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. 9,326,548
`
`________________________
`
`
`
`Declaration of John M. Collins, Ph.D. in Support of
`Petition For Inter Partes Review
`of U.S. Patent No. 9,326,548
`Under 37 C.F.R. § 1.68
`
`
`
`NU MARK Ex. 1003 p.1
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`

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`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`TABLE OF CONTENTS
`
`II.
`
`BACKGROUND AND QUALIFICATIONS ................................................. 1
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`III. THE 548 PATENT .......................................................................................... 6
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`
`V.
`
`ClAIM CONSTRUCTION .............................................................................. 9
`
`A.
`
`“Frame” (Claims 1-14) ........................................................................ 10
`
`B.
`
`“Porous Component” (Claims 1-10) ................................................... 10
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`VI. LEGAL STANDARDS ................................................................................. 10
`
`A. Anticipation ......................................................................................... 10
`
`B.
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`Priority Dates and Written Description ............................................... 11
`
`VII. THE PRIOR ART – HAN 311 ...................................................................... 12
`
`VIII. GROUND OF UNPATENTABILITY .......................................................... 12
`
`A.
`
`Claim 1 ................................................................................................ 13
`
`B.
`
`C.
`
`Claim 2 ................................................................................................ 24
`
`Claim 3 ................................................................................................ 26
`
`D.
`
`Claim 4 ................................................................................................ 27
`
`E.
`
`F.
`
`Claim 5 ................................................................................................ 28
`
`Claim 6 ................................................................................................ 29
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`G.
`
`Claim 7 ................................................................................................ 30
`
`H.
`
`Claim 8 ................................................................................................ 31
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`I.
`
`J.
`
`Claim 9 ................................................................................................ 33
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`Claim 10 .............................................................................................. 34
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`NU MARK Ex. 1003 p.2
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`

`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`
`
`K.
`
`Claim 11 .............................................................................................. 34
`
`L.
`
`Claim 12 .............................................................................................. 37
`
`M. Claim 13 .............................................................................................. 38
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`N.
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`Claim 14 .............................................................................................. 39
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`IX. THE 548 PATENT CLAIMS ARE NOT LIMITED TO A LIQUID
`STORAGE HOUSING THAT IS “DETACHABLE” .................................. 40
`
`THE PARENT APPLICATION TO THE 548 PATENT (HAN 311
`AND THE 944 PATENT) DOES NOT SUPPORT A NON-
`DETACHABLE LIQUID STORAGE HOUSING ....................................... 40
`
`X.
`
`
`
`ii
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`NU MARK Ex. 1003 p.3
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`

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`I, Dr. John M. Collins, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is John M. Collins. My findings, as set forth herein,
`
`are based on my education and background in the fields discussed below.
`
`2.
`
`I have been retained on behalf of Petitioner Nu Mark LLC
`
`(“Petitioner” or “Nu Mark”) to provide this Declaration concerning technical
`
`subject matter relevant to the inter partes review petition (“Petition”) concerning
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`U.S. Patent No. 9,326,548 (Ex.1001, the “548 Patent”). I reserve the right to
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`supplement this Declaration in response to additional evidence that may come to
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`light.
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`3.
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`I am over 18 years of age. I have personal knowledge of the
`
`facts stated in this Declaration and could testify competently to them if asked to do
`
`so.
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`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`I am the Chief Operating Officer at the Consortia for Improving
`
`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
`
`Officer for Reed Collins, LLC. I have worked at CIMIT since 2008. Much of my
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`responsibility is to facilitate collaboration among scientists, engineers, clinicians
`
`and entrepreneurs to speed the discovery, development, and implementation of
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`NU MARK Ex. 1003 p.4
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`

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`
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`medical innovations. I focus on assisting investigators in moving technologies
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`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
`
`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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`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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`2
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`NU MARK Ex. 1003 p.5
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`
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`time, I have had a consistent focus on medical devices and related technologies,
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`which includes my particular expertise in design, fluid mechanics and heat/mass
`
`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 Ex.1004.
`
`7.
`
`Prior to 2008, I held various leadership positions at technology
`
`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
`
`250 staff.
`
`8.
