UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`
`
`NU MARK LLC
`Petitioner
`
`v.
`
`FONTEM HOLDINGS 1 B.V.
`Patent Owner
`
`________________________
`
`Case IPR. No. Unassigned
`U.S. Patent No. 8,365,742
`________________________
`
`NU MARK Ex.1003 p.1
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`Declaration of Dr. John M. Collins in Support of
`Petition for Inter Partes Review
`of U.S. Patent No. 8,365,742
`Under 37 C.F.R. § 1.68
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`
`
`
`
`

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`
`
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`BACKGROUND AND QUALIFICATIONS .....................................................................1
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`THE 742 PATENT ..............................................................................................................6
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`PROSECUTION HISTORY ................................................................................................9
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`A.
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`B.
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`C.
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`First Office Action and Response ............................................................................9
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`Examiner Interview ................................................................................................10
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`Notice of Allowance ..............................................................................................11
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`LEVEL OF ORDINARY SKILL IN THE ART ...............................................................11
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`CLAIM CONSTRUCTION ...............................................................................................12
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`A.
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`B.
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`C.
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`“frame” (claims 2, 3)..............................................................................................13
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`“substantially” (claims 2, 3) ...................................................................................13
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`porous component” (claims 1, 2, 9, 10) .................................................................15
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`VII.
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`STATE OF THE ART BY 2006 ........................................................................................15
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`VIII. UNDERSTANDING OF THE GOVERNING LAW ........................................................21
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`IX.
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`THE PRIOR ART ..............................................................................................................26
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`A.
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`Takeuchi .................................................................................................................26
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`B. Whittemore ............................................................................................................30
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`C.
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`D.
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`E.
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`Brooks ....................................................................................................................32
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`Takeuchi in view of Whittemore ...........................................................................34
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`Brooks in view of Takeuchi ...................................................................................42
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`X.
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`GROUNDS OF INVALIDITY ..........................................................................................46
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`
`
`ii
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`NU MARK Ex.1003 p.2
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`I, John M. Collins, hereby declare as follows:
`
`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`I.
`
`INTRODUCTION
`1. My name is John M. Collins. My findings, as set forth herein,
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`are based on my education and background in the fields discussed below.
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`2.
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`I have been retained on behalf of Petitioner Nu Mark LLC
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`(“Petitioner” or “Nu Mark”) to provide this Declaration concerning technical
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`subject matter relevant to the inter partes review petition (“Petition”) concerning
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`U.S. Patent No. 8,365,742 (“the 742 Patent”, Ex.1001). I have been asked to offer
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`opinions generally regarding
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`the validity, novelty, prior art, obviousness
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`considerations, and understanding of a person of ordinary skill in the art in the
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`industry as it relates to the 742 Patent. I reserve the right to supplement this
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`Declaration in response to additional evidence that may come to light.
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`3.
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`I am over 18 years of age. I have personal knowledge of the
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`facts stated in this Declaration and could testify competently to them if asked to do
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`so.
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`II. BACKGROUND AND QUALIFICATIONS
`I am the Chief Operating Officer at the Consortia for Improving
`4.
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`Medicine with Innovation and Technology (CIMIT), a non-profit consortium of
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`Boston’s leading teaching hospitals and universities along with a growing list of
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`national and international affiliates. I am also Chief Technology and Innovation
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`Officer for Reed Collins, LLC. I have worked at CIMIT since 2008. Much of my
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`1
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`NU MARK Ex.1003 p.3
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`responsibility is to facilitate collaboration among scientists, engineers, clinicians
`
`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`and entrepreneurs to speed the discovery, development, and implementation of
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`medical innovations. I focus on assisting investigators in moving technologies
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`from the lab into products and services that improve patient care. For example, I
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`assisted the transition of a simulation technology that helps in the training of Army
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`medics to a leading international simulation company. That product is now being
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`marketed under the name Caesar by CAE Healthcare.
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`5.
