UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Clark S. Cheney
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN TOBACCO HEATING
`ARTICLES AND COMPONENTS
`THEREOF
`
`Investigation No. 337-TA-1199
`
`RESPONDENTS’ PREHEARING BRIEF
`
`Ex. 2003-0001
`
`

`

`11-14, 16-19, 21, 23-26 for the same reasons explained above with respect to the Ruyan e-Cigars
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`that Complainants reverse engineered.390
`
`4.
`
`Hon ’043 Alone and in Combination with Secondary References
`Invalidates Claims 1-7, 9, 11-19, 21, 23-26
`
`Chinese Patent No. 2719043Y, RX-0088, RX-0103391 (“Hon ’043”) anticipates and/or
`
`renders obvious all of the DI Claims along or together with secondary references. Hon ’043 was
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`issued to Hon Lik, the inventor of the Ruyan e-Cigar discussed above. Complainants stipulated
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`that Hon ’043 is prior art to the ’123 patent under 35 U.S.C. § 102(b). JX-0011C, ¶ 98. Hon ’043
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`taught a vaping device with a battery (green), puff-sensor and electrical control electronics
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`(orange), a heater/wick atomizer (pink), and a removable mouthpiece/cartridge assembly (blue)
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`that contained liquid extract and glycerin (brown).392
`
`(1)
`
`Claim 1/15: preamble
`
`The preamble of claims 1 and 15 states: “An electrically-powered, aerosol generating
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`smoking article comprising.” No party in this Investigation contends these preambles are limiting,
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`and Complainants stipulated that Hon ’043 discloses this limitation.393
`
`390 RX-0210; RX-0165C; RX-166C; JX-0011C at ¶ 95, 97.
`391 RX-0088 is a certified translation of Hon ’043 used by Complainants in R.J. Reynolds Vapor
`Co. v. Fontem Holdings 1 B.V., IPR2016-01268. RX-0103 is a certified translation of Hon ’043
`produced by Respondents.
`392 RX-0088, RX-0103 at Figure 1 (annotated).
`393 JX-0011C at ¶¶ 99, 101.
`
`131
`
`Ex. 2003-0002
`
`

`

`(2)
`
`Claim 1/15[a]: an electrical power source
`
`Claim 1 recites: “an electrical power source within a tubular outer housing having a mouth-
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`end and an end distal to the mouth-end.” Claim 15 is nearly identical, but adds that the electrical
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`power source is a battery: “an electrical power source in the form of a battery within a tubular
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`outer housing having a mouth-end and an end distal to the mouth-end.” Complainants stipulated
`
`that Hon ’043 discloses these limitations.394
`
`(3)
`
`Claim 1/15[b]: electrical resistance heater
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`Limitation (b) in claims 1 and 15 both recite: “at least one electrical resistance heater
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`powered by said electrical power source.” Complainants stipulated that Hon ’043 discloses this
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`limitation.395
`
`(4)
`
`Claim 1/15[c]: puff-actuated controller
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`Limitation [c] of claims 1 and 15 both recite:
`
`a puff-actuated controller within the tubular outer housing and adapted for
`regulating current flow through the electrical resistance heater during draw, the
`controller comprising a sensor adapted for sensing draw on the smoking article by
`a user.
`
`Complainants stipulated that Hon ’043 discloses “a puff-actuated controller within the tubular
`
`outer housing” and “the controller comprising a sensor adapted for sensing draw on the smoking
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`article by a user.”396 Thus, the only dispute with respect to limitation [c] of claims 1 and 15 is
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`whether Hon ’043 discloses that the controller is “adapted for regulating current flow through the
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`electrical resistance heater during draw.”
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`Hon ’043 disclosed a controller that was adapted for regulating current flow through the
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`electrical resistance heater during draw. Mr. Fox will explain that when the reed (pressure) switch
`
`394 Id.
`395 Id.
`396 Id.
`
`132
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`Ex. 2003-0003
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`

