it at all. As I'll get to in a
`moment, the placement of that cavity wall is there to provide support for
`the porous body. In everyday use this thing is going to be subject to all
`sorts of forces. And what you want to do is preserve the integrity of that
`atomization cavity, because that's one of the actions taking place. And by
`merely drilling a hole in there to give access to the porous component for
`the wick is not going to affect the ability of the cavity wall to do that.
`So what we have is KSR. And KSR tells you when a patent
`claims a structure already known, in this case Hon '043, it's altered by the
`mere substitution of one element for another, in this case, Whittemore's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 7
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`wire-wrapped wick or Hon ‘043's naked, we call it, heating wire. The
`combination must do more than predictable results. We don't have any
`unpredictable results here. This is entirely predictable. And patent
`owner doesn't claim that the results would be unpredictable.
`So where does the patent owner take this fight? They take the
`fight to two areas, the supported by limitation of claim 2 and the between
`limitation of claim 3. And I'll discuss each of those briefly.
`I'm on slide 7. And this is claim 2 where the supported by
`limitation is. And the claim says a porous component supported by a
`frame. Pretty straightforward.
`Now, I'm on slide 8. And the only reason I have slide 8 is to
`point something out. The porous body of Hon '043 and the porous
`component of the '742 patent are made from the same materials, are made
`from the exact same materials. So whatever applies to the porous
`component as far as this rigidity and pliability, the same thing applies to
`the porous body of the Hon '043 patent. These are both pliable materials.
`They don't necessarily have to be rigid. They can have a wide ranging
`type of properties. That's why the cavity wall is there, to allow you to
`pick and choose from a wide variety of porous bodies. You are going to
`have support. They don't have to be self-supporting.
`So I'm on slide 9. And again, this is the point I want to make
`with this slide. This porous body can be very soft, very pliable. This is
`testimony from patent owner's expert. We asked him about the porous
`component in the '742 patent. He said it can be very soft, very pliable. It
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 8
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`needs to be supported. Those are out of the patent owner's expert's own
`mouth.
`
`He also pointed out the porous component is not rigid. It's not
`necessarily a rigid material. It could have a wide range of properties.
`Well, everything he says about the porous component in the '742 patent
`applies to the porous body in the '043 patent because they are made from
`the same materials, the exact same stuff.
`So what does this figure show us? This figure shows us that the
`frame of the '742 patent in the cavity wall of the '043 patent, one of its
`functions is to protect the integrity of that the atomization chamber, to
`protect that cavity. These devices are subject to various forces in
`everyday use and you need to keep that cavity intact so that the porous
`body doesn't deform, so it doesn't move in a manner that will impinge on
`that atomization cavity. That's what these things do.
`JUDGE PLENZLER: You mentioned the '742 patent on your
`slide 9. So the green portion there, what is that connected to in the '742
`patent?
`
`MR. GABRIC: Your Honor, the '742 patent doesn't tell you.
`But I'll tell you what both experts seem to suggest, that there's a seal.
`There's a seal around this atomizer assembly to prevent air flow from
`bypassing the assembly. So there's some kind of seal to prevent air from
`going between the atomizer assembly and the housing. And both experts
`suggest that in both the '742 patent and Hon '043, one skilled in the art
`would understand that there must be some type of seal to prevent that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 9
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`And they presume that that seal is playing some role in supporting the
`atomizer assemblies in the housing.
`JUDGE PLENZLER: And that would be around the left
`portion of the frame that you show on slide 9, correct?
`MR. GABRIC: That's a logical place, but it doesn't have to be
`there. It can be along the entire length of the body. It could be a little
`further downstream. Nobody has said exactly where it would be. Just
`conceptually it would be somewhere in that vicinity.
`JUDGE PLENZLER: For the Hon '043, is the element 25, what
`you have considered the frame, the green portion on your slide 9, is that
`engaged or supported by anything other than the porous body?
`MR. GABRIC: That frame is inside the porous body.
`JUDGE PLENZLER: Doesn't the porous body support the
`
`frame?
`
`MR. GABRIC: That's the interesting thing here. The answer is
`yes. The porous body supports the frame and the frame supports the
`porous body. If I can explain, I'll look using this slide, you've got Hon
`'043. The very top part of the atomizer assembly, that porous body can
`be filled with liquid. If that cavity wall wasn't there, it could sag. There's
`gravitational force there. That's just physics. So in that part of the
`atomizer assembly, that part of the cavity wall is actually supporting the
`porous body.
