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 IPR2016-01532
`Patent No. 8,365,742
`
`______________________________________________________________
`
`DECLARATION OF RICHARD MEYST IN SUPPORT OF
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 1 of 34
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`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`______________________________________________________________
`
`DECLARATION OF RICHARD MEYST IN SUPPORT OF
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 1 of 34
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`I, Richard Meyst, declare as follows:
`
`
`
`1.
`
`I am currently the President and Chief Executive Officer of Fallbrook
`
`Engineering, Inc. I am an engineer and consultant in the field of electromechanical
`
`devices, including medical devices. A copy of my CV, which includes, among
`
`other things, my academic credentials and my employment history, is attached as
`
`Exhibit A.
`
`2.
`
`I have been retained by Patent Owner Fontem Holdings 1 B.V. as an
`
`expert witness in the above-captioned proceeding. I am being compensated for the
`
`time I spend on this proceeding at a rate of $425 per hour. My field of expertise in
`
`this matter is electromechanical and medical devices. This Declaration is based
`
`upon my knowledge, skill, experience, training, and education in my field of
`
`expertise, and upon information reviewed in connection with my retention as an
`
`expert witness in this matter.
`
`3.
`
`I received a M.S. (1972) and B.S. (1971) in mechanical engineering
`
`from the University of Wisconsin, Madison. My undergraduate academic work
`
`focused on design, manufacturing methods, fluid mechanics, and heat transfer. My
`
`graduate academic focus was on computer-based automatic controls of systems
`
`and my Master’s thesis was on the concept development, design, fabrication, and
`
`testing of a prototype bench-top
`
`implantable mechanical human heart.
`
`
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`1
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`Additionally, I have participated in industry seminars and training programs
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`covering design of experiments, statistical analysis, biocompatibility testing,
`
`sterilization method selection and validation, design of plastic parts, design for
`
`manufacturability, package design and testing, cellular therapy, and many others.
`
`4.
`
`As an engineer, designer, consultant, program manager and
`
`entrepreneur at Fallbrook Engineering, Inc., I have been involved in the advanced
`
`design and development of a wide range of medical technology products for the
`
`healthcare industry for more than 25 years. Prior to 1989 when I became a partner
`
`in Fallbrook Engineering, I held various engineering and management positions at
`
`healthcare, medical device, and consumer product companies, including USCI (a
`
`division of CR Bard, Inc.), Fenwal (a division of Baxter Travenol Laboratories),
`
`Oak Communication, Imed Corp., a division of Warner Lambert, and Diatek Corp.
`
`5.
`
`During my 40+ year professional career, I have focused on
`
`electromechanical devices and related technologies requiring expertise in design,
`
`fluid mechanics, thermodynamics, heat transfer, electronic power sources, circuit
`
`design and fabrication, sensors, manufacturing technologies, and other areas of
`
`engineering design and manufacturing methods. Based on my experience, I have
`
`developed extensive knowledge in medical product design and development,
`
`product prototyping, design verification and validation, production startup,
`
`manufacturing engineering, risk analysis, and strategic planning. In addition to
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`2
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`doing engineering work, my responsibilities have included running a medical
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`design and development consulting firm which includes assembling and managing
`
`technical teams to develop new medical, consumer, industrial, and professional
`
`products.
`
`6.
`
`I have also been a Principal Investigator on several NIH SBIR grants
`
`from the National Heart, Lung, and Blood Institute developing a device for the
`
`improved collection of Umbilical Cord Blood Stem Cells. I have served on the
`
`Board of Directors for the Society of Plastics Engineers/Medical Plastics Division
`
`and am a long time member. I am a member of the American Association of
`
`Blood Banks, the Association for the Advancement of Medical Instrumentation,
`
`the San Diego Regulatory Affairs Network, the American Association for Clinical
`
`Chemistry, and the American Filtration & Separation Society.
`
`7.
`
`I have also been a long-time member of the Medical Device Steering
`
`Committee of BIOCOM, the largest regional life science association in the world.
