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. 9,339,062
`________________________
`
`Declaration of Dr. John M. Collins in Support of
`Petition for Inter Partes Review
`of U.S. Patent No. 9,339,062
`Under 37 C.F.R. § 1.68
`
`
`
`
`
`
`
`NU MARK Ex.1003 p.1
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`

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`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1 
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`BACKGROUND AND QUALIFICATIONS .....................................................................1 
`
`THE 062 PATENT ..............................................................................................................6 
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`PROSECUTION HISTORY ................................................................................................8 
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................................................8 
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`CLAIM CONSTRUCTION .................................................................................................9 
`
`A. 
`
`B. 
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`“micro-controller unit” (all challenged claims) .....................................................10 
`
`“screw thread electrode” (all challenged claims) ...................................................11 
`
`VII. 
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`STATE OF THE ART BY 2006 ........................................................................................12 
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`VIII.  UNDERSTANDING OF THE GOVERNING LAW ........................................................19 
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`IX. 
`
`THE PRIOR ART ..............................................................................................................24 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
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`U.S. Pat. No. 4,947,874 to Brooks et al. ................................................................24 
`
`U.S. Pat. No. 2,057,353 to Whittemore .................................................................32 
`
`U.S. Pat. No. 5,177,424 to Connors .......................................................................34 
`
`Adapting Brooks to Include a Screw Thread in View of Whittemore ...................36 
`
`Adapting Brooks to Include a Heater Coil Wound Around a Porous
`Component as Taught by Whittemore. ..................................................................43 
`
`Modifying Brooks in view of Whittemore to Include a Charger that
`Utilizes a Screwthread Electrode in View of Connors ..........................................50 
`
`GROUNDS OF UNPATENTABILITY ............................................................................53 
`
`X. 
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`
`
`ii
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`NU MARK Ex.1003 p.2
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`

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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`
`I, John Collins, hereby declare as follows:
`I.
`
`INTRODUCTION
`1. My name is John M. Collins. My findings, as set forth herein,
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`are based on my education and background in the fields discussed below.
`
`2.
`
`I have been retained on behalf of Petitioner Nu Mark LLC
`
`(“Petitioner” or “Nu Mark”) to provide this Declaration concerning technical
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`subject matter relevant to the inter partes review petition (“Petition”) concerning
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`U.S. Patent No. 9,339,062 (“the 062 Patent”, Ex.1001). 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
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`so.
`II. BACKGROUND AND QUALIFICATIONS
`4.
`I am the Chief Operating Officer at the Consortia for Improving
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`Medicine with Innovation and Technology (CIMIT), a non-profit consortium of
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`Boston’s leading teaching hospitals and universities along with a growing list of
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`national and international affiliates. I have worked at CIMIT since 2008. I am
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`also Chief Technology and Innovation Officer for Reed Collins LLC. Much of my
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`responsibility is to facilitate collaboration among scientists, engineers, clinicians
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`and entrepreneurs to speed the discovery, development, and implementation of
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`1
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`NU MARK Ex.1003 p.3
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`

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`medical innovations. I focus on assisting investigators in moving technologies
`
`Petition for Inter Partes Review of 9,339,062
`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.
`
`5.
`
`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.
`
`6.
`
`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.4
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`

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`time, I have had a consistent focus on medical devices and related technologies,
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`Petition for Inter Partes Review of 9,339,062
`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
`
`assembling and managing teams to develop new consumer, industrial and
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`professional products.
`
`7.
`
`Prior to 2008, I held various leadership positions at technology
`
`and product development companies. From 1982-1986, I worked at Booz, Allen &
`
`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
`
`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.
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`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
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`wellness, appliances and HVAC systems, and enhanced security. During my tenure
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`3
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`NU MARK Ex.1003 p.5
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`at TIAX, part of which I served as president, the World Economic Forum
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`recognized TIAX as a Technology Pioneer in 2002 and as a New Champion in
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`2007. For a full list of my employment history, see my CV, Appendix B.
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`9. My experiences cover a broad technology base across a diverse
`
`set of industries, including in the areas of medical devices, energy, consumer
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`products, emission
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`technology for automobiles, and alternative smoking
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`products. By way of example, while at ADL, I worked with Philip Morris USA
`
`(“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
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`on several related projects in conjunction with an affiliate of PM USA called
`
`Chrysalis Technologies, Inc. (“Chrysalis”). These projects built off of and utilized
`
`prior capillary aerosol generator research and development at PM USA and
`
`Chrysalis—the results of which are reflected in patents such as U.S. Pat. No.
`
`5,743,251 to Howell et al. (Ex.1015); U.S. Pat. No. US 6,501,052 to Cox et al.
`
`(Ex.1025); and U.S. Pat. No. 6,491,233 to Nichols (Ex.1026)—and applied it to
`
`efforts to atomize liquid fuel. One application was for a low-power, fuel based
`
`electric power generator (see, e.g., Ex.1011, Pub. No. US 2006/0093977, Pellizzari
`
`I) and another was for a clean emission “cold start” fuel injector for automobiles
`
`(see, e.g., Ex.1012, U.S. Pat. No. 7,059,307, Pellizzari II). By way of further
`
`4
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`NU MARK Ex.1003 p.6
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`

