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
`
`U.S. Patent No.: 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
`
`
`
`Inter Partes Review No. IPR2016-01532
`
`
`
`DECLARATION OF DR. ROBERT H. STURGES, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,365,742
`
`R.J. Reynolds Vapor
`IPR2016-01532
`R.J. Reynolds Vapor v. Fontem
`Exhibit 1012-00001
`
`

`
`TABLE OF CONTENTS
`
`
`
`I. 
`
`3. 
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`INTRODUCTION ........................................................................................... 1 
`A. 
`Engagement ........................................................................................... 1 
`B. 
`Background and Qualifications ............................................................. 1 
`C. 
`Compensation and Prior Testimony ...................................................... 2 
`D. 
`Information Considered ......................................................................... 3 
`LEGAL STANDARDS FOR PATENTABILITY .......................................... 3 
`II. 
`PERSON HAVING ORDINARY SKILL IN THE ART ............................... 5 
`III. 
`IV.  OVERVIEW OF THE ‘742 PATENT ............................................................ 6 
`V. 
`THE PRIOR ART - ‘311 PUBLICATION ..................................................... 7 
`VI.  GROUND OF UNPATENTABILITY ............................................................ 7 
`A. 
`Claim 2 .................................................................................................. 8 
`1. 
`“An electronic cigarette, comprising” ........................................ 8 
`2. 
`“a battery assembly and an atomizer assembly
`within a housing with the battery assembly
`electrically connected to the atomizer assembly” ....................... 8 
`“a liquid storage component in the housing” ............................ 11 
`“with the housing having one or more through-air-
`inlets” ........................................................................................ 12 
`“the atomizer assembly including a porous
`component supported by a frame having a run-
`through hole” ............................................................................. 12 
`“a heating wire wound on a part of the porous
`component in the path of air flowing through the
`run-through hole; and” .............................................................. 13 
`“the porous component substantially surrounded
`by the liquid storage component.” ............................................ 14 
`Claim 3 ................................................................................................ 16 
`1. 
`“An electronic cigarette, comprising” ...................................... 16 
`
`B. 
`
`i
`
`
`
`
`
`Exhibit 1012-00002
`
`

`
`
`
`2. 
`
`3. 
`
`4. 
`
`“a battery assembly and an atomizer assembly
`within a housing with the battery assembly
`electrically connected to the atomizer assembly” ..................... 16 
`“with the housing having one or more through-air-
`inlets and an outlet”................................................................... 19 
`“the atomizer assembly includes a frame having a
`run through hole, and a porous component between
`the frame and the outlet” ........................................................... 20 
`“a heating wire wound on a part of the porous
`component which is substantially aligned with the
`run-through hole; and” .............................................................. 21 
`“with the porous component in contact with a
`liquid supply in the housing.” ................................................... 22 
`VII.  CLAIMS 2 AND 3 ARE NOT LIMITED TO AN
`ELECTRONIC CIGARETTE THAT INCLUDES THE
`BATTERY ASSEMBLY AND THE ATOMIZER
`ASSEMBLY IN THE SAME SHELL .......................................................... 23 
`VIII.  THE ‘818 PARENT APPLICATION (WHICH PUBLISHED
`AS THE ‘311 PUBLICATION) TO THE ‘742 PATENT DOES
`NOT PROVIDE WRITTEN DESCRIPTION SUPPORT FOR
`BROAD CLAIMS 2 AND 3 ......................................................................... 24 
`IX.  CONCLUSION .............................................................................................. 34 
`
`
`5. 
`
`6. 
`
`ii
`
`
`
`
`
`Exhibit 1012-00003
`
`