`
`From 2002-2008, I worked in close collaboration with CEO and
`
`owner, Dr. Kenan Sahin, to form TIAX from the resources of the ADL T&I
`
`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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`several core technology areas, including clean energy and materials, health and
`
`wellness, appliances and HVAC systems, and enhanced security. During my
`
`3
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`NU MARK Ex. 1003 p.6
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`
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`tenure at TIAX, part of which I served as president, the World Economic Forum
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`recognized TIAX as a Technology Pioneer in 2002 and as a New Champion in
`
`2007. For a full list of my employment history, see my CV, Ex.1004.
`
`9. My experiences cover a broad technology base across a diverse
`
`set of industries, including in the areas of medical devices, energy, consumer
`
`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
`
`(“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-
`
`activated. Also while at ADL, and then continuing that work at TIAX, I worked
`
`on several related projects in conjunction with an affiliate of PM USA called
`
`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.
`
`5,743,251 to Howell et al.; U.S. Pat. No. US 6,501,052 to Cox et al.; and U.S. Pat.
`
`No. 6,491,233 to Nichols—and applied it to efforts to atomize liquid fuel. One
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`application was for a low-power, fuel based electric power generator and another
`
`was for a clean emission “coldstart” fuel injector for automobiles. By way of
`
`further example, I have worked with General Motors to help develop an anti-lock
`
`hydraulic braking systems, Baxter Healthcare to help develop a blood/fluid warmer
`
`4
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`NU MARK Ex. 1003 p.7
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`based on the analytical optimization of the thermal performance of “conventional”
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`resistance heating technology, Bausch Lomb to help develop a microsurgical fluid
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`delivery system that allowed the surgeon to control the flow or pressure of
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`irrigation fluid, General Electric Appliances to help develop a coffee maker that
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`managed the heat applied to water and coffee grounds to deliver high quality
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`coffee without humidity damaging
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`the surrounding cabinets,
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`the Regina
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`Corporation to help develop cleaning technology, and the Engelhard Corporation
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`to help develop a system that applied a liquid-containing metal into a porous
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`substrate and then dry it uniformly.
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`10.
`
`I have also performed services in numerous patent disputes as
`
`an independent technical expert and consultant and as an expert witness. I have
`
`consulted as an expert in matters involving the design of a variety of medical
`
`devices. See Ex.1004. Of particular relevance to this matter, I previously filed
`
`declarations in support of petitions in IPR2014-01289, challenging related U.S.
`
`Pat. No. 8,393,331, and IPR2014-01300, challenging related U.S. Pat. No.
`
`8,490,628. Both of those petitions were instituted.
`
`11.
`
`I also have experience as an innovator and inventor. I am a
`
`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 Ex.1004.
`
`5
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`NU MARK Ex. 1003 p.8
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`12.
`
`I have been retained on behalf of Petitioner and real party in
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`interest Nu Mark to offer opinions generally regarding the validity, novelty, prior
`
`art, obviousness considerations, and understanding of a person of ordinary skill in
`
`the art in the industry as it relates the 548 Patent.
`
`13.
`
`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
`
`the Central District of California, and I do not have any financial interest in the
`
`Petitioner (or any of its affiliates), the Patent Owner, or the 548 Patent.
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`14.
`
`In developing my opinions below relating to the 548 Patent, I
`
`have considered the materials cited and discussed herein and in the accompanying
`
`Petition.
`
`III. THE 548 PATENT
`
`15. The 548 Patent, entitled “Electronic Cigarette,” states that it
`
`was filed on April 3, 2014 and issued May 3, 2016. The 548 Patent generally
`
`purports to disclose an aerosol electronic cigarette that overcomes disadvantages of
`
`other “cigarette substitutes” or electronic cigarettes on the market. See Ex.1001 at
`
`1:30-47. According to the 548 Patent, its aerosol electronic cigarette provides
`
`nicotine, without harmful carcinogens, like tar; enables a user to still enjoy the
`
`6
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`NU MARK Ex. 1003 p.9
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`“smoking habit”; and provides a more simplistic structure, along with ideal aerosol
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`effects and high atomizing efficiency. See id.
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`16. The Challenged Claims are directed to an electronic cigarette
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`device that includes a battery assembly connected to an atomizer assembly in a
`
`housing, and a liquid storage component in the housing. See id. at Claims 1, 8, and
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`11. The atomizer includes a porous component set upon a frame with a run-
`
`through hole to enable airflow, and a heating wire coil wound on the porous
`
`component. Id. The liquid storage component is in contact with the atomizer
`
`assembly. Id.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`17.