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`example, I have worked with General Motors to help develop anti-lock hydraulic
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`braking systems, Baxter Healthcare to help develop a blood/fluid warmer based on
`
`the analytical optimization of the thermal performance of “conventional” resistance
`
`heating technology, Bausch Lomb to help develop a microsurgical fluid delivery
`
`system that allowed the surgeon to control the flow or pressure of irrigation fluid,
`
`General Electric Appliances to help develop a coffee maker that managed the heat
`
`applied to water and coffee grounds to deliver high quality coffee without humidity
`
`damaging the surrounding cabinets, the Regina Corporation to help develop
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`cleaning technology, and the Engelhard Corporation to help develop a system that
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`applied a liquid-containing metal into a porous substrate and then dry it uniformly.
`
`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. Appendix B includes a representative list of matters in which I have
`
`consulted over the last 4 years. Of particular relevance to this matter, I previously
`
`filed declarations in support of petitions in IPR2014-01289, challenging U.S. Pat.
`
`No. 8,393,331 (“the 331 Patent”), and IPR2014-01300, challenging U.S. Pat. No.
`
`8,490,628 (“the 628 Patent). Both of those petitions were instituted.
`
`5
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`NU MARK Ex.1003 p.7
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`
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`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
`
`addition, on new products and manufacturing processes. See Appendix B.
`
`12.
`
`I have been retained on behalf of Petitioner and real party in
`
`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 to Fontem Holdings 1 B.V.’s (“Fontem”) U.S.
`
`Patent No. 9,339,062 (the 062 Patent).
`
`13.
`
`I am being compensated at a rate of $400 per hour for my
`
`services. My compensation does not depend on the outcome of this Petition or on
`
`the pending litigation between Petitioner and Fontem in the U.S. District Court for
`
`the Middle District of North Carolina, and I do not have any financial interest in
`
`the Petitioner (or any of its affiliates), the Patent Owner, or the 062 Patent.
`
`14.
`
`In developing my opinions below relating to the 062 Patent, I
`
`have considered the materials cited herein and in the petition.
`III. THE 062 PATENT
`15. The core components of the device described in the 062 Patent
`
`are (1) a battery assembly, (2) an atomizer assembly where liquid is vaporized, (3)
`
`a threaded connection that provides both a physical and electrical linkage between
`
`the battery assembly and the atomizer assembly, and (4) a cigarette liquid bottle
`
`6
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`NU MARK Ex.1003 p.8
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`

`
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`where liquid is stored. See e.g., Ex.1001, 062 Patent at 1:33-38. These
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`components can be seen in the figure below.
`
`Ex.1001, 062 Patent at Fig. 5b (annotated).
`
`16. An exploded view of the liquid bottle and atomizer can be seen
`
`
`
`below.
`
`
`
`Ex.1001, 062 Patent at Figs. 3 and 4 (annotated).
`
`17.
`
`In operation, a person inhales on the suction nozzle. The
`
`pressure drops in the device, which is detected by the sensor 207 (depicted in the
`
`
`
`7
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`NU MARK Ex.1003 p.9
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`