`
`INTRODUCTION
`
`A. Engagement
`
`
`
`I.
`
`1.
`
`I have been retained by the law firm of Brinks Gilson & Lione on
`
`behalf of R.J. Reynolds Vapor Company to provide this Declaration concerning the
`
`technical subject matter relevant to the inter partes review petition concerning U.S.
`
`Patent No. 8,365,742 (“the ‘742 patent”; Exhibit 1001).1 I have been asked to
`
`render an opinion regarding the validity of claims 2 and 3 (the “challenged
`
`claims”).
`
`B.
`
`2.
`
`Background and Qualifications
`
`I am currently a Professor in the Departments of Mechanical and
`
`Industrial Systems Engineering at Virginia Polytechnic Institute (“Virginia Tech”).
`
`From 1987 to 1997, I was first an Assistant Professor and then later an Associate
`
`Professor in the Mechanical Engineering Department at Carnegie Mellon
`
`University. I have a combined Bachelor of Science and Master of Science degree
`
`in mechanical engineering from M.I.T. and a Ph.D. in mechanical engineering
`
`from Carnegie Mellon University.
`
`3.
`
`In my past work, I have extensively studied and designed various fluid
`
`power systems, including a robotic arm and robotic end effectors. In the latter, I
`
`1I refer to exhibit numbers that correspond to those I understand will be submitted
`
`with the Petition for Inter Partes Review.
`
`
`
`1
`
`Exhibit 1012-00004
`
`

`
`
`
`applied fluid “resistors” that rely on porous media to provide resistance to flow. I
`
`have also applied heat transfer fundamentals to design and build variations of
`
`commercial steam engines used in my undergraduate labs at Carnegie Mellon
`
`University and my graduate course in Sustainability at Virginia Tech. In addition,
`
`I have taught undergraduate courses focused on fundamental mechanics and the
`
`conservation of energy, including basic principles of fluid flow and heat transfer.
`
`4.
`
`Based on my background, experience, education and professional
`
`activities, I consider myself an expert in the fields of mechanical design,
`
`mechatronics, and manufacturing, including systems that employ heat, mass and
`
`fluid transfer.
`
`5. My Curriculum Vitae, including my publications and patents, is
`
`submitted herewith in Appendix A.
`
`C. Compensation and Prior Testimony
`
`6.
`
`I am being compensated at a rate of $400 per hour for my study and
`
`time in this matter. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and time in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the substance of
`
`my testimony.
`
`7.
`
`The list attached at Appendix B identifies my past expert
`
`engagements.
`
`
`
`2
`
`Exhibit 1012-00005
`
`

`
`D.
`
`Information Considered
`
`
`
`8. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered, among other things, the ‘742 patent and its
`
`prosecution history, as well as the record of the two prior IPRs involving the ‘742
`
`patent (IPR2015-00859 and IPR2015-01587), in addition to the prior art and other
`
`materials referred to herein.
`
`9.
`
`I may rely upon these materials and/or additional materials to rebut
`
`arguments raised by the patent owner.
`
`10.
`
`I reserve the right to supplement this Declaration in response to
`
`additional evidence that may come to light.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`
`11.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the ‘742 patent, I am relying upon certain legal principles that counsel
`
`has explained to me.
`
`12.
`
`It is my understanding that, to anticipate a claim under 35 U.S.C. §
`
`102, a prior art reference must teach every limitation of the claim.
`
`13.
`
`I have been advised that a patent’s claims are not entitled to an earlier
`
`priority date merely because the patentee claims priority. It is my understanding
`
`that the claims of a patent application are entitled to the benefit of the filing date of
`
`
`
`3
`
`Exhibit 1012-00006
`
`

`
`
`
`an earlier filed application only if the disclosure of the earlier application provides
`
`support for the claims of the later application, as required by the written
`
`description requirement of 35 U.S.C. § 112. I understand that the written
`
`description requirement is satisfied only if the disclosure of the prior application
`
`conveys with reasonable clarity to those skilled in the art that, as of the filing date
`
`of the prior application, the inventor was in possession of the invention claimed in
`
`the later application. I also understand that the prior application need not describe
`
`the later claimed subject matter in haec verba, i.e., by using the same words as the
`
`later filed claims, but instead need only convey to the person having ordinary skill
`
`in the art that the inventor was in possession of the later claimed invention.
`
`14.
`
`I understand that it is not sufficient for purposes of the written
`
`description requirement of § 112 that the disclosure, when combined with the
`
`knowledge of the art, would lead one to speculate about the modifications that the
`
`inventor might have envisioned, but failed to describe in the earlier application.
`
`That is because a purpose of the written description requirement is to ensure that
`
`the scope of the right to exclude, as set forth in the later filed claims, does not
`
`overreach the scope of the inventor’s contribution to the field of the art as
`
`described in the earlier filed patent application. Thus, I have been advised that
`
`entitlement to an earlier priority date does not extend to subject matter that is not
`
`described.
`
`
`
`4
`
`Exhibit 1012-00007
`
`