`
`I was recently a juror in the annual Medical Design Excellence Awards
`
`competition, the premier awards program for the medical technology community,
`
`as well as a judge in the San Diego CONNECT capital competition for startup
`
`companies. I am also an experienced inventor and innovator. My inventions have
`
`been awarded 16 U.S. Patents, and I have applications pending. I have been an
`
`invited speaker and have presented talks at numerous scientific and medical
`
`3
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`industry meetings. Exhibit A includes a list of my patents, publications and
`
`presentations, and professional associations.
`
`8.
`
`I have also served as an independent technical expert witness or
`
`consultant relating to numerous intellectual property and patent litigations, product
`
`failure analyses, analyses of the use and misuse of various medical devices,
`
`development contract disputes, and medical product liability matters. A list of my
`
`expert assignments within the past four years appears in Exhibit A.
`
`9.
`
`I have reviewed the specification, claims, and file history of U.S.
`
`Patent No. 8,365,742 (the “’742 patent”). I have also reviewed the Petition for
`
`Inter Partes Review filed by Petitioner R.J. Reynolds Vapor Company in this
`
`matter (Paper 1), and related exhibits, including the declaration of Petitioner’s
`
`expert, Dr. Sturges (the “Sturges Report”). I have paid particular attention to the
`
`exhibits that are discussed in this Declaration.
`
`The ’742 Patent Claims 2 and 3
`
`10. The ’742 patent includes claims 2 and 3 that require “a battery
`
`assembly and an atomizer assembly within a housing” as follows:
`
`2.
`
`An electronic cigarette, comprising:
`
`a battery assembly and an atomizer assembly within a
`
`housing with the battery assembly electrically connected to the
`
`atomizer assembly;
`
`4
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`a liquid storage component in the housing;
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`with the housing having one or more through-air-inlets;
`
`. . . .
`
`3.
`
`An electronic cigarette, comprising:
`
`a battery assembly and an atomizer assembly within a
`
`housing with the battery assembly electrically connected to the
`
`atomizer assembly;
`
`with the housing having one or more through-air-inlets
`
`and an outlet;
`
`. . .
`
`
`
`and with the porous component in contact with a liquid
`
`
`
`supply in the housing.
`
`Ex. 1001, col. 6, lines 27-52.
`
`The ’742 Patent’s Priority Claim
`
`11.
`
`It is my understanding that the ᾽742 patent issued on February 5, 2013
`
`from U.S. Application No. 13/079,937 (the “᾽937 application”), which was filed on
`
`April 5, 2011. The ᾽937 application is a divisional of U.S. Application No.
`
`12/226,818 (the “᾽818 application”), the national phase of Application No.
`
`PCT/CN2007/001575 filed on May 15, 2007, which claims the benefit of priority
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`to Chinese Patent Application No. 200620090805.0 (“CN ’805”) filed on May 16,
`
`2006.
`
`12.
`
`It is my understanding that the ’818 application is the national phase
`
`of Application No. PCT/CN2007/001575, and the ’818 application’s effective
`
`filing date is the date the PCT was filed on May 15, 2007.
`
`Level Of Ordinary Skill In The Art
`
`13. To assess the level of ordinary skill in the art, I understand that one
`
`may consider such factors as: (1) the educational level of the inventor; (2) type of
`
`problems encountered in the art; (3) prior art solutions to those problems; (4)
`
`rapidity with which innovations are made; (5) sophistication of the technology; and
`
`(6) educational level of active workers in the field.
`
`14.
`
`I understand that the relevant time for assessing the level of skill in
`
`the art is the earliest time of filing of an application supporting the claimed
`
`inventions, which in this case for the ᾽742 patent is May 16, 2006, the filing date of
`
`the Chinese priority application, CN ’805. The relevant time for the filing date of
`
`the ’818 application is May 15, 2007. My opinion regarding the level of skill in
`
`the art would be the same on either date for the purposes of this Declaration.
`
`15. As used herein “a skilled person,” “one skilled in the art,” and similar
`
`variations of those terms refer to a person of ordinary skill in the art at the time of
`
`the inventions of the ᾽742 patent.
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`16.