`

`K1 closes, Hon ’043’s field effect transistor (“FET”) U1 turns on, and the battery energies the
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`heater “RL”.397
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`Mr. Fox will further testify that when field effect transistor U1 is turned on as described above,
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`current flows through heating element RL. Current flow continues until the user stops drawing on
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`the device, when K1 opens and turns off FET U1. Hon ’043 at 6 (“[W]hen K1 is closed, U1, i.e.
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`the field effect transistor, is turned on; RL starts”). This functionality alone meets this limitation.
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`In addition to starting/stopping current flow when the user’s puff (or draw) starts and stops,
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`the evidence will show that Hon ’043’s circuit also regulates current in that it stops current flow if
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`voltage drops below a certain level, including during a puff/draw. Specifically, if battery voltage
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`is too low, circuit element U2 will turn off FET U1 (even if K1 is shut), and thus stop current flow
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`through the heaters.398
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`As with the Ruyan e-Cigar, Complainants argue that Hon ’043 does not disclose this
`
`limitation because it does not actively control the heater’s temperature during draw. As explained
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`above, this interpretation of the claim language is overly narrow and incorrect. Furthermore, Hon
`
`397 RX-0088, RX-0103 at Figure 12 (color added).
`398 RX-0088, RX-0103 at 6 (describing the “the low voltage detection element for over-discharge
`protection of the lithium ion battery”).
`
`133
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`Ex. 2003-0004
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`

`

`’043 discloses current regulating functionality such as over discharge protection that was operable
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`“during draw,” in addition to turning the current on/off in response to the change in pressure.
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`Nevertheless, Mr. Fox is expected to testify that a POSA would have been motivated to
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`improve the electronic control circuitry in Hon ’043 with a more sophisticated system like the one
`
`disclosed by Brooks. Mr. Fox is further expected to explain that the system taught by Brooks
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`would allow the use of a high-powered heater that can rapidly heat up to the optimum temperature
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`(providing the optimum rate of aerosol generation sooner), and then maintain that optimum
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`temperature by reducing the current (or more precisely, average current) for the remainder of the
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`puff.399 Mr. Fox will provide additional details on the motivation to combine and reasonable
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`expectation of success, as set forth above with respect to the Ruyan e-Cigar.
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`Mr. Fox will also testify that Hon ’043 improved with the control system taught by Brooks
`
`meets this limitation, even under Complainants’ narrow interpretation of it. Furthermore, the ’123
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`patent admits that Brooks disclosed suitable types of electronic control components and airflow
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`sensing mechanisms as claimed.400 Complainants have stipulated that Brooks discloses “a puff-
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`actuated controller within the tubular outer housing and adapted for regulating current flow
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`through the electrical resistance heater during draw, the controller comprising a sensor adapted for
`
`sensing draw on the smoking article by a user.”401 Therefore, the only issue is whether a POSA
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`would have been motivated to use Brooks’ controller. The record evidence will demonstrate that
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`POSA would have been motivated to use Brooks’ controller and had a reasonable expectation of
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`success.
`
`(5)
`
`Claim 1/15[d]: rod-shaped carrier device
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`399 RX-0001 at 5:1-38 (also noting that maximum aerosol generation may be achieved in 0.5
`seconds or less).
`400 JX-0002 at 20:33-60.
`401 JX-0011C at ¶ 106.
`
`134
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`Ex. 2003-0005
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`

`

`Limitation (d) in claims 1 and 15 recite:
`
`“a rod-shaped carrier device removably engaged with the mouth-end of the tubular
`outer housing and comprising a cartridge providing a liquid storage compartment
`containing a mixture comprising a tobacco extract comprising nicotine and an
`aerosol-forming material selected from glycerin, propylene glycol, or a mixture
`thereof, the mixture absorbed within an absorbent fibrous wicking material, the
`cartridge having a generally tubular shape and adapted for airflow therethrough.”
`
`Complainants stipulated that Hon ’043 discloses this limitation in both claims 1 and 15.402
`
`(6)
`
`Claim 1/15[e]: wicking into contact with the heater
`
`Limitation (e) in claims 1 and 15 recite:
`
`“wherein the rod-shaped carrier device is operatively positioned such that, during
`draw, the mixture comprising the tobacco extract and the aerosol-forming material
`can be wicked into contact with the electrical resistance heater and volatilized to
`produce a visible mainstream aerosol incorporating tobacco components or
`tobacco-derived components that can be drawn into the mouth of the user of the
`smoking article.”
`
`Complainants stipulated that Hon ’043 discloses this limitation with the exception of “wicked into
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`contact with the electrical resistance heater” (italicized above).403 The central dispute with respect
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`to this limitation is whether it requires “the absorbent fibrous[wicking] material” to be in direct
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`contact with the electrical resistance heater. Complainants argue that it does, but they are incorrect
`
`for multiple reasons.
`
`As discussed above with respect to the Ruyan e-Cigar, Mr. Fox will explain that a POSA
`
`reading the claims would understand that the fibrous/wicking material in claims 1 and 15 may be
`
`(i) “positioned in proximity to” the heater, or (ii) it may be “in contact with” the heater. Mr. Fox
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`is expected to explain that Hon ’043 alone taught that the fibrous/wicking material (porous body
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`27) in Hon ’043 is “positioned in proximity to the at least one electrical resistance heater” and
`
`402 Id. at ¶¶ 99, 101.
`403 Id.
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`135
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`Ex. 2003-0006
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`