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`I received a Ph.D. (1988) and M.S. (1982) in mechanical
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`engineering from the Massachusetts Institute of Technology (MIT), as well as a
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`B.S. (1980) in mechanical engineering, with a minor in economics, from
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`Rensselaer Polytechnic Institute (RPI). At MIT, I worked in the Fluids Lab under
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`the direction of Professors Asher Shapiro and Roger Kamm. My academic work
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`focused on mechanical engineering with a concentration on heat/mass transfer,
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`with my Ph.D. and M.S. theses applying these principles to pulmonary dynamics.
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`My M.S. thesis was on high frequency ventilation: at the time a novel way to
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`ventilate babies without over-pressurization of the lung, avoiding damage to the
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`lung during ventilator assist. My Ph.D. thesis was on analytical and numerical
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`modeling of forced exhalation from the lung. The results were a computational
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`model of the lung that allowed for more sophisticated diagnostics based on the
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`results of the simple Forced Expiration Pulmonary Function (FEPF) test.
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`2
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`NU MARK Ex.1003 p.4
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`

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`
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`6.
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`I have over 34 years of product design, development and
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`consulting expertise covering a wide range of industries and products. Over that
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`time, I have had a consistent focus on medical devices and related technologies,
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`which includes my particular expertise in design, fluid mechanics and heat/mass
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`transfer. In addition to doing engineering work, my responsibilities have included
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`assembling and managing teams to develop new consumer, industrial and
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`professional products. My CV is attached as Appendix C.
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`7.
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`Prior to 2008, I held various leadership positions at technology
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`and product development companies. From 1982-1986, I worked at Booz, Allen &
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`Hamilton, where I developed products such as the Regina Rug Scrubber, which
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`utilized a venturi sprayer to dispense a soap and water solution evenly over floor
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`surfaces. After taking time to return to MIT and complete my PhD, I was then
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`employed by Arthur D. Little (“ADL”) from 1988-2002. I joined ADL as a design
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`engineer and helped to form its medical products business. I progressed to being
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`responsible for the Technology and Innovation (T&I) Directorate, with more than
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`250 staff.
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`8.
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`From 2002-2008, I worked in close collaboration with CEO and
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`owner, Dr. Kenan Sahin, to form TIAX from the resources of the ADL T&I
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`Directorate. TIAX is a privately held technology transformation organization
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`focused on advancing and developing technologies for commercialization in
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`3
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`NU MARK Ex.1003 p.5
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`several core technology areas, including clean energy and materials, health and
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`wellness, appliances and HVAC systems, and enhanced security. During my tenure
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`at TIAX, part of which I served as president, the World Economic Forum
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`recognized TIAX as a Technology Pioneer in 2002 and as a New Champion in
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`2007. For a full list of my employment history, see my CV, Appendix C.
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`9. My experiences cover a broad technology base across a diverse
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`set of industries, including in the areas of medical devices, energy, consumer
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`products, emission
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`technology for automobiles, and alternative smoking
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`products. By way of example, while at ADL, I worked with Philip Morris USA
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`(“PM USA”)—which I have been informed is affiliated with the Petitioner—on an
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`alternative smoking product called Accord that was battery-powered and puff-
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`activated. Also while at ADL, and then continuing that work at TIAX, I worked
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`on several related projects in conjunction with an affiliate of PM USA called
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`Chrysalis Technologies, Inc. (“Chrysalis”). These projects built off of and utilized
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`prior capillary aerosol generator research and development at PM USA and
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`Chrysalis—the results of which are reflected in patents such as U.S. Pat. No.
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`5,743,251 to Howell et al. (Ex.1011); U.S. Pat. No. US 6,501,052 to Cox et al.
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`(Ex.1019); and U.S. Pat. No. 6,491,233 to Nichols (Ex.1020)—and applied it to
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`efforts to atomize liquid fuel. One application was for a low-power, fuel based
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`electric power generator (see, e.g., Ex.1008, Pellizzari I) and another was for a
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`4
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`NU MARK Ex.1003 p.6
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`clean emission “coldstart” fuel injector for automobiles (see, e.g., Ex.1009,
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`Pellizzari II). By way of further example, I have worked with General Motors to
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`help develop anti-lock hydraulic braking systems, Baxter Healthcare to help
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`develop a blood/fluid warmer based on the analytical optimization of the thermal
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`performance of “conventional” resistance heating technology, Bausch Lomb to
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`help develop a microsurgical fluid delivery system that allowed the surgeon to
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`control the flow or pressure of irrigation fluid, General Electric Appliances to help
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`develop a coffee maker that managed the heat applied to water and coffee grounds
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`to deliver high quality coffee without humidity damaging the surrounding cabinets,
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`the Regina Corporation to help develop cleaning technology, and the Engelhard
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`Corporation to help develop a system that applied a liquid-containing metal into a
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`porous substrate and then dry it uniformly.