`
`In forming my opinions, I have considered the issues from the
`
`perspective of a person of ordinary skill in the art at the time of the inventions of
`
`the ᾽742 patent, which is presumed to be May 16, 2006. My opinions are the same
`
`for the filing date of the ’818 application on May 15, 2007.
`
`17. As used herein, a person of ordinary skill in the art at the time of the
`
`inventions of the ᾽742 patent would have a mechanical or electrical engineering
`
`degree, industrial design degree, or a similar technical degree, or equivalent work
`
`experience, and 5-10 years of working in the area of electromechanical devices,
`
`including medical devices.
`
`18.
`
`I understand that Petitioner’s expert, Dr. Sturges, asserts that a person
`
`of ordinary skill in the art “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.” Sturges Report, Ex. 1012, ¶ 16. My opinions as described below
`
`are the same under Dr. Sturges’ definition of what constitutes a person of ordinary
`
`skill in the art.
`
`Claim Construction
`
`19.
`
`I understand that claim terms are generally given their ordinary and
`
`customary meaning as understood by a person of ordinary skill in the art at the
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`time of the invention when read in the context of the specification and prosecution
`
`history. I also understand that in the context of a proceeding in front of the Board,
`
`a claim is given the broadest reasonable construction in light of the specification. I
`
`further understand that extrinsic evidence such as expert and inventor testimony,
`
`dictionaries, and learned treatises can help determine the meaning of claim terms,
`
`although that evidence is less significant than the claims, specification, and
`
`prosecution history.
`
`20.
`
`It is also my understanding that claims are to be interpreted from the
`
`perspective of a person of ordinary skill in the relevant art at the time of invention,
`
`which is set forth above.
`
`21.
`
`I have reviewed the claims of the ’742 patent and based on the claim
`
`language, specification, prosecution history, and extrinsic evidence, I describe my
`
`opinions below as to how a person of ordinary skill in the art at the time of the
`
`invention would have interpreted the term “housing.”
`
`22.
`
`Independent claims 2 and 3 recite a “housing.” I understand the
`
`district court in Fontem Ventures, B.V., et al. v. NJOY, Inc., et al., CV 14-1645-
`
`GW previously held that the term “housing” in the ’742 patent “need not be
`
`construed, other than to specify that it need not be a ‘one-piece shell.’” Rulings On
`
`Claim Construction, Ex. 1014, p. 11. Petitioner and its expert agree that the
`
`“housing” as used in claims 2 and 3 is not limited to a one-piece shell. Petition, p.
`
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`20; Sturges Report, Ex. 1012, ¶ 24. I agree that the “housing” of the ’742 patent
`
`claims is not limited to a one-piece shell and may be formed from more than one
`
`piece. In my opinion, however, one skilled in the art would understand that the
`
`term “housing” needs no construction, or in the alternative, should be construed as
`
`“a casing.”
`
`
`
`23.
`
`In my opinion, the claims and specification of the ᾿742 patent support
`
`my proposed construction of the term housing. Claims 2 and 3 of the ᾿742 patent
`
`recite a “housing” that may be formed from more than one piece of the casing.
`
`Claim 2 requires an electronic cigarette comprising “a battery assembly and an
`
`atomizer assembly within a housing . . . a liquid storage component in the
`
`housing; with the housing having one or more through-air-inlets . . . .” Claim 3
`
`requires an electronic cigarette comprising “a battery assembly and an atomizer
`
`assembly within a housing . . . with the housing having one or more through-air-
`
`inlets and an outlet . . . and with the porous component in contact with a liquid
`
`supply in the housing.” ᾿742 patent, Ex. 1001, col. 6, lines 27-52. As such, the
`
`claimed “housing” requires the casing that protects the internal components of the
`
`electronic cigarette and contains the inlets and outlet (claim 3).
`
`24. The figures of the ’742 patent depict the housing as a casing made of
`
`more than one piece that protects the internal components of the electronic
`
`cigarette. Figure 1 of the ’742 patent (reproduced and annotated below) shows the
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`housing, shell (a) and (b), of the electronic cigarette encasing the internal
`
`components, such as the battery assembly, atomizer assembly, and liquid storage
`
`component. ᾿742 patent, Ex. 1001, p. 4 (Figure 1). See also ᾿742 patent, Ex. 1001,
`
`p. 8 (Figure 19).