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`therefore meets this limitation. Mr. Fox will testify that the bulge in Hon ’043’s atomizer 10
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`protrudes into bottle 11 and wicks the liquid mixture out of the bottle.404
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`As Hon ’043 puts it, “[t]he liquid storing porous body 28 in the liquid-supplying bottle 11 is in
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`contact with the bulge 36 on the atomizer 9 to realize the solution supply via capillary
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`infiltration.”405 When the user draws on the device, the liquid “solution in the porous body 27 is
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`driven by the high-speed airflow … and ejected in the form of droplets into the atomization cavity
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`10,” where it contacts “heating element 26” and volatilized into an aerosol “which is sucked out
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`via the aerosol passage 12, gas vent 17, and the mouthpiece 15.”406 Therefore, Hon ’043 alone
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`teaches this limitation.
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`Furthermore, Mr. Fox will also explain that a POSA would have been motivated to modify
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`Hon ’043 using the heater/wick assembly taught by Whittemore. In addition to the reasons
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`explained above with respect to the Ruyan e-Cigar, Mr. Fox will further testify that Hon ’043
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`expressly suggests “simplify[ing] the design” by removing the piezoelectric element and atomizing
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`the liquid with the heating element only.407 Mr. Fox will testify that eliminating the piezoelectric
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`element would also eliminate the associated circuitry, including the “Colpitts oscillator”
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`comprising circuit elements “C1, C2, R3, L1, C3, BG, and M1.”408 Mr. Fox is expected to testify
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`404 RX-0088, RX-0103 at Figure 1 (color added); id. at Fig. 6 (color added).
`405 Id. at 7.
`406 Id.
`407 Id.
`408 Id. at 6-7.
`
`136
`
`Ex. 2003-0007
`
`

`

`
`
`that a POSA would have taken Hon ’043’s advice and known that Whittemore’s heater/wick
`
`design was a suitable choice and would have had a reasonable expectation of success.
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`Furthermore, the Patent Trial and Appeal Board has already confirmed a POSA would have
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`been motivated to combine Hon ’043 with Whitttemore as explained here. As an IPR petitioner,
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`R.J. Reynolds Vapor Co. (“RJRV”), unsuccessfully asserted Hon ’043 as prior art in an IPR to
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`challenge one of Hon’s U.S. patents. R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`
`IPR2016-01268, Paper 63, 2017 WL 6513982 (December 19, 2017). RJRV sought a combination
`
`that retained Hon’s porous body atomizer (annotated in pink above) and added a wick to Hon’s
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`heater to meet the limitations of the claims it was challenging. The Board rejected RJRV’s
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`proposed combination. It found that RJRV failed to show that a POSA would have “add[ed]
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`Whittemore’s wick and retain[ed] [Hon]’s porous body” because a far simpler substitution would
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`have been “to remove the entire atomizer in [Hon] and replace it with Whittemore’s wirewrapped
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`wick.” R.J. Reynolds Vapor Co., 2017 WL 6513982 at *7-8. The Board’s “far simpler
`
`substitution” is correct.
`
`Claim 2 recites:
`
`(7)
`
`Claim 2: glycerin or propylene glycol
`
`2. The smoking article of claim 1, wherein the aerosol-forming material comprises
`glycerin, propylene glycol, or a mixture thereof.
`
`Complainants have stipulated that Hon ’043 discloses this limitation.409
`
`(8)
`
`Claims 3 and 16: flavoring agent
`
`Claims 3 and 16 recite:
`
`3[16]. The smoking article of claim 1[15], wherein the mixture further comprises a
`flavoring agent.
`
`
`409 JX-0011C at ¶ 100.
`
`
`137
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`Ex. 2003-0008
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`