`
`
`
`III. PERSON HAVING ORDINARY SKILL IN THE ART
`
`15.
`
`I understand that the ‘742 patent must be reviewed through the eyes of
`
`a person having ordinary skill in the art (i.e., a “PHOSITA”). I understand that the
`
`PHOSITA is presumed to know the relevant prior art. I am advised that that
`
`factors that guide the determination of level of ordinary skill in the art may
`
`include: the education level of those working in the field, the sophistication of the
`
`technology, the types of problems encountered in the art, the prior art solutions to
`
`those problems, and the speed at which innovations are made may help establish
`
`the level of skill in the art.
`
`16.
`
`It is my opinion that the PHOSITA for the ‘742 patent is a person with
`
`at least the equivalent of a Bachelor’s degree in electrical engineering, mechanical
`
`engineering, or biomedical engineering or related fields, along with at least 5 years
`
`of experience designing electromechanical devices, including those involving
`
`circuits, fluid mechanics and heat transfer. I base my opinions on my review of the
`
`‘742 patent, the relevant prior art, including art disclosing electronic cigarettes that
`
`atomized a nicotine solution to deliver an aerosol to a user to simulate smoking,
`
`and my background in designing and developing systems that apply heat transfer
`
`and fluid mechanics.
`
`17. For purposes of this Declaration, unless otherwise noted, my
`
`statements and opinions below, such as those regarding the understanding of a
`
`
`
`5
`
`Exhibit 1012-00008
`
`

`
`
`
`PHOSITA generally (and specifically related to the prior art references,
`
`applications, and patents I analyzed herein), reflect the knowledge that existed as
`
`of the pertinent date of such item. As of all such dates and timeframes discussed
`
`herein, I possessed at least the level of skill of the PHOSITA.
`
`IV. OVERVIEW OF THE ‘742 PATENT
`
`18. The ‘742 patent is generally directed to an electronic cigarette. I have
`
`set forth below Figure 1 and an annotated Figure 1. Ex. 1001 at Fig. 1.
`
`
`
`19.
`
` The ‘742 patent discloses an electronic cigarette with the battery and
`
`atomizer located in shell (a) and the liquid to be atomized is located in a detachable
`
`cigarette holder shell (b). The “shell or housing (a) [] is hollow and integrally
`
`formed.” “The battery assembly connects with the atomizer assembly, and both
`
`are located in the shell.” The battery assembly may include battery 3, operating
`
`indicator 1, electronic circuit board 4, and airflow sensor 5, which are connected to
`
`
`
`6
`
`Exhibit 1012-00009
`
`

`
`
`
`the battery. Ex. 1001 at 2:30-42. The electronic cigarette also includes a cigarette
`
`bottle assembly. “[T]he cigarette bottle assembly includes a hollow cigarette
`
`holder shell (b), and a perforated component for liquid storage (9) inside the shell
`
`(b).” Id. at 3:49-51. “One end of the cigarette hold shell (b) plugs into the shell
`
`(a).” Id. at 3:57-58. When shell (b) is plugged into shell (a), the cigarette bottle
`
`assembly is detachably located in one end of shell (a). Id. at 2:35-36. The
`
`atomizer assembly 8 has a porous component that contacts the liquid storage 9 in
`
`the cigarette bottle assembly to achieve capillary transport of liquid from the
`
`cigarette bottle assembly to the atomizer assembly 8. Id. at 4:37-40. The liquid
`
`from the cigarette bottle assembly is heated and atomized in the atomizer assembly
`
`8. Id. at 4:9-26.
`
`V. THE PRIOR ART - ‘311 PUBLICATION
`
`20.
`
`I have analyzed U.S. Pat. Pub. No. 2009/0095311 (Ex. 1002; “’311
`
`publication”), entitled “Aerosol Electronic Cigarette,” which was published on
`
`April 16, 2009. The ‘311 publication is the publication that is associated with one
`
`of the parent patents of the ‘742 patent, namely, U.S. Pat. No. 8,156,944. Ex. 1015
`
`(“the ‘944 patent”).
`
`VI. GROUND OF UNPATENTABILITY
`
`21.
`
`It is my opinion that the ‘311 publication discloses each and every
`
`element of claims 2-3 of the ‘742 patent. As such, claims 2-3 are unpatentable
`
`
`
`7
`
`Exhibit 1012-00010
`
`