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`10.
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` I have also performed services in numerous patent disputes as
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`an independent technical expert and consultant and as an expert witness. I have
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`consulted as an expert in matters involving the design of a variety of medical
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`devices. See Appendix C for a representative list of matters in which I have
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`consulted over the last 4 years. Of particular relevance to this matter, I previously
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`filed declarations in support of petitions in IPR2014-01289, challenging U.S. Pat.
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`No. 8,393,331 (“the 331 Patent”), and IPR2014-01300, challenging U.S. Pat. No.
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`8,490,628 (“the 628 Patent). Both of those petitions were instituted.
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`5
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`NU MARK Ex.1003 p.7
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`
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`11.
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`I also have experience as an innovator and inventor. I am a
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`named inventor on more than 20 U.S. patents, with foreign counterparts in
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`addition, on new products and manufacturing processes. See Appendix C.
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`12.
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`I am being compensated at a rate of $400 per hour for my
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`services. My compensation does not depend on the outcome of this Petition or on
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`the pending litigation between Petitioner and Fontem in the U.S. District Court for
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`the Central District of California, and I do not have any financial interest in the
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`Petitioner (or any of its affiliates), the Patent Owner, or the 742 Patent.
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`13.
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`In developing my opinions below relating to the 742 Patent, I
`
`have considered the materials cited herein, including those itemized in Appendix
`
`D.
`
`III. THE 742 PATENT
`14. The 742 Patent was filed on April 5, 2011, and claims priority
`
`through U.S. Patent Application No. 12/226,818 (originally filed as PCT
`
`Application No. PCT/CN2007/001575) to a Chinese patent application which was
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`filed on May 16, 2006. The 742 Patent, at a high level, describes an electronic
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`cigarette that, when a person inhales on the cigarette, atomizes a nicotine-infused
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`liquid to provide the person an experience similar to that provided by a
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`combustible cigarette.
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`6
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`NU MARK Ex.1003 p.8
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`
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`15. The electronic cigarette proposed by the 742 Patent comprises
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`two shells (labelled a and b in the figure below) with shell (a) containing a battery
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`assembly, an air-intake and sensing region, and an atomizer assembly, and shell (b)
`
`containing a liquid storage component. These components are depicted in Figure 1
`
`of the 742 Patent:
`
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`Ex.1001, 742 Patent at Fig. 1 (annotated).
`
`
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`16.
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` The electronic cigarette is activated by a person inhaling at the
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`mouth piece (depicted in the figure on the right hand side). Inhalation creates a
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`negative pressure in the device and air is drawn in through inlets (labelled a1 in
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`Fig. 1) and through a valve (labelled 7 in Fig. 1). The negative pressure is detected
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`by a sensor (labelled 5 in Fig. 1), which, when closed, energizes the electric circuit
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`on an electronic circuit board (labelled 4 in Fig. 1). Ex.1001, 742 Patent at 3:67-
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`
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`7
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`NU MARK Ex.1003 p.9
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`4:11. This causes the battery (labelled 3 in Fig. 1) to power the atomizer (labelled
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`8 in Fig. 1). The atomizer abuts a perforated liquid storage component (labelled 9
`
`in Fig. 1).
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`17. As shown in Figs. 17 and 18 below, the atomizer includes a
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`porous component 81 set on a frame 82. Id. at Figs. 17-18, 5:42-46. The porous
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`component, which is in contact with the liquid supply, absorbs liquid from the
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`liquid supply. Id. at Fig. 1, 3:63-67, 4:36-40, 5:49-52. A heating wire 83 is wound
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`around a portion of the porous component that is aligned with a run-through hole
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`821 in the frame. Id. at Figs. 17-18, 5:42-49. The run-through hole enables air to
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`be pulled past the heating wire.