`
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`first figure, above). In response to the drop in pressure, the silica gel corrugated
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`membrane (208) distorts to drive the switch spring (212) and sensor (207) to
`
`activate the Microcircuit (206) and MOSFET electric circuit board (205) so that
`
`current flows from the battery to the heating body 305, which generates heat to
`
`vaporize the liquid in the atomizer. Id. at 4:5-14; Figure 5b.
`IV. PROSECUTION HISTORY
`18.
`I have reviewed the prosecution history of the 062 Patent. It is
`
`my understanding that the Patent Office allowed the 062 Patent because, in the
`
`Examiner’s opinion, the closest prior art reference that was before the Examiner
`
`“does not teach or suggest the configuration of the claimed invention wherein the
`
`atomizer including a heater wire wound on a part of the porous body which is
`
`perpendicular to a longitudinal axis of the tubular atomizer assembly.” Ex. 1002 at
`
`p.16. The Examiner did not cite any other claim limitations as allegedly
`
`distinguishing the claims from the prior art.
`V. LEVEL OF ORDINARY SKILL IN THE ART
`19.
`I understand that the factors that may be considered in
`
`determining the ordinary level of skill in the art include: (1) the 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 rather is a
`
`hypothetical individual having the qualities reflected by the factors above.
`
`8
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`NU MARK Ex.1003 p.10
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`

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`
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`20.
`
`In my opinion, a person of ordinary skill in the art with respect
`
`to the technology described in the 062 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.
`
`21. For purposes of this Declaration, unless otherwise noted, my
`
`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 references I consulted herein), reflect the knowledge that existed
`
`prior to 2006, at the latest. As of 2006, I would have qualified as one of skill in the
`
`art according to the above definition.
`VI. CLAIM CONSTRUCTION
`22.
`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.”
`
`9
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`NU MARK Ex.1003 p.11
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`

`
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`Final Rule, 77 Fed. Reg. 48680, 48699 (Aug. 14, 2012). I therefore applied claim
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`constructions that are consistent with the broadest reasonable construction of the
`
`claims of the 062 Patent in forming my opinions. Although I have proposed
`
`specific constructions for the claim terms below, I have applied the broadest
`
`reasonable standard throughout my analysis.
`A.
`
`“micro-controller unit” (all challenged claims)
`23. The term “micro-controller unit” appears in claims 1 and 12 of
`
`the 062 Patent, and therefore in the claims that depend from them as well. In my
`
`opinion, the broadest reasonable construction of “micro-controller unit” (which I
`
`will refer to hereinafter as “MCU”) is “a component of an electronic device that
`
`regulates a particular process or function.” This construction is consistent with my
`
`own experience in the field and with dictionary definitions of the term “micro-
`
`controller.” See, e.g., Ex.1009, McGraw-Hill Dictionary of Scientific and
`
`Technical Terms (“McGraw-Hill”) at p.5 (defining “microcontroller” as a
`
`“microcomputer, microprocessor, or other equipment used for precise process
`
`control in data handling, communication, and manufacturing”).
`
`10
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`NU MARK Ex.1003 p.12
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`