`Now, if you move downwards, now you have the porous
`body -- then you have the bottom part of the cavity wall sitting on the
`porous body. And the gravitational pull there, one could argue that the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`cavity wall is providing some support for the porous body there. The
`difference though, here, you got to remember is this cavity wall is fairly
`rigid. The materials it's made from is rigid. Whereas, the porous body
`can be very soft and pliable. So the type of support that the porous body
`would provide is much different and is not certainly at the level that the
`cavity wall would provide at the upper part of the atomizer assembly.
`JUDGE McNAMARA: Counsel, I'm a little -- I need a little
`clarification with respect to Figure 17 of the '742 patent. So if I read it
`correctly, and the description of Figure 17, which I guess is in the '742
`patent at column 5 near the bottom, it talks about the porous component
`81 being set on the frame 82. And the description of the figure is a
`diagram of an axial structure of the atomizer in that particular body. So
`I'm looking down the device, right. And so when I'm looking down the
`device, I'm seeing the porous component. Is the outside edge of that
`porous component in contact with the frame -- I'm sorry, in contact with
`the body itself, the whole body of the device?
`MR. GABRIC: I'm sorry --
`JUDGE McNAMARA: I'm trying to figure out, you were
`talking about a membrane or something, some kind of a --
`MR. GABRIC: A seal.
`JUDGE McNAMARA: A seal. And I'm trying to see whether
`or not there really is a seal there. Would there be a seal there or would
`there be no need for a seal because the porous member occupies all the
`space?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 11
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`MR. GABRIC: Well, if you look at the figures in the patent,
`the porous member does not occupy all the space.
`JUDGE McNAMARA: That's what I'm trying to find out.
`Which figure of the patent would tell me that?
`MR. GABRIC: I think we can look at Figure 1. We can even
`look at the face of the '742 patent, Exhibit 1001. You can see there's an
`annular space between the atomizer 8 and the housing. And the experts,
`both experts have talked about this both in Hon '043 which is similar, that
`this thing can't be floating in space, right? The atomizer 8 has to be
`attached somehow. Now, it could be attached to the ball there that's
`stuck in the liquid supply. Perhaps that's supporting it. Or another
`explanation is that there's a seal in that annular space somewhere that's
`supporting the atomizer assembly 8. And that's true in Hon '043.
`JUDGE McNAMARA: That's what I wanted to understand
`what you were reading on to the figures. Thank you.
`MR. GABRIC: So I lost my train of thought. But anyway, I
`was talking about supported by. So I want to talk about the various types
`of support that the porous body can provide. Now, this thing is used in
`everyday use. And I think can we go to 14. This device is used in
`everyday use and it's going to be subject to various forces. It can be
`actual forces, radial forces, gravitational forces. You can drop the device.
`That cavity wall is there to protect the atomization cavity.
`So I have got slide 14 up. Here is one example of the type of
`support that the cavity wall will provide. I have on the left the atomizer
`assembly and on the right the electronic cigarette. So the way this device
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 12
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`works is this liquid supply bottle, the user will shove it into the shell
`where the atomizer assembly is. When they jam that thing into the shell,
`there's a right-to-left compressional force that's going to act on that
`porous body. Now, if that cavity wall wasn't there and this is made -- this
`porous body is made from a soft pliable material, that thing is going to
`crumble like an accordion. That cavity wall needs to be there to provide
`support against that type of force when you put the liquid supply bottle
`in.
`
`If you go to slide 28, this is a demonstrative from patent
`owner's expert that illustrates this point. When you have a compressional
`force on this porous body, it's going to compress to a certain point that
`that cavity wall protects the atomization chamber so that it doesn't
`crumble like an accordion. So that's one example of the type of support
`this cavity wall can provide for this device in everyday use.
`There's other types of support. Go to slide 16. Radial support.
`People do crazy things. The atomizer assembly is on the left. The
`electronic cigarette is on the right. There's a mouthpiece there.
`Somebody can just blow into that thing out of curiosity. They could
`cough into it. If that were to happen, Hon '043 is designed to protect the
`atomization cavity. When you blow into the device, you have air flow
`going from right to left and you create a radial pressure situation around
`the perimeter of the atomizer assembly. That porous body could buckle
`under that radial pressure but for the cavity wall. The cavity wall
`protects that atomization chamber.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 13
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`JUDGE KOKOSKI: Counsel, I just want to note that you are
`into the time you reserved for rebuttal.
`MR. GABRIC: I know. I'll spend it now and we'll let the chips
`fall as they may. Thank you, Your Honor.
`JUDGE PLENZLER: Let me interrupt you real quick with a
`question. While you are talking about these different permutations about
`what might happen with the device, aren't we getting away from the term
`supported having any real meaning, because you know, if something
`contacts something else, you flip it, turn it, drop it, do a bunch of
`different things now, it would support it in some orientation? What do
`we need to do to give some meaning to some support here consistent with
`what's in the spec, because in the spec it doesn't look like that's what they
`are talking about, is it, the things you are talking about, dropping and
`blowing through the device?