`
`I have been instructed for purposes of this Declaration, and
`
`unless otherwise noted, to opine on the knowledge and understanding of one of
`
`ordinary skill in the art as of the pertinent dates of the prior art reference,
`
`applications, and patents discussed herein. I understand that the factors that may
`
`be considered in determining the ordinary level of skill in the art include: (1) the
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`level of education and experience of persons working in the field; (2) the types of
`
`problems encountered in the field; and (3) the sophistication of the technology. I
`
`understand that a person of ordinary skill in the art is not a specific individual, but
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`rather is a hypothetical individual having the qualities reflected by the factors
`
`above.
`
`7
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`NU MARK Ex. 1003 p.10
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`18.
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`In my opinion, a person of ordinary skill in the aspects pertinent
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`to the 548 Patent would be a person with a Bachelor of Science degree in
`
`mechanical engineering, or a similar technical degree, along with at least 3-5 years
`
`of experience in designing and developing handheld devices with thermal
`
`management and fluid handling technologies. A higher level of education may
`
`substitute for a lesser amount of experience, and vice versa. My opinions are
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`based on my engineering experience and my experience in forming and managing
`
`development engineering design teams, including the team contributing to the
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`development of electrically heated cigarette products and electrically heated
`
`aerosol devices in the year 2000 timeframe. I base this opinion on the level of
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`technical
`
`training required
`
`to reduce
`
`to practice
`
`the electronic cigarette
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`embodiment described in the 548 Patent and the relevant prior art, my reading of
`
`the 548 Patent, relevant prior art, and technical literature associated with electro-
`
`and mechanical engineering generally and thermo-fluid as well as inhalation
`
`technologies more specifically, my own commercial experience in designing and
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`developing consumer products with thermo-fluid management features, my
`
`commercial experience working with these types of systems at ADL and TIAX,
`
`and my commercial experience consulting and managing in many cases involving
`
`these types of systems.
`
`8
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`NU MARK Ex. 1003 p.11
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`

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`
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`19. For purposes of this Declaration, unless otherwise noted, my
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`statements and opinions below, such as those regarding my experience and the
`
`understanding of a person of ordinary skill in the art generally (and specifically
`
`related to the prior art reference, 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 would have qualified as one of skill
`
`in the art according to the above definition.
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`V. CLAIM CONSTRUCTION
`
`20.
`
`I understand that in deciding whether to institute inter partes
`
`review, “[a] claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`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
`
`standard). I further understand that “the broader standard serves to identify
`
`ambiguities in the claims that can then be clarified through claim amendments.”
`
`Final Rule, 77 Fed. Reg. 48680, 48699 (Aug. 14, 2012). I therefore applied claim
`
`constructions that are consistent with the broadest reasonable construction of the
`
`claims of the 548 Patent in forming my opinions. Below are two constructions of
`
`claim terms in a related patent that were adopted by a prior panel. I have applied
`
`these constructions in my analysis.
`
`9
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`NU MARK Ex. 1003 p.12
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`

`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`
`
`A.
`
`“Frame” (Claims 1-14)
`
`21.
`
`“Frame” was construed by a prior panel and district court with
`
`respect to the parent 742 patent as a “rigid structure.” Ex.1011, VMR Prods. LLC
`
`v. Fontem Holdings 1 B.V., IPR2015-000859, Paper 9 at pp.7-8; Ex.1012, Rulings
`
`on Claims Construction, Fontem Ventures BV et al. v. NJOY, Inc. et al., No. 2:14-
`
`cv-01645, Dkt. 65 (C.D. Cal., Jan. 29, 2015) at p.8.
`
`B.
`
` “Porous Component” (Claims 1-10)
`
`22.
`
`“Porous Component” was construed by a prior panel with
`
`respect to the parent 742 patent as “a component of the atomizer assembly in the
`
`electronic cigarette that includes pores and is permeable to liquid, such as cigarette
`
`solution from the cigarette solution storage area.” Ex.1011, at pp.8-10.
`
`VI. LEGAL STANDARDS
`A. Anticipation
`
`23.