`
`
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`24.
`
`It is also consistent with the written description of the 062
`
`Patent, which indicates, for example, that a “microcircuit”1 is used to regulate the
`
`“atomizing capacity” of the claimed device when it is in operation (as a result of a
`
`sensor detecting user inhalation). See Ex.1001 at 4:26-32.
`
`B.
`
`“screw thread electrode” (all challenged claims)
`25.
`
`In my opinion, the broadest reasonable construction of “screw
`
`thread electrode,” which appears in all of the challenged claims, is “a helical
`
`fastener or connector that includes an electrical conductor for passing electric
`
`current.” This construction is consistent both with the plain meaning of the terms
`
`“screw thread” and “electrode” and with the usage of the combined term in the 062
`
`Patent.
`
`26. An “electrode” is simply “an “electric conductor through which
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`an electric current enters or leaves a medium.” Ex.1009 at p.4. A “screw thread,”
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`one of the most familiar structures in mechanical engineering, is a “helical ridge
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`formed on a cylindrical core, as on fasteners or pipes.” Id. at p.7. Accordingly, the
`
`
`1 For purposes of this declaration, I am offering no opinion as to whether the
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`disclosure of a “microcircuit” in the written description of the 062 Patent provides
`
`adequate written support or enablement for the claimed “micro-controller unit.”
`
`11
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`NU MARK Ex.1003 p.13
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`
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`plain meaning of “screw thread electrode” is “a helical fastener or connector that
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`includes an electrical conductor for passing electric current.”
`
`27. The written description of the 062 Patent, although limited in its
`
`description of the claimed “screw thread electrodes,” is consistent with this
`
`construction. For example, the 062 Patent makes clear that the screw thread
`
`electrodes mechanically connect the battery and atomizer assemblies: “[t]he battery
`
`assembly and atomizer assembly are connected through the screw thread electrode
`
`into an electronic cigarette.” Ex.1001 at 1:67-2:2. Likewise, the 062 Patent
`
`indicates that electricity passes through the threaded electrodes on its way from the
`
`battery to the heating body. Id. at 3:1-5.
`VII. STATE OF THE ART BY 2006
`28. Electronic Cigarettes (“e-cigarettes”) were well-known before
`
`May 2006. In fact, they have been well-known since at least the 1980s, as
`
`demonstrated by, for example, Brooks, discussed below. Moreover, the basics of
`
`the technology involved in e-cigarettes have been known since at least the 1930’s.
`
`See, e.g., Ex.1005, Whittemore at 1:50-2:7 (disclosing an electronic vaporizer
`
`utilizing a wick-coil design).
`
`29. By 2006, a great deal was known about e-cigarettes and the
`
`variety of ways they could be designed. See, e.g., Ex.1006, Brooks at Abstract
`
`(disclosing “[s]moking articles [that] employ an electrical resistance heating
`
`12
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`NU MARK Ex.1003 p.14
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`
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`element and an electrical power source to provide a tobacco-flavored smoke or
`
`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`aerosol and other sensations of smoking”); Ex.1014, Voges at 5:49-51 (disclosing a
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`“nicotine dispenser comprising a cigarette-shaped hollow tubular body”); Ex.1004,
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`Takeuchi at 1:4-5 (disclosing a flavor-generating device for “enjoying simulated
`
`smoking”). Based on my experience, a person of ordinary skill in the art would
`
`have known at least the following about the broad field of e-cigarettes at the time
`
`of the claimed priority date of the 062 Patent.2
`
`30. An e-cigarette is a product generally designed to replicate the
`
`function and some of the experience of a combustible cigarette. It generally allows
`
`a person to inhale an aerosol that contains the desired constituents, including
`
`nicotine and flavors. A skilled person knew that e-cigarettes came in different
`
`shapes and sizes, and that it was well-known to use conventional drug delivery
`
`devices, such as inhalers, vaporizers, nebulizers, etc., to deliver nicotine and
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`flavors. See, e.g., Ex.1006, Brooks at 3:15-29, Ex.1014, Voges at 3:7-15 and 9:53-
`
`10:21.
`
`
`2 At various points in this declaration I refer to my opinions about the knowledge or
`
`understanding of a person of ordinary skill in the art. All of these opinions should
`
`be understood to refer to the knowledge or understanding of a person of ordinary
`
`skill in the art as of May 16, 2006, unless specifically noted otherwise.
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`13
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`NU MARK Ex.1003 p.15
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`
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
`
`31. E-cigarettes differ from combustible cigarettes in the way
`
`aerosols are formed. In combustible cigarettes, the aerosol formation process is
`
`driven by the heat created by the combustion of tobacco. An e-cigarette generally
`
`is a device for electrically generating nicotine-based liquid aerosols for inhalation
`
`by a smoker. The liquid usually contains nicotine and a carrier as well as any
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`desired flavoring or other ingredients. The e-cigarette generally therefore includes
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`a means to store the liquid, a means to create aerosol and/or vapor from the liquid,
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`and an inhalation means that enables a person to inhale the aerosols/vapor on
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`demand.
`
`32. Well before May 2006, there were several known means to
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`store liquid in e-cigarettes and vaporizers. Among the earliest and best-known
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`means was to store and/or transport liquid in porous/fibrous bodies positioned
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`inside the device. See, e.g., Ex.1005, Whittemore at 1:53-2:18; Ex.1023,
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`Hayward-Butt at 1:25-27 (disclosing a “chamber containing fibrous absorbent
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`material for the volatile liquid analgesic”); Ex.1013, Gilbert at 3:23-34 (disclosing
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`a cartridge for an electronic simulated cigarette that “may be composed of a
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`porous, moisture-holding substance such as felt or plastic sponge”).
`
`33. Common
`
`techniques for converting
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`liquid
`
`into aerosols
`
`included using heating and/or piezoelectric elements. These components can be
`
`located in any part of the atomizer so as to contact liquid directly or indirectly. It
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`14
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`NU MARK Ex.1003 p.16
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`was also well known that these elements can be used independently or combined
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`together to convert liquid into aerosols. See, e.g., Ex.1014, Voges at 3:62-4:33,
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`10:50-65; Ex.1004, Takeuchi at Figs. 3-7. One very common method of creating
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`aerosolized liquid particles was to utilize heaters, with low thermal mass and
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`sufficient capacity to deliver the needed power, to rapidly vaporize the liquid.
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`Such heaters were able to rapidly reach temperatures that vaporized the
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`immediately surrounding liquid while the power is applied, and then rapidly cooled
`
`to stop the vaporization process once the power was removed. See, e.g., Ex.1006,
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`Brooks at 5:38-62.
`
`34.
`
`It would also have been well-known to a skilled person that
`
`heating elements came in different shapes, such as coils, straight wires or rods, thin
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`film wires, plates, etc. And, selecting any shape over another would have been an
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`obvious design choice. See, e.g., Ex.1004, Takeuchi at Figs. 3-7, Ex.1006, Brooks