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`
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`Ex.1001, 742 Patent at Figs. 17 and 18 (annotated).
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`
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`18. When the person inhales, absorbed liquid in the porous
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`component 81 is heated and atomized by the heating wire, becoming suspended in
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`8
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`NU MARK Ex.1003 p.10
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`the airflow as an aerosol, which is then inhaled by the person through the air
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`channel b1. Id. at 4:23-32.
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`IV. PROSECUTION HISTORY
`First Office Action and Response
`A.
`
`19. On July 19, 2012, the Examiner rejected the sole claim, claim
`
`30, under 35 U.S.C. § 112 as being indefinite. Ex.1002, July 19, 2012 Office
`
`Action at p.7. Specifically, the Examiner found that with respect to the claim
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`language “the said porous component is wound with heating wire in the part that is
`
`on the side in the axial direction of the run through hole …,” the text was unclear
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`as to the “part” and “side” being referenced. Id. Although the Examiner indicated
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`that claim 30 would be allowable if the indefiniteness rejection were overcome, the
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`Examiner also explicitly stated in the reasons for allowance in paragraph 4 of the
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`Office Action that the closest prior art of record, CN2719043, differed from claim
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`30 in that it lacked the claimed combination, including “an atomizer, which
`
`includes a porous component and a heating body; the said heating body is heating
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`wire … the heating wire is wound on the said porous component.” Id. at p.3.
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`20.
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`In response to the office action, Applicant amended claim 30 to
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`replace the indefinite claim limitation with “the heating wire is wound on a part of
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`the porous component that is substantially aligned with the run-through hole.”
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`Ex.1002, August 3, 2012 Amendment and Remarks at pp.10,12. Applicant also
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`added new claims 31-32. Id. at pp.10-11. With respect to these new claims,
`9
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`NU MARK Ex.1003 p.11
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`Applicant argued that “claim 31 is similar to claim 30 and includes the elements of
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`claim 30, but written with more common English usage” and that “claim 32 is
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`similar to claims 30 and 31 but describes a heating wire wound on a part of the
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`porous component substantially aligned with the run-through hole … and with the
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`porous component in contact with a liquid supply in the housing ….” Id. at p.12.
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`Finally, Applicant argued that “claims 31 and 32 are believed to be allowable for
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`the same reason that claim 30 is indicated to be allowable at paragraph 4 of the
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`Office Action.” Id. at p.13.
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`21. Applicant also supplemented its response to the office action on
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`August 7, 2012, providing a substitute specification with numerous substantive
`
`amendments. Ex.1002, August 7, 2012 Supplemental Response at pp.14-15.
`
`B.
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`Examiner Interview
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`22. Although the prosecution history does not show any additional
`
`rejections after the Applicant’s August 7, 2012 supplemental response, an
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`interview was held on August 14, 2012. The Examiner Interview Summary states
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`that during the interview, the Examiner and Applicant’s counsel discussed pending
`
`claims 30, 31, and 32 as well as the following prior art references: “Voges, U.S.
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`Patent No. 6,196,218; Robinson, U.S. Patent No. 1,775,947; Counts, U.S. Patent
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`No. 5,144,962; Brooks, U.S. Patent No. 4,947,875; Japan Tobacco, EP 0 845 220
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`B1; Hon Lik WO/2004/095955; and Hon Lik WO/2005/099494.” Ex.1002,
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`10
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`NU MARK Ex.1003 p.12
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`August 23, 2012 Interview Summary at p.51. According to the Summary, no
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`agreement was reached. Id.
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`C. Notice of Allowance
`23. On November 14, 2012, the USPTO issued a notice of
`
`allowance. Ex.1002, November 14, 2012 Notice of Allowance at p.52. The 742
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`Patent issued on February 5, 2013, with claims 30, 31, and 32 of the 937
`
`Application issuing as claims 1, 2, and 3, respectively. On July 2, 2013, the
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`USPTO issued a certificate of correction. Ex.1002, Certificate of Correction at
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`p.53.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`I understand that the factors that may be considered in
`24.