`
`
`
`under 35 U.S.C. § 102 on the ground that they are anticipated by the ‘311
`
`publication.
`
`22.
`
`I explain below how the ‘311 publication discloses each and every
`
`limitation of claims 2-3 of the ‘742 patent.
`
`A. Claim 2
`
`1.
`“An electronic cigarette, comprising”
`23. To the extent that the preamble is considered a claim limitation, the
`
`‘311 publication discloses an electronic cigarette.
`
`Claim 2
`An electronic
`cigarette, comprising:
`
`The ‘311 publication
`“The present invention relates to an electronic cigarette, in
`particular, an aerosol electronic cigarette that doesn't
`contain tar but nicotine.” Ex. 1002 at para. [0001], ll. 1-3.
`
`“FIG. 1 is the side section view of the electronic cigarette
`of this invention.” Ex. 1002 at para. [0038], ll. 1-2.
`
`
`
`2.
`
`“a battery assembly and an atomizer assembly within
`a housing with the battery assembly electrically
`connected to the atomizer assembly”
`
`24.
`
`I understand that the district court in prior proceedings involving the
`
`‘742 patent ruled that the term “housing” “need not be a ‘one-piece shell.’” Ex.
`
`1014 at 8-10. It is also my understanding that, in an inter partes review
`
`proceeding, the terms of the challenged claims should be given their broadest
`
`reasonable interpretation (“BRI”), as understood by a PHOSITA and consistent
`
`
`
`8
`
`Exhibit 1012-00011
`
`

`
`
`
`with the disclosure and prosecution history of the ‘742 patent. I understand that
`
`this standard is different than the Phillips standard applicable in district court, and
`
`thus claims, if warranted, may be construed more broadly under the BRI standard
`
`than under the Phillips standard. In light of the foregoing, for purposes of my
`
`analysis, and applying the BRI standard applicable here, I have interpreted the term
`
`“housing” as used in the claims of the ‘742 patent as not limited to a one-piece
`
`shell and thus claim 2 (and claim 3) is sufficiently broad to encompass an
`
`electronic cigarette where the battery assembly and the atomizer assembly are
`
`located in either the same or separate shells of a housing.
`
`25. The ‘311 publication discloses a “battery assembly,” which may
`
`include “the battery, and the operating indicator (1), electronic circuit board (4),
`
`and airflow sensor (5), which are connected with the battery.” Ex 1002 at para.
`
`[0064], ll. 1-4. The ‘311 publication also discloses an “atomizer assembly,” which
`
`may include “an atomizer (8), which includes a porous component (81) and a
`
`heating rod (82).” Id. at para. [0066], ll. 1-3. The “battery assembly” and
`
`“atomizer assembly” are located within the same “shell (a)” of a housing. Id. at
`
`para. [0063], ll. 5-6; para. [0064], ll. 1-4; [0066], ll. 1-3. The battery assembly is
`
`
`
`9
`
`Exhibit 1012-00012
`
`

`
`
`
`electrically connected to the atomizer assembly. Id. at para. [0071], ll. 15-19; Figs.
`
`20 and 21. 2
`
`Claim 2
`a battery assembly
`and an atomizer
`assembly within a
`housing with the
`battery assembly
`electrically connected
`to the atomizer
`assembly;
`
`The ‘311 publication
`
`Ex. 1002 at Fig. 1.
`
`
`
`
`
`Id. at Fig. 20.
`
`“The purpose of this invention is fulfilled with the
`following technical solution: an aerosol electronic
`cigarette includes a battery assembly, an atomizer
`assembly …, and also includes a shell.... The said battery
`assembly connects with the said atomizer assembly …” Id.
`at para. [0008], ll. 1-7; Figs. 1-2, 20-21.
`
`
`2 I have used the figures from the ‘742 patent, which are essentially identical to the
`
`figures from the parent ‘311 publication, because the figures from the ‘311
`
`publication, though legible, are of relatively poor quality.
`
`
`
`10
`
`Exhibit 1012-00013
`
`