`
`
`
`25.
`
` And the ’742 patent specification describes the housing as a casing
`
`for the internal components of the electronic cigarette. The specification states
`
`“[t]he battery assembly connects with the atomizer assembly and both are located
`
`in the shell.” ᾿742 patent, Ex. 1001, col. 2, lines 33-35. The specification further
`
`describes that “[o]ne end of the cigarette holder shell (b) plugs into the shell (a).”
`
`᾿742 patent, Ex. 1001, col. 3, lines 57-58.
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`26.
`
`It
`
`is my understanding
`
`that Webster’s defines “housing” as
`
`“something that covers and protects: as a case or enclosure (as for a mechanical
`
`part or an instrument).” Merriam-Webster’s Collegiate Dictionary, Ex. 2002, p. 4.
`
`This definition supports my proposed construction. For the above reasons, it is my
`
`opinion that the term “housing” does not require construction, or in the alternative,
`
`means “a casing.”
`
`Ground 1
`
`27.
`
`I understand
`
`that Petitioner proposes a single ground of
`
`unpatentability: that claims 2 and 3 of the ’742 patent are unpatentable under (pre-
`
`AIA) 35 U.S.C. § 102 as anticipated by U.S. Patent Application Publication No.
`
`2009/0095311 (“’311 publication”). Petition, p. 21. It is my understanding that
`
`the ’311 publication is the publication of U.S. Patent Application No. 12/226,818
`
`(the “’818 application”), a priority application to the ’742 patent. Ex. 1002.
`
`28.
`
`I also understand the Petition is based on the assertion that the ’742
`
`patent is not entitled to priority to the ’818 application because the disclosure of
`
`the ’818 application does not meet the written description requirement of 35 U.S.C.
`
`§ 112 for “a battery assembly and an atomizer assembly within a housing” as
`
`recited in the ᾽742 patent claims. Petition, pp. 16-17. Therefore, I understand that
`
`if the ’818 application provides adequate written description for the claimed
`
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`limitation of the ᾿742 patent, “a battery assembly and an atomizer assembly within
`
`a housing,” then the claims are not anticipated by the ’311 publication.
`
`29.
`
`In preparing and forming my opinions set forth in this Declaration, I
`
`understand that a patent’s specification must contain a written description of the
`
`claimed invention. I also understand that an adequate written description is
`
`provided if the application reasonably conveys to those skilled in the art through
`
`express, implicit, or inherent disclosures that the inventor had possession of the
`
`claimed subject matter as of the relevant filing date.
`
`30.
`
`I also understand that if a patent application sets out problems in the
`
`prior art, that the patent claims do not have to address all of the problems. I
`
`understand that the patent claims can address one or more problems as long as they
`
`satisfy the written description requirement.
`
`31.
`
`I further understand that the use of “the invention” or “the present
`
`invention” can limit an application’s written description, but is not limiting where
`
`other portions of the intrinsic evidence do not support applying the limitation to the
`
`entire patent.
`
`The ’818 Application Satisfies The Written Description Requirement For The
`Claims Of The ᾽742 Patent
`
`32.
`
`In my opinion, the written description of the ’818 application would
`
`have reasonably conveyed to one of ordinary skill in the art at the time the ’818
`
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`application was filed that the inventor had possession of the claimed limitation, “a
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`battery assembly and an atomizer assembly within a housing.”
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`33.
`
`I disagree with Petitioner’s and its expert’s allegation that the ’818
`
`application does not provide written description support for the limitation “a
`
`battery assembly and an atomizer assembly within a housing.” Petition at 2-3, 16-
`
`17, 21; Sturges Report, Ex. 1012, ¶ 42. Like the ’742 patent, the ’818 application
`
`discloses “a battery assembly and an atomizer assembly within a housing.”