`
`determining the ordinary level of skill in the art include: (1) the level of education
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`and experience of persons working in the field; (2) the types of problems
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`encountered in the field; and (3) the sophistication of the technology. I understand
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`that a person of ordinary skill in the art is not a specific individual, but rather is a
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`hypothetical individual having the qualities reflected by the factors above.
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`25.
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`In my opinion, a person of ordinary skill in the art with respect
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`to the technology described in the 742 Patent would be a person with a Bachelor of
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`Science degree in mechanical engineering, or a similar technical degree, along with
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`at least 3-5 years of experience in designing and developing handheld devices with
`
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`11
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`NU MARK Ex.1003 p.13
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`thermal management and fluid handling technologies. A higher level of education
`
`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`may substitute for a lesser amount of experience, and vice versa.
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`26. For purposes of this Declaration, unless otherwise noted, my
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`statements and opinions below, such as those regarding my experience and the
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`understanding of a person of ordinary skill in the art generally (and specifically
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`related to the references I consulted herein), reflect the knowledge that existed
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`prior to 2006, at the latest. As of 2006, I would have qualified as one of skill in the
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`art according to the above definition.
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`VI. CLAIM CONSTRUCTION
`I understand that in deciding whether to institute inter partes
`27.
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`review, “[a] claim in an unexpired patent shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b). I understand that this claim construction standard is different
`
`from—and potentially broader than—that applied in district court (Phillips
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`standard). I further understand that “the broader standard serves to identify
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`ambiguities in the claims that can then be clarified through claim amendments.”
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`Final Rule, 77 Fed. Reg. 48680, 48699 (Aug. 14, 2012). I therefore applied claim
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`constructions that are consistent with the broadest reasonable construction of the
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`claims of the 742 Patent in forming my opinions. Although I have proposed
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`12
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`NU MARK Ex.1003 p.14
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`specific constructions for the claim terms below, I have applied the broadest
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`reasonable standard throughout my analysis.
`
`A.
`
`“frame” (claims 2, 3)
`
`28.
`
`I understand that the Board determined in IPR2015-00859 that
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`the broadest reasonable interpretation of “frame” in light of the 742 Patent
`
`specification is “rigid structure.” VMR Prods. LLC v. Fontem Holdings 1 B.V.,
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`IPR2015-000859, Paper 9 at pp.7-8. In doing so, the Board observed that while
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`the porous component of the atomizer is set on the frame in one embodiment of the
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`742 Patent, this single embodiment was not enough to limit “frame” to a structure
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`that is designed to hold up another component, as suggested by Fontem in that
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`proceeding. Id. The Board further found that “rigid structure” was consistent with
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`the use of the term “frame” in the specification and the claims. Id. This same
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`construction was also adopted by the United States District Court for the Central
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`District of California in Fontem Ventures, B.V., et al. v. NJOY, Inc. et al., Case
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`2:14-cv-01645-GW-MRW. Ex.1007, Rulings on Claims Construction (DI 65) at 7.
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`I have assumed this construction for my analysis.
`
`B.
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`“substantially” (claims 2, 3)
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`29. The claim term “substantially” appears in both challenged
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`claims. For the reasons discussed below, this term should be construed to be
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`consistent with its common meaning of “in significant part or extent.”
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`13
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`NU MARK Ex.1003 p.15
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`30. Although the term “substantially” is not expressly used or
`
`discussed in the specification, it is used in a way consistent with its common
`
`meaning as can be discerned by reference to the limitation of claim 3 that requires
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`“a heating wire wound on a part of the porous component which is substantially
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`aligned with the run-through hole.” The embodiment of the atomizer assembly
`
`corresponding to this limitation is depicted in Figure 18:
`
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`Ex.1001, 742 Patent at Fig. 18 (annotated).
`
`
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`31. As shown in the figure above, a relatively small, but significant,
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`part of the porous component on which the heating wire is wound is directly
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`aligned with the run-through hole. Nonetheless, a person of ordinary skill in the
`
`art reading the claims in light of the specification would have understood that this
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`embodiment depicts the heating wire wound on a part of the porous component
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`14
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`NU MARK Ex.1003 p.16
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`which is “substantially” aligned with the run-through hole, as recited in claim 3,
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`because the part of the porous component on which the heating wire is wound is
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`aligned with the run-through hole to a significant extent. Thus, the broadest
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`reasonable interpretation of the term “substantially,” in view of the specification
`
`and claims, is “in significant part or extent.”