`
`I have been advised that if each and every element or step of a
`
`claim is disclosed within the “four corners” of a prior art reference, that claim is
`
`said to be “anticipated” by that single prior art reference and is unpatentable under
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`35 U.S.C. § 102 because the claimed invention is not, in fact, new or novel.
`
`24.
`
`I also have been advised that a prior art reference can disclose a
`
`claim feature because the feature is expressly described, or because the feature is
`
`inherent in the disclosure. I understand that something is inherent in a prior art
`
`reference if the missing descriptive matter must necessarily be present, and it
`
`10
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`NU MARK Ex. 1003 p.13
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`
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`would be so recognized by a person of ordinary skill in the art. I also understand
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`that inherency cannot be established by probabilities or possibilities, and that the
`
`mere fact that something may result from a given set of circumstances is not
`
`sufficient to show inherency.
`
`25.
`
`I have been asked to consider the validity of the challenged
`
`claims. I have concluded that each of the challenged claims is unpatentable at least
`
`under 35 U.S.C. §102 based on the reference described below.
`
`B.
`
`Priority Dates and Written Description
`
`26.
`
`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 a patent application is entitled to the benefit of the filing date of
`
`an earlier filed application only if the disclosure of the earlier application provides
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`support for the claims of the later application, as required by the written
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`description requirement of 35 U.S.C. § 112. Such a requirement is only fulfilled if
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`disclosure of the prior application conveys with reasonable clarity to those skilled
`
`in the art that, as of the filing date sought, the inventor was in possession of the
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`invention as claimed.
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`27.
`
`I have been informed that it is not sufficient for purposes of the
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`written description requirement of § 112 that the disclosure, when combined with
`
`the knowledge in the art, would lead one to speculate as to modifications that the
`
`11
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`NU MARK Ex. 1003 p.14
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`
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`inventor might have envisioned, but failed to disclose. That is because the purpose
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`of the written description requirement is to ensure that the scope of the right to
`
`exclude, as set forth in the claims, does not overreach the scope of the inventor’s
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`contribution to the field of art as described in the patent specification. Thus, I have
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`been advised that entitlement to an earlier priority date does not extend to subject
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`matter which is not disclosed, even if it would be obvious over what is expressly
`
`disclosed.
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`VII. THE PRIOR ART – HAN 311
`
`28.
`
`I have analyzed U.S. Publication No. 2009/0095311 (“Han
`
`311,” Ex.1005), entitled “Aerosol Electronic Cigarette,” which was published on
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`April 16, 2009. Han 311 is the publication associated with one of the parent
`
`patents of the 548 Patent, namely U.S. Patent No. 8,156,944 (Ex.1009, the “944
`
`Patent”).
`
`VIII. GROUND OF UNPATENTABILITY
`
`29.
`
`It is my opinion that Han 311 discloses each and every element
`
`of claims 1-14 of the 548 Patent. As such, claims 1-14 are unpatentable under
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`35 U.S.C. § 102 on the ground that they are anticipated by Han 311.
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`30. Below I explain how Han 311 discloses each and every
`
`limitation of claims 1-14 of the 548 Patent.
`
`12
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`NU MARK Ex. 1003 p.15
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`

`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`
`
`A. Claim 1
`
`[1.P] “An electronic cigarette, comprising”
`
`31. Han 311 discloses an electronic cigarette. Han 311 is entitled
`
`“Aerosol Electronic Cigarette” and states that “[t]he present invention relates to an
`
`electronic cigarette, in particular, an aerosol electronic cigarette that doesn’t
`
`contain tar but nicotine.” Ex.1005 at p.1, ¶ [0001];1 see also id. at Abstract (“An
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`aerosol electronic cigarette includes a battery assembly, an atomizer assembly and
`
`a cigarette bottle assembly and also includes a shell (a) which is hollow and
`
`integrally formed.”); id. at ¶ [0008] (“The purpose of this invention is fulfilled with
`
`the following technical solution: an aerosol electronic cigarette includes a battery
`
`assembly, an atomizer assembly and a cigarette bottle assembly, and also includes
`
`a shell, which is hollow and integrally formed.”).
`
` [1.1] “a battery assembly having a cylindrical battery and an
`operating indicator”
`
`32. Han 311 discloses that its electronic cigarette has a battery
`
`assembly having a cylindrical battery and an operating indicator.