`

`Complainants have stipulated that Hon ’043 discloses this limitation.410
`
`(9)
`
`Claims 4 and 17: menthol
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`Claims 4 and 17 limit the flavoring agent to menthol. They recite:
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`4[17]. The smoking article of claim 3[16], wherein the flavoring agent comprises
`menthol.
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`It would have been obvious to add menthol as a flavoring agent. Mr. Fox will explain that
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`menthol has long been a traditional flavoring agent for tobacco because consumers demand it. In
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`fact, menthol is “[p]erhaps the best known and most widely accepted ‘top flavor’ applied to
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`tobacco.”411 The ’123 patent acknowledges this basic fact.412 Accordingly, a POSA would have
`
`been motivated to add menthol flavoring to satisfy consumer preference. Mr. Fox will also explain
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`that other prior art taught using menthol as a flavoring agent in a device similar to Hon ’043. Susa
`
`[0001], [0029]-[0030]. And as discussed above, persons of ordinary skill in fact did use menthol
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`as a flavoring agent in prior art vaping devices, such as the Ruyan e-Cigar.413 Complainants’
`
`expert, Mr. Clemens, does not refute that it would have been obvious to use menthol in Hon ’043.
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`For all of the above reasons, a POSA would have reasonably expected success in using menthol
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`as a flavorant in Hon ’043, and would have done so to satisfy consumer demand.
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`(10) Claims 5 and 18: organic acid
`
`Claims 5 and 18 recite:
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`5[18]. The smoking article of claim 1[15], wherein the mixture further comprises
`an organic acid.
`
`410 Id. at ¶¶ 100, 102.
`411 RX-0085 at 2:3-4; RX-0108 (U.S. Patent No. 4,284,089 (“Ray”)) at 4:20-27 (adding menthol
`to a vaping device in 1981). Moreover, Complainants stipulated that Ray is prior art to the ’123
`patent under 35 U.S.C. § 102(b). See JX-0011C at ¶ 107.
`412 JX-0002 at 11:17-35.
`413 RX-0166C.
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`138
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`Ex. 2003-0009
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`

`

`Complainants have stipulated that Hon ’043 discloses this limitation. JX-0011C, ¶¶ 100,
`
`102.
`
`(11) Claim 6 and 19: types of nicotine
`
`Claims 6 and 19 recite:
`
`6[19]. The smoking article of claim 1[15], wherein the mixture comprises
`essentially pure nicotine, extracts composed predominantly of nicotine, or
`formulations composed predominantly of nicotine.
`
`Mr. Fox will explain that Hon ’043’s disclosed mixture is “0.4-3.5% nicotine, tobacco flavor 0.05-
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`2%, organic acid 0.1-3.1 %, antioxidant 0.1-0.5%, and the rest is 1, 2-propylene glycol.” Thus,
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`under Reynolds’ contention that 3% nicotine practices this claim, Hon ’043 alone is sufficient.
`
`Complainants argue that Hon’s disclosure of nicotine percentages is insufficient, which is
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`incorrect for the same reasons explained above with respect to the Ruyan e-Cigar. Nevertheless,
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`Hon ’043 does not disclose that the nicotine contained any impurities, nor would a POSA have
`
`sought to add any. Furthermore, a POSA would have made that mixture by combining pure
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`ingredients in the desired ratios to arrive at the desired nicotine strength and flavor profile.414 Mr.
`
`Fox is expected to testify that POSA seeking to make vaping liquids with different flavors with
`
`different nicotine levels would have used essentially pure nicotine, such as that taught in Ray, to
`
`be able to achieve different strengths and flavor profiles when formulating Hon ’043’s mixtures
`
`(which dilute the nicotine until the nicotine is below 3.5% of the composition). Complainants’
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`expert, Mr. Clemens, does not refute that it would have been obvious to use the formulation
`
`disclosed by Ray, or that doing so would have met this limitation.
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`(12) Claim 7: synthetic polymer fibrous material
`
`Claim 7 recites:
`
`414 RX-0108 at 6:65-7:1, 7:42-45 (showing that 98% nicotine, “stock number 1242” from
`“Eastman” was commercially available).
`
`139
`
`Ex. 2003-0010
`
`

`

`
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`7. The smoking article of claim 1, wherein the absorbent fibrous material comprises
`a synthetic polymeric material.
`
`Complainants have stipulated that Hon ’043 discloses this limitation.415
`
`(13) Claims 9, 21: plastic cartridge
`
`Claims 9 and 21 recite:
`
`9[21]. The smoking article of claim 1[15], wherein the cartridge is made from
`paper, plastic, or heat conductive materials.
`
`Mr. Fox is expected to testify that it would have been obvious to make Hon ’043’s bottle 11 out
`
`of plastic. Mr. Fox will explain that a POSA would have known that Ruyan made its cartridges
`
`out of plastic as early as 2004, and would have been motivated to try that same material because
`
`it had already been demonstrated to work.416
`
`Complainants’ expert, Mr. Clemens, does not refute that using plastic for Hon ’043’s
`
`cartridge would have been obvious.
`
`(14) Claims 11, 23: electrically conductive cartridge
`
`Claims 11 and 23 recite:
`
` “[t]he smoking article of claim 1[15], wherein the cartridge is electrically
`conductive.”
`
`This limitation was obvious. As explained above with respect to the Ruyan e-Cigar, the evidence
`
`will show that it would have been obvious for a POSA implementing Hon ’043 to try a variety of
`
`materials, including metals that were electrically conductive. Complainants argue that this claim
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`requires showing that the cartridge conducted electricity as part of a functioning circuit, but this is
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`again incorrect.
`
`
`415 JX-0011C at ¶ 100.
`416 See RX-0102.
`
`
`140
`
`Ex. 2003-0011
`
`