`MR. GABRIC: What the spec says is it's set on the frame. And
`one skilled in the art, and the evidence in this case, one skilled in the art
`looking at this design and looking at the figures would understand, well, I
`know one of the reasons why that frame is there. That atomization cavity
`is critical. And that cavity wall -- that frame is there to support the
`porous body so it doesn't deform it and impinge upon that cavity.
`So, no, I don't think we are not giving any meaning to
`supported by. It has a meaning. It's there to provide support for the
`porous body. So whatever may happen, it's designed to protect that
`atomization cavity against whatever external forces may be applied on
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 14
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`that porous body. So I think the term has meaning and we are giving it
`meaning.
`And there's another example of support that I would like to get
`to real quick, and that's gravitational support. So this is patent owner's
`expert again. We asked him to your question, Judge Plenzler, we asked
`him about Figure 18 of the '742 patent, and we asked him what the heck
`is the frame doing? That portion of the frame internal to the porous
`body, what is it doing? And he said it's providing support against gravity
`of that portion of the porous body, the upper part of the porous body.
`That's what he said. So he acknowledged that's the role of the frame in
`the '742 patent.
`But the same logic, the same laws of physics that apply to
`Figure 18 in the '742 patent apply to Hon '043. That cavity wall is
`providing support against gravity for the upper portion of the porous
`body. It has to. That's just physics. We can't run from the physics.
`This is Dr. Sturges' testimony. He was asked about the porous
`body and the cavity wall in Hon '043, and he agrees. The case in which
`the porous body is full of liquid but for the support of the cavity wall, that
`porous body is going to sag like a horse's back. It's physics. The cavity
`wall is providing support.
`So I have just an illustration. This is slide 11. Just make the
`point, I mean, the laws of gravity, physics apply to both devices. The
`cavity wall and the frame are protecting that atomization cavity against
`gravitational pull on the porous body.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 15
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`So the between limitation, let me get to that real quick and I'll
`sit down. This is claim 3. It has the between limitation. I'm on slide 17,
`I'm sorry, Judge Plenzler. A porous body between the frame and the
`outlet and the heating wire on the part of the porous component with a
`substantial line with the run-through hole, that's what we're talking about.
`If we go to slide 19 quickly just to cover this, we are not real
`clear on what patent owner's position is, but this is what we think it is.
`We think their position is the claim between limitation reads on -- on the
`right-hand side I have Figure 18, reads on that portion of porous
`component that's in the cavity and then a portion of that porous
`component in the cavity is aligned with that run-through hole 821. And
`it's that portion that needs to be wrapped in heating wire.
`If you accept that, that's the meaning of this between limitation,
`the proposed modification meets that as well. Here is why. You have a
`porous component in the atomization cavity, Hon '043 as modified. And
`remember those are ejection holes on the left in the cavity. We say the
`run-through holes. Nobody has argued that they are not in this IPR. And
`the portion of the porous component in the atomization cavity that's
`aligned with the ejection holes is wrapped in heating wire. So if
`Figure 18 meets the between limitation, the modification, it meets the
`limitation.
`Thank you. I have nothing further at this time.
`JUDGE KOKOSKI: Thank you. I think what we are going to
`do, petitioner, is give you ten minutes for rebuttal even though you kind
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 16
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`of used a little bit of extra time there. And patent owner, we'll give you
`extra of the same.
`MR. WISE: But no rebuttal?
`JUDGE KOKOSKI: No rebuttal, but we'll add the ten minutes
`so that you can...
`MR. WISE: My partner is going to set up. This is Joe
`Hamilton, who is with me today. And Nathan Kassebaum is with me
`today also. Both of them are with Perkins and they have both entered
`appearances in this matter.
`Would you be interested in getting physical copies of the
`demonstratives?
`JUDGE KOKOSKI: Yes, if you have them, we'll take them.
`MR. WISE: May I approach?
`JUDGE KOKOSKI: Yes.
`MR. WISE: The proposition that when one combines
`Whittemore with Hon '043 and comes up with the claimed invention is
`wrong. The simple substitution when one of skill in the art looks at Hon
`'043 and Whittemore is different. They would substitute like parts. You
`would take the atomizer of Whittemore, the wick and the coil, and you
`would swap out the atomizer of Hon. That's the simple substitution.