`
`
`
`“As shown in FIG. 1-10, this utility model provides an
`aerosol electronic cigarette, which includes a battery
`assembly, an atomizer assembly and a cigarette bottle
`assembly, and also includes a shell (a) …” Id. at para.
`[0063], ll. 1-5.
`
`“In this specific embodiment, the battery assembly
`includes the battery [3], and the operating indicator (1),
`electronic circuit board (4), and airflow sensor (5), which
`are connected with the battery.” Id. at para. [0064], ll. 1-4.
`
`“As shown in FIG. 5-8, the atomizer assembly is an
`atomizer (8), which includes a porous component (81) and
`a heating rod (82).” Id. at para. [0066], ll. 1-3.
`
`“Thus, the rechargeable battery (3) starts to electrify the
`electric heating rod (82) inside the atomizer (8).” Id. at
`para. [0071], ll. 15-19.
`
`
`
`3.
`“a liquid storage component in the housing”
`26. The ‘311 publication discloses a liquid storage component (“a
`
`perforated component for liquid storage (9)”) that is located in the housing (“shell
`
`(a)”) when the cigarette holder shell (b) is plugged into shell (a). Ex. 1002 at para.
`
`[0070], ll. 1-3; Figs. 1, 3-4.
`
`Claim 2
`a liquid storage
`component in the
`housing;
`
`The ‘311 publication
`
`
`Ex. 1002 at Fig. 1.
`
`
`11
`
`
`
`
`
`Exhibit 1012-00014
`
`

`
`“As shown in 3 and 4, the cigarette bottle assembly
`includes a hollow cigarette holder shell (b), and a
`perforated component for liquid storage (9) inside the shell
`(b).” Id. at para. [0070], ll. 1-3; Figs. 1, 3-4.
`
`
`
`
`
`4.
`
`“with the housing having one or more through-air-
`inlets”
`27. The ‘311 publication discloses the housing (“shell (a)”) having one or
`
`more through-air-inlets (“through-air-inlets (a1)”). Ex. 1002 at para. [0063], l. 9;
`
`Figs. 1-2, 19.
`
`Claim 2
`with the housing
`having one or more
`through-air-inlets;
`
`
`
`The ‘311 publication
`
`
`
`
`
`Ex. 1002 at Fig. 1.
`
`“The shell has through-air-inlets (a1).” Id. at para. [0063],
`l. 9; Figs. 1-2, 19.
`
`5.
`
`“the atomizer assembly including a porous
`component supported by a frame having a run-
`through hole”
`28. The ‘311 publication discloses the atomizer assembly including a
`
`porous component (“the porous component (81)”) supported by a frame (“a frame
`
`(82)”) having a run-through hole (“a run-through hole (821)”). Ex. 1002 at para.
`
`[0078], ll. 1-6; Figs. 17-18.
`
`
`
`12
`
`Exhibit 1012-00015
`
`

`
`The ‘311 publication
`
`
`
`Claim 2
`the atomizer
`assembly including a
`porous component
`supported by a frame
`having a run-through
`hole;
`
`
`
`
`Ex. 1002 at Figs. 17-18.
`
`“In the fifth preferred embodiment of this utility model, as
`shown in FIGS. 17 and 18, the atomizer assembly is an
`atomizer (8), which includes a frame (82), the porous
`component (81) set on the frame (82), and the heating wire
`(83) wound on the porous component (81). The frame (82)
`has a run-through hole (821) on it.” Id. at para. [0078], ll.
`1-6.
`
`
`
`6.
`
`“a heating wire wound on a part of the porous
`component in the path of air flowing through the run-
`through hole; and”
`29. The ‘311 publication discloses a heating wire (“heating wire (83)”)
`
`wound on a part of the porous component (“the porous component (81)”) in the
`
`path of air flowing through the run-through hole (“a run-through hole (821)”). Ex.
`
`1002 at para. [0078], ll. 6-8; Figs. 17-18.
`
`Claim 2
`
`The ‘311 publication
`
`
`
`13
`
`Exhibit 1012-00016
`
`