`
`34. For example, the ’818 application describes “[o]f this embodiment,
`
`the battery assembly and atomizer assembly are mutually connected and then
`
`installed inside the integrally formed shell (a) to form a one-piece part.” ’818
`
`application, Ex. 1009, p. 20. The ’818 application also discloses that the “cigarette
`
`bottle assembly includes a hollow cigarette holder shell (b), and a perforated
`
`component for liquid storage (9) inside the shell (b).” ’818 application, Ex. 1009,
`
`p. 20. The ’818 application discloses that “[o]ne end of the cigarette holder shell
`
`(b) plugs into the shell (a) . . . .” ’818 application, Ex. 1009, p. 20.
`
`35. Figure 1 of the ᾿818 application (reproduced and annotated below)1
`
`depicts “a battery assembly and atomizer assembly within a housing.” ’818
`
`
`1 The ᾿742 patent and the ᾿818 application contain the same figures. Compare ᾿742
`
`patent, Ex. 1001, p. 4-11 (Figures 1-24) with ᾿818 application, Ex. 1009, p. 27-34
`
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`application, Ex. 1009, p. 27. See also ’818 application, Ex. 1009, p. 31 (Figure
`
`19). Figure 1 depicts a battery assembly composed of a battery (3) and
`
`accompanying components and an atomizer assembly composed of an atomizer (8)
`
`and accompanying components located within the housing of the device.
`
`36. Based on at least that disclosure, one skilled in the art would
`
`understand that “a battery assembly and atomizer assembly within a housing” is
`
`exactly what is described and depicted in the ᾿818 application.
`
`
`
`
`(Figures 1-24). However, the figures of the ᾿742 patent are of higher quality than
`
`those of the ᾿818 application. Therefore, Figure 1 reproduced throughout this
`
`Declaration is from the ᾿742 patent.
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`37. The “Background Art” of the ’818 application discusses many
`
`problems in the prior art with cigarette substitute products such as nicotine patches,
`
`gargles, gum and beverages. ’818 application, Ex. 1009, p. 13. The ’818
`
`application explains that the nicotine is “absorbed very slowly” with these cigarette
`
`substitutes. ’818 application, Ex. 1009, p. 13. Because the nicotine “peak
`
`concentration [of nicotine] can’t be effectively established in blood,” the “smokers
`
`can’t be satisfied to the full.” The ’818 application also mentions that these
`
`cigarette substitutes deprive the smoker of the “‘smoking’ habit.” ’818 application,
`
`Ex. 1009, p. 13.
`
`38. The “Background Art” of the ’818 application also discusses
`
`problems in the prior art with electronic cigarettes. ’818 application, Ex. 1009, p.
`
`13. The ’818 application explains that although the prior art electronic cigarettes
`
`may resolve the issues mentioned with cigarette substitutes, “they are complicated
`
`in structure.” The ’818 application also discusses that “their batteries have to be
`
`changed frequently, making it inconvenient for the users.” And the ’818
`
`application states: “What’s worse, the electronic cigarettes don’t provide the ideal
`
`aerosol effects, and their atomizing efficiency is not high.” ’818 application, Ex.
`
`1009, p. 13.
`
`39.
`
`In my opinion, claims 2 and 3 of the ᾿742 patent address many of the
`
`problems in the prior art discussed in the ’818 application. The claimed electronic
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`cigarette improves the aerosol effects and atomizing efficiency over previously
`
`known devices. The specification and figures of the ’818 application provide
`
`embodiments of atomizers and their components that improve atomization
`
`efficiency. ’818 application, Ex. 1009, pp. 28-31 (Figures 5-8, 13-18), pp. 19-22.
`
`In my opinion, those atomizers can be used in an electronic cigarette with any type
`
`of housing. It is my understanding that during prosecution of the ᾿742 patent, the
`
`examiner stated that the unique atomizer is one of the patentable features of claims
`
`2 and 3 of the ᾿742 patent. See File History for the ᾿742 Patent, Ex. 2003, pp. 88-
`
`89, 115-117.
`
`40.