`
`C.
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`porous component” (claims 1, 2, 9, 10)
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`32.
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`I understand that the Board determined in IPR2015-00859 that
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`the broadest reasonable interpretation of “porous component” as recited in the
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`claims of the 742 Patent means “a component of the atomizer assembly in the
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`electronic cigarette that includes pores and is permeable to liquid, such as cigarette
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`solution from the cigarette solution storage area.” I have assumed this construction
`
`for my analysis.
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`VII. STATE OF THE ART BY 2006
`33. Electronic Cigarettes (“e-cigarettes”) were well-known before
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`2006. In fact, they have been well-known since at least the 1980s, as demonstrated
`
`by, for example, Brooks, discussed below. Moreover, the basics of the technology
`
`involved in e-cigarettes have been known since at least the 1930’s. See, e.g.,
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`Ex.1005, Whittemore at 1:50-2:7 (disclosing an electronic vaporizer utilizing a
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`wick-coil design).
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`34. By 2006, a great deal was known about e-cigarettes and the
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`variety of ways they could be designed. See, e.g., Ex. 1006, Brooks at Abstract
`15
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`NU MARK Ex.1003 p.17
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`(disclosing “[s]moking articles [that] employ an electrical resistance heating
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`element and an electrical power source to provide a tobacco-flavored smoke or
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`aerosol and other sensations of smoking”); Ex.1010, Voges at 5:49-51 (disclosing
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`a “nicotine dispenser comprising a cigarette-shaped hollow tubular body”);
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`Ex.1004, Takeuchi at 1:12-13 (disclosing a flavor-generating device for “enjoying
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`simulated smoking”). Based on my experience, a person of ordinary skill in the art
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`would have known at least the following about the broad field of e-cigarettes at the
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`time the 742 Patent was filed.1
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`35. An e-cigarette is a consumer product generally designed to
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`replicate the function and some of the experience of a combustible cigarette. It
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`generally allows a person to inhale an aerosol that contains the desired
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`constituents, including nicotine and flavors. A skilled person knew that e-
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`cigarettes came in different shapes and sizes, and that it was well-known to use
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`conventional drug delivery devices, such as inhalers, vaporizers, nebulizers, etc., to
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`1 At various points in this declaration I refer to my opinions about the knowledge or
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`understanding of a person of ordinary skill in the art. All of these opinions should
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`be understood to refer to the knowledge or understanding of a person of ordinary
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`skill in the art as of May 16, 2006, unless specifically noted otherwise.
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`NU MARK Ex.1003 p.18
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`deliver nicotine and flavors. See, e.g., Ex.1006, Brooks at 3:15-29, Ex.1010 at 3:7-
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
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`15 and 9:53-10:21.
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`36. E-cigarettes differ from combustible cigarettes in the way
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`aerosols are formed. In combustible cigarettes, the aerosol formation process is
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`driven by the heat created by the combustion of tobacco. An e-cigarette generally
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`is a device for electrically generating nicotine-based liquid aerosols for inhalation
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`by a smoker. The liquid usually contains nicotine and a carrier as well as any
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`desired flavoring or other ingredients. The e-cigarette generally therefore includes
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`a means to store the liquid, a means to create aerosol and/or vapor from the liquid,
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`and an inhalation means that enables a person to inhale the aerosols/vapor on
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`demand.
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`37. Well before 2006, there were several known means to store
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`liquid in vaporizers. Among the earliest and best-known means was to store and/or
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`transport liquid in porous/fibrous bodies positioned inside the device. See, e.g.,
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`Ex.1005, Whittemore at 1:53-2:18; Ex.1017, Hayward-Butt at 1:25-27 (disclosing
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`a “chamber containing fibrous absorbent material for the volatile liquid
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`analgesic”); Ex. 1018, Gilbert at 3:23-34 (disclosing a cartridge for an electronic
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`simulated cigarette that “may be composed of a porous, moisture-holding
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`substance such as felt or plastic sponge”).