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`at 1:19-32, 2:10-18, 2:42-3:4, 13:20-34; Ex.1005, Whittemore at Figs. 2-3.
`
`35. Widespread knowledge about the materials and shapes of the
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`heating elements would have advantageously allowed a skilled person to design
`
`and manufacture a low-cost and robust e-cigarette in the desired form factor.
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`Furthermore, a skilled person would have known that widely known orientation,
`
`location, and structure of these elements allowed most efficient design of an e-
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`cigarette based on several criteria, such as maximizing the contact of the heating or
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`15
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`NU MARK Ex.1003 p.17
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`piezoelectric element with the liquid material, maximizing efficiency of an e-
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`cigarette, minimizing air flow obstruction, etc. Therefore, it would have been
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`obvious to a skilled person to replace, combine, orient, or locate them in any
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`manner that suits a particular e-cigarette design, and a skilled person would have
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`recognized and found it obvious that each of these could be selected, utilized, and
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`applied with straightforward, predictable results.
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`36. Heater coils were particularly well-understood in the art of
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`electronic vaporization devices, and were known to provide high power density
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`and efficient and uniform heating. See, e.g., Ex.1015, Howell at 11:20-22 (“The
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`wire was wrapped in a fashion that produced close tight coils to insure good heat
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`transfer to the tube.”); see also Ex.1006 at 1:64-66, 2:40-43, 3:4-6. It was similarly
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`well-known to apply this feature of heater coils by wrapping it around a porous
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`material to generate vapor or aerosol (whether for inhalation or other purposes)
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`from liquid being transported due to capillary action within. See Ex.1005,
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`Whittemore at 1:53-2:18; Ex.1016, Smith at 20:36-40; Ex.1017, Eberhard at 4:73-
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`75.
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`37.
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`It was also well known that the elements described above can
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`be easily controlled by standard, low-cost electronic circuits. It was standard
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`practice to use these elements with circuits coupled with simple electronic sensors,
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`such as pressure actuated switches, etc. See, e.g., Ex.1006 at 9:51-62, 13:1-6;
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`16
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`NU MARK Ex.1003 p.18
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`
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`Ex.1014 at 6:8-11; Ex.1004 at 6:23-6:25. It was well-known that, for example,
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`sensors can detect conditions such as when negative pressure is generated within
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`the device by the act of inhalation. When the person places the e-cigarette to
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`his/her lips and inhales, it draws air into the device. The airflow creates a pressure
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`drop through the e-cigarette that is detected by the pressure sensor and signals to
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`the electronic circuit the need to power the piezoelectric or heating elements and
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`generate aerosol. See Ex.1006 at 10:42-45. Further, it was well-known that logic
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`within the circuit can be applied to apply power to any e-cigarette components
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`such as the aerosol generator at the desired time, duration, rate, and level. See,
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`e.g., id. at 13:62-14:34; Ex.1014 at 6:52-57; Ex.1004 at 6:55-59. A skilled person
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`would have understood that control circuits, whether digital or analog, and
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`including commonplace components of electronic circuits, such as sensors, LEDs,
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`microchips, microprocessors, Read Only Memory (ROM), Read and Write
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`Memory (RAM), clocks, power supply and the like, or a combination of any of the
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`above, are typically implemented on an electronic circuit board and thus
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`necessarily, and inherently, include electronic circuit boards. See, e.g., Ex.1018,
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`Ghosh (a method of attaching a microchip to a circuit board patent); Ex.1019,
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`Wood (an inhaler device patent); Ex.1021, Bremenour (a memory cartridge for a
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`circuit board patent). In the alternative, these components are widely available
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`17
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`NU MARK Ex.1003 p.19
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`and an ordinarily skilled person would have found it obvious to combine and use
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`them in any way necessary.
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`38. The use of basic mechanical connecting means, including plugs
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`or fitting pairs and screwthreads were well-known in the art in 2006, because such
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`connectors are among the fundamental building blocks of mechanical engineering.
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`See generally Ex.1022, Messler, Joining of Materials and Structures (2004)
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`(“Messler”) at p.3-4. It had been known since the dawn of the electrical age,
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`moreover, that such mechanical connections—including screwthreads—could also
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`be used to provide electrical conductivity. See, e.g., Ex.1020, U.S. Pat. No.
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`438,310 to Edison at 1:66-72 (filed May 5, 1890) (“Referring to Fig. 6, it will be
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`seen that if the base of the lamp be screwed into the socket the sleeve 1 would form
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`electrical contact with the socket-sleeve 7, connected to one wire of the circuit,
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`while the plug or terminal 6 would make end contact with the screw 8, connected
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`to the other wire of the circuit.”).
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`39.
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`It was also well-known as of 2006 that these basic building
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`blocks of mechanical and electrical engineering could be applied to detachably
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`connect separate assemblies housing some of the components of e-cigarettes or
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`electronic vaporizing devices described above and, in some cases, electrically
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`linking the assemblies. See.,e.g., Ex.1006, Brooks at 9:41-46 (plug connector
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`providing mechanical and electrical connection); Ex.1005, Whittemore at 1:39-45
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`18
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`NU MARK Ex.1003 p.20
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`