`
`33. Han 311 discloses “[a]n aerosol electronic cigarette [that]
`
`includes a battery assembly.” Ex.1005 at Abstract. Han 311 further discloses
`
`that “[t]he additional features of this invention are as follows: the said battery
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`assembly includes the battery, and the operating indicator, electronic circuit
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`1 All emphases herein are added unless noted otherwise.
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`13
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`NU MARK Ex. 1003 p.16
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`board, and airflow sensor, which are connected with the said battery; the signal
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`output of the said airflow sensor is connected with the said electronic circuit
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`board.” Id. at ¶ [0009]; see also id. at ¶ [0064] (“In this specific embodiment, the
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`battery assembly includes the battery, and the operating indicator (1), electronic
`
`circuit board (4), and airflow sensor (5), which are connected with the battery.”); ¶
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`[0012] (“The said battery is a rechargeable battery, which has a charging slot on
`
`it. The said operating indicator is a LED.”).
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`34. Han 311 also discloses that its battery is cylindrical. For
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`example, Figures 3 and 4 illustrate axial and side section views of the cigarette
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`bottle assembly, respectively, and demonstrate that rectangular side section views
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`represent cylindrical components. See id. at Fig. 1 (annotated), Figs. 3-4, ¶ [0040]
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`- ¶ [0041]. Therefore, the rectangular side view of the battery component
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`represents a cylindrical form.
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`
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`Ex. 1005 at Figs. 3 and 4
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`
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`14
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`NU MARK Ex. 1003 p.17
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`

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`
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
`
`
`
`
`
`
`
`Ex. 1005 at Fig. 1 (annotated)
`
` [1.2] “an atomizer assembly in an elongated cylindrical housing,
`with the battery assembly electrically connected to the atomizer
`assembly, and with the cylindrical battery coaxial with the
`atomizer assembly”
`
`35. Han 311 discloses that its electronic cigarette has an atomizer
`
`assembly in an elongated cylindrical housing, with the battery assembly
`
`electrically connected to the atomizer assembly, and with the cylindrical battery
`
`coaxial with the atomizer assembly.
`
`36. Figure 1 depicts the elongated cylindrical housing of Han 311’s
`
`electronic cigarette which contains coaxial atomizer and battery assemblies. See
`
`Fig. 1 (annotated).
`
`
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`15
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`NU MARK Ex. 1003 p.18
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`37. Specifically, Han 311 discloses that its “aerosol electronic
`
`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`cigarette includes a battery assembly, an atomizer assembly . . . and also includes a
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`shell (a) which is hollow and integrally formed.” Ex.1005 at Abstract. Han 311
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`calls the housing of its electronic cigarette a “shell.” Id.
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`38. Han 311 explains that “[s]aid battery assembly connects with
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`said atomizer assembly and both are located in said shell (a)”or housing. Id.; see
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`also id. at ¶ [0008] (“The said battery assembly connects with the said atomizer
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`assembly and both are located in the said shell.”).
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`39. Figure 20 provides an electric circuit diagram of the electronic
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`cigarette and explains that the battery assembly is “electrically connected” to the
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`atomizer assembly: “the rechargeable battery (3) starts to electrify the electric
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`heating rod (82) inside the atomizer (8), and at the same time, the LEDs, which are
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`electrified by the rechargeable battery (3), emit light.” Id. at ¶ [0071].
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` [1.3] “a liquid storage component in the housing”
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`40. Han 311 discloses that its electronic cigarette includes a liquid
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`storage component in the housing which it refers to as a “cigarette bottle
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`assembly”: “[t]he said cigarette bottle assembly includes a hollow cigarette holder
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`shell, and a perforated component for liquid storage inside the said cigarette holder
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`shell.” Ex.1005 at ¶ [0025].
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`16
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`41.
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`“As shown in 3 and 4, the cigarette bottle assembly includes a
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`hollow cigarette holder shell (b), and a perforated component for liquid storage (9)
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`inside the shell (b).” See also id. at ¶ [0070], Figs. 3-4.
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`42. Han 311 explains that this component is responsible for storing
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`the nicotine liquid for the electronic cigarette. Id. at ¶ [0037] (“[f]or this invention,
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`the perforated component for liquid storage of the cigarette bottle assembly stores
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`the nicotine liquid only, which doesn’t contain cigarette tar, considerably reducing
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`the carcinogenic risks of smoking.”).