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`NU MARK Ex.1003 p.19
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`38. Common
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`techniques for converting
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`liquid
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`into aerosols
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`included using heating and/or piezoelectric elements. These components can be
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`located in any part of the atomizer so as to contact liquid directly or indirectly. It
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`was also well known that these elements can be used independently or combined
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`together to convert liquid into aerosols. See, e.g., Ex.1010 at 3:62-4:33, 10:51-65;
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`Ex.1004 at Figs. 3-7. One very common method of creating aerosolized liquid
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`particles was to utilize heaters, with low thermal mass and sufficient capacity to
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`deliver the needed power, to rapidly vaporize the liquid. Such heaters were able to
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`rapidly reach temperatures that vaporized the immediately surrounding liquid
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`while the power is applied, and then rapidly cooled to stop the vaporization process
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`once the power was removed. See, e.g., Ex. 1006, Brooks at 5:38-62.
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`39.
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`It would also have been well-known to a skilled person that
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`heating elements came in different shapes, such as coils, straight wires or rods, thin
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`film wires, plates, etc. And, selecting any shape over another would have been an
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`obvious design choice. See, e.g., Ex.1004 at Figs. 3-7, Ex.1006 at 1:19-32, 2:9-17,
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`2:42-3:4, 13:19-32; Ex.1005 at Figs. 2-3.
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`40. Widespread knowledge about the materials and shapes of the
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`heating elements would have advantageously allowed a skilled person to design
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`and manufacture a low-cost and robust e-cigarette. Furthermore, a skilled person
`
`would have known that widely known orientation, location, and structure of these
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`
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`NU MARK Ex.1003 p.20
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`elements allowed most efficient design of an e-cigarette based on several criteria,
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`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`such as maximizing the contact of the heating or piezoelectric element with the
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`liquid material, maximizing efficiency of an e-cigarette, minimizing air flow
`
`obstruction, etc. Therefore, it would have been obvious to a skilled person to
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`replace, combine, orient, or locate them in any manner that suits a particular e-
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`cigarette design, and a skilled person would have recognized and found it obvious
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`that each of these could be selected, utilized, and applied with straightforward,
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`predictable results.
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`41. Heater coils were particularly well-understood in the art of
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`electronic vaporization devices, and were known to provide efficient, uniform
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`heating. See, e.g., Ex. 1011, Howell at 11:20-22 (“The wire was wrapped in a
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`fashion that produced close tight coils to insure good heat transfer to the tube.”);
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`see also Ex. 1006, Brooks at 1:64, 2:40-43, 3:4-6. It was similarly well-known to
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`apply this feature of heater coils by wrapping it around a porous material to
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`generate vapor or aerosol (whether for inhalation or other purposes). See Ex.1005,
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`Whittemore at 1:53-2:18; Ex. 1012, Smith at 20:36-40; Ex. 1013, Eberhard at 4:73-
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`75.
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`42.
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`It was also well known that the elements described above can
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`be easily controlled by standard, low-cost electronic circuits. It was standard
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`practice to use these elements with circuits coupled with simple electronic sensors,
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`NU MARK Ex.1003 p.21
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`such as pressure actuated switches, etc. See, e.g., Ex. 1006, Brooks at 9:51-62,
`
`Petition for Inter Partes Review of 8,365,742
`Ex.1003 (“Collins Decl.”)
`
`13:1-6; Ex.1010 at 6:8-11; Ex.1004 at 6:23-6:25. It was well-known that, for
`
`example, sensors can detect conditions such as when negative pressure is generated
`
`within the device by the act of inhalation. When the person places the e-cigarette
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`to his/her lips and inhales, it draws air into the device. The airflow creates a
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`pressure drop through the e-cigarette that is detected by the pressure sensor and
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`signals to the electronic circuit the need to power the piezoelectric or heating
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`elements and generate aerosol. See Ex. 1006, Brooks at 10:42-45. Further, it was
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`well-known that logic within the circuit can be applied to turn the power to the
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`aerosol generator on and off as desired. See, e.g., Ex. 1006, Brooks at 13:62-
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`14:34; Ex.1010 at 6:52-57; Ex.1004 at 6:55-59. A skilled person would have
`
`understood tha