`
`
`
`a heating wire wound
`on a part of the
`porous component in
`the path of air
`flowing through the
`run-through hole; and
`
`
`
`
`Ex. 1002 at Figs. 17-18.
`
`“The porous component (81) is wound with heating wire
`(83) in the part that is on the side in the axial direction of
`the run-through hole (821).” Id. at para. [0078], ll. 6-8;
`Figs. 17-18.
`
`
`
`7.
`
`“the porous component substantially surrounded by
`the liquid storage component.”
`30. The specification of the ‘742 patent does not expressly define what is
`
`meant by the porous component “substantially surrounded” by the liquid storage
`
`component. I note that this limitation was added during the prosecution of the ‘742
`
`patent. Ex. 1010 at 4. However, Figure 1 of the ‘742 patent (a portion of which is
`
`annotated below) illustrates that the porous component of the atomizer has a
`
`protuberance or bulge 812 that is in physical contact with liquid storage 9 of the
`
`cigarette bottle assembly to permit liquid transfer from the liquid storage to the
`
`porous component. Ex. 1001 at Fig. 1; 3:16-19.
`
`
`
`14
`
`Exhibit 1012-00017
`
`

`
`
`
`
`
`31. For purposes of my analysis, and applying the BRI claim construction
`
`standard applicable to these proceedings, I have construed the limitation “porous
`
`component substantially surrounded by the liquid storage component” to
`
`encompass the above-illustrated structure described in Figure 1 the ‘742 patent.
`
`32. Figure 1 of the ‘311 publication discloses essentially the same
`
`configuration as illustrated in Figure 1 of the ‘742 patent for the porous component
`
`“substantially surrounded” limitation. The porous component (“the porous
`
`component (81)”) is thus substantially surrounded by the liquid storage component
`
`(“a perforated component for liquid storage (9)”). Ex. 1002 at para. [0071], ll. 1-4;
`
`[0078], ll. 8-10; Figs. 1-2, 17-19.
`
`Claim 2
`the porous component
`substantially
`surrounded by the
`liquid storage
`component.
`
`The ‘311 publication
`
`
`
`
`
`Ex. 1002 at Fig. 1.
`
`“As shown in FIG. 1-9, one end of the porous component
`(81) lies against one end surface of the said perforated
`
`
`
`15
`
`Exhibit 1012-00018
`
`

`
`
`
`component for liquid storage (9), and contacts the
`perforated component for liquid storage (9).” Id. at para.
`[0071], ll. 1-4; Figs. 1-2, 17-19.
`
`“One end of the porous component (81) fits with the
`cigarette bottle assembly.” Id. at para. [0078], ll. 8-10.
`
`
`B. Claim 3
`1.
`“An electronic cigarette, comprising”
` To the extent that the preamble is considered a claim limitation, the
`
`33.
`
`‘311 publication discloses an electronic cigarette.
`
`Claim 3
`An electronic
`cigarette, comprising:
`
`The ‘311 publication
`“The present invention relates to an electronic cigarette, in
`particular, an aerosol electronic cigarette that doesn't
`contain tar but nicotine.” Ex. 1002 at para. [0001], ll. 1-3.
`
`“FIG. 1 is the side section view of the electronic cigarette
`of this invention.” Ex. 1002 at para. [0038], ll. 1-2.
`
`
`
`2.
`
`“a battery assembly and an atomizer assembly within
`a housing with the battery assembly electrically
`connected to the atomizer assembly”
`34. As noted above, for purposes of my analysis, I have interpreted the
`
`term “housing” as used in the claims of the ‘742 patent to encompass a unitary
`
`shell, i.e., a one-piece shell, or multiple shells, and such that the battery assembly
`
`and atomizer assembly may be located in the same or separate shells of the
`
`housing.
`
`
`
`16
`
`Exhibit 1012-00019
`
`

`
`
`
`35. The ‘311 publication discloses a “battery assembly” and an “atomizer
`
`assembly” within a housing. Ex 1002 at para. [0063], ll. 1-5. The battery
`
`assembly may include a battery, an operating indicator (1), an electronic circuit
`
`board (4), and an airflow sensor (5), which may be connected with the battery and
`
`are located in a housing, shell (a). Id. at para. [0063], ll. 1-6; para. [0064], ll. 1-4.
`
`The atomizer assembly may include “an atomizer (8), which includes a porous
`
`component (81) and a heating rod (82)” that are also located within the housing,
`
`“shell (a).” Id. at para. [0063], ll. 1-6; [0066], ll. 1-3. As shown in Figs. 20 and
`
`21, the battery assembly is electrically connected to the atomizer assembly. Id. at
`
`para. [0071], ll. 15-19; Figs. 20 and 21.
`
`Claim 3
`a battery assembly
`and an atomizer
`assembly within a
`housing with the
`battery assembly
`electrically connected
`to the atomizer
`assembly;
`
`The ‘311 publication
`
`Ex. 1002 at Fig. 1.
`
`
`
`
`
`17
`
`Exhibit 1012-00020
`
`