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`43.
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` Figures 1 and 2 illustrate that the cigarette bottle assembly is
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`detachable from the atomizer assembly. See id. at Figs. 1-2 (annotated).
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`[1.4] “the atomizer assembly including a porous component set on
`a frame having a run-through hole”
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`44. Han 311 discloses that the atomizer assembly of its electronic
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`cigarette includes a porous component set on a frame having a run-through hole.
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`45. Specifically, Han 311 discloses that “[t]he said atomizer
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`assembly is an atomizer, which includes a porous component” and “[t]he said
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`atomizer assembly [also] includes a frame.” Ex.1005 at ¶¶ [0017], [0021]. “The
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`said porous component is set on the said frame. The said porous component is
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`wound with heating wire. The said frame has a run-through hole on it.” Id. at ¶
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`[0021]; see also id. at Ex.1005 at ¶¶ [0017], [0019], [0020], [0066].
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`46. This configuration is illustrated in Figures 17 and 18: “In the
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`fifth preferred embodiment of this utility model, as shown in FIGS. 17 and 18, the
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`atomizer assembly is an atomizer (8), which includes a frame (82), the porous
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`component (81) set on the frame (82), and the heating wire (83) wound on the
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`porous component (81). The frame (82) has a run-through hole (821) on it.” Id.at
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`¶ [0078], Figs. 17-18.
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`Ex.1005 at Figs. 17-18
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`[1.5] “a heating wire coil electrically connected to the battery”
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`47. Han 311 discloses that its electronic cigarette has a heating wire
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`coil electrically connected to the battery.
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`48. Han 311’s atomizer includes an “electric heating rod.” Ex.1005
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`at ¶ [0018]; see also id. at ¶ [0017]. “The said electric heating rod includes a
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`cylinder. The said heating body is heating wire, which is wound on the wall of the
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`said cylinder.” Id. at ¶ [0019]; see also id. at ¶ [0021] (“The said heating body is
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`heating wire.”); ¶ [0067] (“As shown in FIG. 6, the electric heating rod (82)
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`includes a cylinder (821). The heating wire (822) is wound on the wall of the
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`cylinder (821).”).
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`49. For example, Figures 6, 17, and 18 illustrate Han 311’s heating
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`wire coil around wound around the cylinder of the electric heating rod (id. at Figs.
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`6, 17-18, ¶¶ [0067], [0078]):
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`Ex. 1005 at Figs. 6, 17-18
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`50. Han 311 also discloses that the heating wire coil of the atomizer
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`is electronically connected to the battery. Id. at ¶ [0063] (“The battery assembly
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`connects with the atomizer assembly and both are located in the shell.”); ¶ [0071]
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`(“As shown in FIG. 20, the electric circuit is electrified, and the electronic switch
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`circuit on the electronic circuit board (4) is electrified. Thus, the rechargeable
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`battery (3) starts to electrify the electric heating rod (82) inside the atomizer
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`(8)….In the meantime, the electric heating rod (82) is electrified by the
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`rechargeable battery (3) under the control of electronic circuit board (4), to heat the
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`fine drips for atomization.”); see also id. at ¶ [0008].
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`Petition for Inter Partes Review of 9,326,548
`Ex. 1003 (“Collins Decl.”)
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`[1.6] “an air flow path in the atomizer assembly parallel to a
`longitudinal axis of the housing, with the air flow path
`through the run-through hole to an outlet, with the heating
`wire coil wound on the porous component and in the air
`flow path and with the heating wire coil oriented
`perpendicular to the longitudinal axis; and”
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`51. Han 311 discloses an air flow path in the atomizer assembly
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`parallel to a longitudinal axis of the housing, with the air flow path through the
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`run-through hole to an outlet, with the heating wire coil wound on the porous
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`component and in the air flow path and with the heating wire coil oriented
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`perpendicular to the longitudinal axis.
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`52. Han 311 discloses that “[t]he shell has through-air-inlets (a1).”
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`Ex.1005 at ¶¶ [0063], [0008]. Han 311 also discloses that the air flow path in the
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`atomizer assembly proceeds through the run-through hole to an outlet. Id. at ¶
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`[0071] (“The air enters the normal pressure cavity through the air inlet (a1), passes
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`the check valve (7) via the airflow passage in the airflow sensor (5), and flows to
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