`It looks like this. This is from the Meyst declaration. I am on
`slide 3 of my presentation. And you can see that the atomizer of
`Whittemore has been inserted into the liquid supply of Hon, and it would
`work exactly as you might expect. That is the simple substitution.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 17
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`
`Their expert, when asked, acknowledged it. I'm now on slide 4:
`Why wouldn't one skilled in the art simply just take the wick and coil
`wrapped around the wick of Whittemore and insert that wick into Hon's
`liquid supply as opposed to retaining all the other features of the atomizer
`of Hon?
`And his answer is telling: Because then we wouldn't have -- in a
`simple substitution, one would remove -- one would have to remove the
`atomizer completely, and that's not what's being proposed, because he's
`looking at the claim and using hindsight analysis.
`Now, what you are going to hear in reply is that Meyst and
`Sturges both don't think that this -- and I'm going to go back to 3, slide 3,
`that this proposed configuration is an improvement over the Hon '043.
`And Meyst doesn't think the Hon '043 doesn't need any improvement. He
`think it works fine. He thinks it's efficient. Sturges justifies his
`combination but does not deny that this is a simple substitution.
`Petitioner's proposed combination, which we have here on
`slide 6, is not a substitution. Nothing has been substituted. In Hon '043
`and in Whittemore the heating wire causes atomization. What they have
`done is they have added a component. They have added porous material
`across the cavity wall. That's not a substitution. That's an addition.
`And what's important to remember is in the Hon device, the
`Hon '043, the way that liquid is delivered to the wire is by the porous
`component mating with the liquid supply, the liquid coming around and
`it's being ejected through the ejection holes towards the wire. We will
`have a debate today about whether or not this is a convective or a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 18
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`conductive heater. But the important thing to keep in mind is that they
`have not substituted the delivery mechanism of Hon with the delivery
`mechanism of Whittemore. There is no simple substitution. There is an
`addition. There's a redesigning of the atomizer. It's not a simple
`substitution under KSR.
`Now, what's wrong with this proposed combination? Well, it
`was copied in the VMR petition in IPR2015-00859 where this Board
`denied that request for IPR over the very same references. And the
`question becomes why do we keep all this structure? Why do we have
`the porous bulge to mate with the liquid supply? We've heard about the
`possibility of deformation and axial displacement from Dr. Sturges. Why
`is there a cavity wall? Why is there porous material downstream of the
`liquid supply? And why on earth do we still have these ejection holes in
`this proposed combination after Dr. Sturges testified at length on how
`inefficient this is? And the reason is because he needs the frame with the
`run-through hole limitation to meet his hindsight analysis. He keeps all
`of the problems and has none of the solutions.
`Now, let's move on to the premise as to why we would do this
`in the first place. I am now on slide 7. The Hon '043 atomizer is
`efficient. It relies on a plain orifice atomizer. When liquid is ejected
`through those ejection holes, we can debate about whether it's convective
`or conductive, it is atomizing by definition. And Dr. Sturges has testified
`to that multiple times in his deposition that it's atomization.
`The question becomes between the two experts, is it hitting the
`wire or is it going around the wire in a slipstream. Some of it is going to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 19
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`hit the wire no matter what. And if you read through the specification,
`Hon says that after those droplets are ejected into the ejection chamber,
`they are further atomized by the wire. They are going to come up here
`and say, well, if you get rid of those -- if you get rid of those piezo
`elements down there -- I can't see the number. I can't see the number, but
`anyway, the piezo elements are sitting on the bottom of the atomizer. If
`you eliminate those, the specification says the atomization only occurs by
`the wire.
`But if you read the specification in context, it's referring to the
`atomization of the nicotine solution. And if you look at what's said here,
`it says that the nicotine solution is subjected to ultrasonic atomization and
`further atomized by the heating element. And in that other reference it's
`referring to nicotine solution which is already atomized in droplets.
`In any event, why are we here with this atomization issue?
`Because they say it's inefficient. Mr. Meyst points out that it's already
`atomized when it's ejected. I am on slide 8. And this ejection method on
`slide 9 is a plain orifice atomizer.
`There's a dispute --
`JUDGE KOKOSKI: Before you go on, can you go back to
`slide 7, please. I just want to make sure I understand what you are saying
`here. Are you saying that the atomization in Hon '043 is happening
`without heating at all?
`MR. WISE: No. All of the embodiments -- and this is another
`point that comes up with respect to Mr. Meyst. Atomization is occurring
`through the ejection holes. We agree that there is no embodiment
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 20
`
`
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`
`disclosed in Hon where there's either no heater or no ultrasonic element.
`There is a disclosure in Hon that you don't need a heater at all and you
`would use a piezoelectric element. And I'll show you that in just a
`moment. But we are n
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