`
`
`
`
`
`Id. at Fig. 20.
`
`“The purpose of this invention is fulfilled with the
`following technical solution: an aerosol electronic
`cigarette includes a battery assembly, an atomizer
`assembly …, and also includes a shell.... The said battery
`assembly connects with the said atomizer assembly …” Id.
`at para. [0008], ll. 1-7; Figs. 1-2, 20-21.
`
`“As shown in FIG. 1-10, this utility model provides an
`aerosol electronic cigarette, which includes a battery
`assembly, an atomizer assembly and a cigarette bottle
`assembly, and also includes a shell (a) …” Id. at para.
`[0063], ll. 1-5.
`
`“In this specific embodiment, the battery assembly
`includes the battery, and the operating indicator (1),
`electronic circuit board (4), and airflow sensor (5), which
`are connected with the battery.” Id. at para. [0064], ll. 1-4.
`
`“As shown in FIG. 5-8, the atomizer assembly is an
`atomizer (8), which includes a porous component (81) and
`a heating rod (82).” Id. at para. [0066], ll. 1-3.
`
`“Thus, the rechargeable battery (3) starts to electrify the
`electric heating rod (82) inside the atomizer (8).” Id. at
`para. [0071], ll. 15-19.
`
`
`
`18
`
`Exhibit 1012-00021
`
`

`
`
`
`3.
`
`
`“with the housing having one or more through-air-
`inlets and an outlet”
`36. The ‘311 publication discloses the housing comprising “shell (a)” and
`
`“cigarette holder shell (b)” having one or more through-air-inlets (“through-air-
`
`inlets (a1)”) and an outlet (“an air channel (b1).”) Ex. 1002 at para. [0063], l. 9;
`
`para. [0070], ll. 12-14; Figs. 1-2, 19. The air flows into through-air-inlets (a1)
`
`through the electronic cigarette and out air channel (b1). Id. at para. [0071], ll. 19-
`
`36.
`
`Claim 3
`with the housing
`having one or more
`through-air-inlets and
`an outlet;
`
`The ‘311 publication
`
`Ex. 1002 at Fig. 1.
`
`
`
`
`
`“The shell has through-air-inlets (a1).” Id. at para. [0063],
`l. 9; Figs. 1-2, 19.
`
`“On one end surface of the cigarette holder shell (b), there
`is an air channel (b1) extending inward. The air channel
`(b1) is located in the center on the surface of one end of
`shell (b).” Id. at para. [0070], ll. 12-14; Figs. 1-2, 19.
`
`“The air enters the normal pressure cavity through the air
`inlet (a1), passes the check valve (7) via the airflow
`passage in the airflow sensor (5), and flows to the negative
`pressure cavity (83) in the atomizer (8). Since the negative
`pressure cavity (83) provides the negative pressure
`compared with the outside, the air flow sprays into it,
`
`
`
`19
`
`Exhibit 1012-00022
`
`