`
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`(screwthreads providing mechanical and electrical connection); Ex.1014, Voges at
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`5:48-55 (screwthreads linking “body parts 2,3”); Ex.1007, Susa at 5:26-29 (plug
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`connection optionally replaced by screwthreads).
`
`40.
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`It was also well-known in 2006 that e-cigarettes and electronic
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`vapor devices could be powered using rechargeable batteries. See, e.g., Ex.1004,
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`Takeuchi at 6:15-17; Ex.1007, Susa at 8:43-45. It was further known that such
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`batteries were preferable in order to reduce expenses and the interruption of
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`operations caused by replacement. See Ex.1024, Connors at 1:21-23. It was
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`further known that such batteries could be recharged using threaded connectors.
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`Id. at 3:59-66.
`VIII. UNDERSTANDING OF THE GOVERNING LAW
`41.
`I have been advised that if each and every element or step of a
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`claim is disclosed within the “four corners” of a prior art reference, that claim is
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`said to be “anticipated” by that single prior art reference and is invalid under 35
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`U.S.C. § 102 because the claimed invention is not, in fact, new or novel.
`
`42.
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`I also have been advised that a prior art reference can disclose a
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`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
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`reference if the missing descriptive matter must necessarily be present, and it
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`would be so recognized by a person of ordinary skill in the art. I also understand
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`19
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`NU MARK Ex.1003 p.21
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`
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`that inherency cannot be established by probabilities or possibilities, and that the
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`Petition for Inter Partes Review of 9,339,062
`Ex.1003 (“Collins Decl.”)
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`mere fact that something may result from a given set of circumstances is not
`
`sufficient to show inherency.
`
`43.
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`I also have been advised that a prior art document can disclose a
`
`claim feature, and anticipate a claimed invention, if that feature is described in
`
`another document that has been incorporated by reference. I understand that, to
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`incorporate by reference, the host document must identify with detailed
`
`particularity what specific material it incorporates and clearly indic