`
`Independent claims 2 and 3 recite “a heating wire wound on a part of
`
`the porous component” that is either “substantially aligned with the run-through
`
`hole” or is “in the path of air flowing through the run-through hole.” ’742 patent,
`
`Ex. 1001, col. 6, lines 35-36, 48-49. That atomizer configuration facilitates highly
`
`efficient atomization and superior aerosol effects, leading to a more realistic
`
`smoking experience for smokers. In particular, having a heating wire wound
`
`around and in direct physical contact with the porous component allowed for liquid
`
`to be transported directly to the heating element for atomization. So long as the
`
`porous body has liquid, it is immediately vaporized. Because of the direct physical
`
`contact, atomization requires less heat and the heating wire requires less power
`
`than prior art atomizers that do not have direct contact between the porous
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`component and the heater. Furthermore, the heating element can be continuously
`
`supplied with liquid so it produces a more even, consistent vapor that does not dry
`
`out or create a burnt taste for a user. The claimed heating wire and porous
`
`component achieve these improvements while lowering the cost of the device
`
`because the claimed configuration is a simple, elegant, and less expensive means
`
`of providing liquid to the heating element compared to the pumps, tubes, and
`
`valves used in the prior art.
`
`41. The claimed atomizer also allowed for a device that could be
`
`manufactured at a lower cost so that the price for an electronic cigarette could
`
`decrease and move closer to that of a traditional cigarette. The atomizer’s self-
`
`regulating liquid flow is a much less expensive means for transporting liquid
`
`through the device than other complicated mechanisms such as pumps, tubes, and
`
`valves that were used in the prior art.
`
`42.
`
`In addition, the claimed atomizer in contact with a liquid supply
`
`simplifies liquid flow in the device by allowing liquid to move directly from the
`
`liquid supply into the atomizer with no need for an intermediate component
`
`connecting those two structures. As illustrated and described in the ’742 patent
`
`and ᾿818 application, the claimed electronic cigarette includes a liquid supply and
`
`atomizer that are in direct contact and all the other claim elements are connected in
`
`17
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 18 of 34
`
`
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`series in an elongated housing. The result is a compact device that more closely
`
`resembles a regular cigarette.
`
`43.
`
`In my opinion, the claimed electronic cigarette of claims 2 and 3 of
`
`the ᾿742 patent also provides smokers with a cigarette substitute that helps the
`
`smokers to quit smoking traditional cigarettes. The claimed electronic cigarette
`
`also overcomes the problems discussed with cigarette substitutes, such as slow
`
`nicotine absorption, because a peak concentration of nicotine is established in the
`
`blood. Moreover, the claimed electronic cigarette allows smokers to continue
`
`enjoying the desired “‘smoking’ habit” because it allows smokers to experience the
`
`same oral stimulation and hand-to-mouth ritual of smoking a real traditional
`
`cigarette. And the “Contents of the invention” section of the ’818 application,
`
`which directly follows the “Background Art” section, confirms this: “To overcome
`
`the above-mentioned disadvantages, this invention has been designed to provide an
`
`aerosol electronic cigarette that substitutes for cigarettes and helps the smokers to
`
`quit smoking.” ’818 application, Ex. 1009, pp. 13-14.
`
`44.
`
`I disagree with Petitioner and its expert that the claims of the ᾿742
`
`patent must include certain features of the electronic cigarette disclosed in the
`
`specification. In particular, I disagree with Petitioner and its expert that the
`
`claimed battery assembly and atomizer assembly must necessarily be limited to
`
`being positioned within a one-piece shell to achieve the benefit of the “simple
`
`18
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 19 of 34
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`
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`structure” described in the ’818 application. Petition at 43-44, 47-48. See also
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`Sturges Report, Ex. 1012, ¶¶ 44-45, 51-53. Although the ’818 application does
`
`disclose the “simple structure” of the invention as one benefit, the ’818 application
`
`also lists many other benefits. For example, the first benefit discussed is that the
`
`liquid storage component “doesn’t contain cigarette tar, considerably reducing the
`
`carcinogenic risks of smoking. At the same time, the smokers can still enjoy the
`
`feel and excitement of smoking, and there is no fire hazard since there is no need
`
`for igniting.” ’818 application, Ex. 1009, p. 16. In my opinion, the electronic
`
`cigarette of claims 2 and 3 of the ᾿742 patent achieves this benefit as discussed
`
`above because it is an aerosol electronic cigarette that substitutes for cigarettes and
`
`helps the smokers to quit smoking. A person of ordinary skill in the art would not
`
`believe that the claimed invention must necessarily include features that address
`
`every benefit disclosed in the specification.