`
`
`
`bringing the cigarette liquid from the porous component
`(81) to spray into the negative pressure cavity (83) in the
`form of fine drips. In the meantime, the electric heating
`rod (82) is electrified by the rechargeable battery (3) under
`the control of electronic circuit board (4), to heat the fine
`drips for atomization. After atomization, the big-diameter
`fine drips are re-absorbed by the porous component (81)
`under the action of vortex, while the small-diameter fine
`drips are suspended in the airflow to form gasoloid, which
`is discharged through the negative pressure cavity (83) and
`run-through hole (813), flows into the cigarette holder
`shell (b) of the cigarette bottle assembly, and is absorbed
`by the air channel (b1).” Id. at para. [0071], ll. 19-36
`
`
`
`4.
`
`“the atomizer assembly includes a frame having a run
`through hole, and a porous component between the
`frame and the outlet”
`
`37. The ‘311 publication discloses the atomizer assembly includes a
`
`frame (“a frame (82)”) having a run through hole (“a run-through hole (821)”), and
`
`a porous component (“the porous component (81)”) between the frame (“a frame
`
`(82)”) and the outlet (“an air channel (b1)”). Ex. 1002 at para. [0078], ll. 1-6; Figs.
`
`The ‘311 publication
`
`17-18.
`
`Claim 3
`the atomizer
`assembly includes a
`frame having a run
`through hole, and a
`porous component
`between the frame
`and the outlet;
`
`
`Ex. 1002 at Figs. 17-18.
`
`20
`
`
`
`
`
`Exhibit 1012-00023
`
`

`
`
`“In the fifth preferred embodiment of this utility model, as
`shown in FIGS. 17 and 18, the atomizer assembly is an
`atomizer (8), which includes a frame (82), the porous
`component (81) set on the frame (82), and the heating wire
`(83) wound on the porous component (81). The frame (82)
`has a run-through hole (821) on it.” Id. at para. [0078], ll.
`1-6.
`
`
`
`
`
`Id. at Fig. 1.
`
`
`
`
`
`5.
`
`“a heating wire wound on a part of the porous
`component which is substantially aligned with the
`run-through hole; and”
`38. The ‘311 publication discloses a heating wire (“heating wire (83)”)
`
`wound on a part of the porous component (“the porous component (81)”) which is
`
`substantially aligned with the run-through hole (“a run-through hole (821)”). Ex.
`
`1002 at para. [0078], ll. 6-8; Figs. 17-18.
`
`The ‘311 publication
`
`Claim 3
`a heating wire wound
`on a part of the
`porous component
`which is substantially
`aligned with the run-
`through hole; and
`
`
`
`21
`
`Exhibit 1012-00024
`
`

`
`
`
`
`Ex. 1002 at Figs. 17-18.
`
`“The porous component (81) is wound with heating wire
`(83) in the part that is on the side in the axial direction of
`the run-through hole (821).” Id. at para. [0078], ll. 6-8;
`Figs. 17-18.
`
`
`
`6.
`
`“with the porous component in contact with a liquid
`supply in the housing.”
`39. The ‘311 publication discloses the porous component (“the porous
`
`component (81)”) in contact with a liquid supply (“a perforated component for
`
`liquid storage (9)”) in the housing (“shell (a)”). Ex. 1002 at para. [0071], ll. 1-4;
`
`[0078], ll. 8-10; Figs. 1-2, 17-19.
`
`Claim 3
`with the porous
`component in contact
`with a liquid supply
`in the housing.
`
`The ‘311 publication
`“As shown in FIG. 1-9, one end of the porous component
`(81) lies against one end surface of the said perforated
`component for liquid storage (9), and contacts the
`perforated component for liquid storage (9).” Ex. 1002 at
`para. [0071], ll. 1-4; Figs. 1-2, 17-19.
`
`
`
`Id. at Fig. 1.
`
`“One end of the porous component (81) fits with the
`cigarette bottle assembly.” Id. at para. [0078], ll. 8-10.
`
`
`
`
`
`22
`
`Exhibit 1012-00025
`
`

`
`
`
`VII. CLAIMS 2 AND 3 ARE NOT LIMITED TO AN ELECTRONIC
`CIGARETTE THAT INCLUDES THE BATTERY ASSEMBLY AND
`THE ATOMIZER ASSEMBLY IN THE SAME SHELL
`40.
`
` Applying the BRI claim construction standard applicable here, claims
`
`2 and 3 of the ‘742 patent require “a battery assembly and an atomizer assembly
`
`within a housing,” but neither claim requires that the battery assembly and the
`
`atomizer assembly are located in the same shell, although claims 2 and 3 do not
`
`exclude such a configuration. In other words, claims 2 and 3 broadly encompass
`
`an electronic cigarette in which the battery assembly and the atomizer assembly
`
`may be in the same or separate shells.
`
`41.
`
`I understand that in the complaint filed on April 4, 2016 in the Central
`
`District of California (Ex. 1016), the Patent Owner has all