`
`45.
`
`In my opinion, one of ordinary skill in the art would not understand it
`
`to be necessary that the battery assembly and atomizer assembly be located within
`
`the same shell for the claimed electronic cigarette to function. Devices where the
`
`battery assembly and atomizer assembly are positioned in separate shells were
`
`known in the prior art at the time of filing the ᾿818 application. For example, the
`
`Chinese priority application of the ᾿818 application, CN ’805, discloses electronic
`
`cigarettes in which the battery assembly and atomizer assembly are located in
`
`19
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 20 of 34
`
`
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`separate pieces of the housing. CN ’805, Ex. 2004, 153-177. See Petition, pp. 3-4.
`
`Thus, one of ordinary skill in the art would not believe that it is required for the
`
`battery assembly and atomizer assembly to be located in the same one-piece shell
`
`for the device to function properly.
`
`46. That the ᾿818 application uses the phrase “the invention” to describe
`
`the battery assembly and atomizer assembly as being located together in a one-
`
`piece shell would not have indicated to one skilled in the art that the ᾿818
`
`application’s written description is limited to a battery assembly and atomizer
`
`assembly located together in a one-piece shell, particularly in view of the ’818
`
`application’s use of the term “embodiment” to describe these features.
`
`47. The ᾿818 application describes, “[o]f this embodiment, the battery
`
`assembly and atomizer assembly are mutually connected and then installed inside
`
`the integrally formed shell (a) to form a one-piece part.” ᾿818 application, Ex.
`
`1009, p. 20. And although Petitioner’s expert states that the description of Figure
`
`19 states “the electronic cigarette in the sixth preferred embodiment of this
`
`invention . . . .,” which depicts the battery assembly and atomizer assembly as
`
`located in the same shell (a), the term “embodiment” is used to describe the figure.
`
`Sturges Report, Ex. 1012, ¶ 47; ’818 application, Ex. 1009, p. 18. Additionally,
`
`the specification later describes Figure 19 as “the sixth preferred embodiment of
`
`this utility model.” ’818 application, Ex. 1009, p. 22. Thus, considering the
`
`20
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 21 of 34
`
`
`
`specification uses the phrases “embodiment of this invention” and “embodiment of
`
`this utility model,” a person of ordinary skill would believe that the battery
`
`assembly and atomizer assembly being located in a one-piece shell is intended to
`
`be an embodiment of the disclosure, and not a necessary feature that must be
`
`included in all claims.
`
`48. The ’818 application’s statements that Figures 1-2 are of the
`
`“electronic cigarette of this invention” do not indicate that the claimed invention
`
`must be limited to the depicted electronic cigarette in the figures. Petition, pp. 40-
`
`41; Sturges Report, Ex. 1012, ¶ 46; ᾿818 application, Ex. 1009, p. 17. The
`
`“Specific Mode for Carrying Out the Invention” section later describes the features
`
`depicted in these figures stating, “[i]n this specific embodiment . . .” and “[o]f this
`
`embodiment . . .” ᾿818 application, Ex. 1009, pp. 19-20. In my opinion, because
`
`of the use of the term “embodiment,” a person of ordinary skill in the art would not
`
`believe that the invention disclosed must be limited to the features in the figures.
`
`49.
`
` In my opinion, the use of the term the “invention” in the “Contents of
`
`the invention” section of the ’818 application relating to the purpose of the
`
`invention also does not limit the scope of the disclosure to a battery assembly and
`
`atomizer assembly within a one-piece shell. Petition, pp. 6, 39-40; Sturges Report,
`
`Ex. 1012, ¶ 45. The relevant section of the ᾿818 application states:
`
`21
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`Fontem Ex. 2001
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. IPR2016-01532
`Page 22 of 34
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`
`
`To overcome the above-mentioned disadvantages, this invention has
`been designed to provide an aerosol electronic cigarette that
`substitutes for cigarettes and helps the smokers to quit smoking.
`
`The purpose of this i
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