`

`(15) Claim 12: carrier is removably engaged
`
`Claim 12 recites:
`
`12. The smoking article of claim 1, wherein the rod-shaped carrier device is
`removably engaged with the mouth-end of the tubular outer housing.
`
`Complainants have stipulated that Hon ’043 discloses this limitation.417
`
`(16) Claim 13: glycerin, tobacco extract, and a flavoring agent
`
`Claim 13 recites:
`
`13. The smoking article of claim 1, wherein the mixture comprises glycerin,
`tobacco extract, and a flavoring agent.
`
`This limitation was obvious. Hon ’043’s e-cigarette mixture “contains 0.4-3.5% nicotine,”
`
`a tobacco extract, “tobacco flavor 0.05-2%,” a flavoring agent, and “1, 2-propylene glycol” as its
`
`aerosol precursor.418 As explained with respect to claims 4 and 17, it would have been obvious to
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`add menthol as an additional flavoring agent to Hon ’043’s mixture.
`
`Mr. Fox will also explain that Hon ’043 uses propylene glycol instead of glycerin or a
`
`mixture of the two as its aerosol-forming substance. However, a POSA would have understood
`
`that these are both (alone or mixed) long, well-known aerosol-forming substances that had long
`
`been used.419 Thus, this limitation was obvious and Complainants’ expert, Mr. Clemens, does not
`
`argue otherwise.
`
`(17) Claims 14 and 24: absorbent fibrous material in contact
`with heater
`
`Claims 14 and 24 recite:
`
`417 JX-0011C at ¶ 100.
`418 RX-0088, RX-0103 at 8; see also discussion supra at claim 1/15[d].
`419 RX-0743 at 11:16-33 (preferably aerosol-forming substances include glycerin or propylene
`glycol, or “more prefer[ably] … a mixture of glycerin and propylene glycol.”); RX-0090 at [0029]
`(using “glycerin or propylene glycol, or their mixture” as the aerosol-generating substance).
`
`141
`
`Ex. 2003-0012
`
`

`

`14[24]. The smoking article of claim 1[15], wherein the absorbent fibrous material
`is in contact with the electrical resistance heater.
`
`As explained above, the combination of Hon ’043 and Whittemore teaches this claim element
`
`because Whittemore’s wick is in contact with the heater. Complainants have stipulated that
`
`Whittemore discloses this limitation.420
`
`(18) Claim 25: wick in proximity to heater
`
`Claim 25 recites:
`
`25. The smoking article of claim 15, wherein the absorbent wicking material is
`positioned in proximity to the at least one electrical resistance heater.
`
`As explained with respect to Element 1/15[e], Hon ’043 (if not modified) teaches this claim
`
`element because the metal mesh wicking material is in proximity to the heater. Mr. Fox is expected
`
`to testify that, in addition, the combination of the Reynolds Ruyan e-Cigar and Whittemore teach
`
`this element because Whittemore’s wick is in proximity to the heater. Complainants have
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`stipulated that Whittemore teaches this limitation.421
`
`(19) Claim 26: air passageway along length of cartridge
`
`Claim 26 recites:
`
`26. The smoking article of claim 15, wherein an air passageway extends along the
`length of the cartridge.
`
`Mr. Fox will explain that Hon ’043 had an a air passageway that extended along the length of the
`
`cartridge.422
`
`420 JX-0011C at ¶ 104.
`421 Id.
`422 RX-0088, RX-0103 at Fig. 1 (annotated, excerpted).
`
`142
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`Ex. 2003-0013
`
`

`

`
`
`
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`As explained when discussing claim 1/15[d], the airflow through Hon ’043 includes a passageway
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`in the assembled device that extends along the length of the cartridge, including between the liquid
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`bottle and the outer housing (“aerosol passage 12”), through vent 17, and out mouthpiece 15.
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`Complainants incorrectly argue that the only air passageway is in the mouthpiece (vent 17),
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`ignoring Hon ’043’s express disclosure of aerosol passage 12.
`
`5.
`
`The Domestic Industry Claims Are Invalid for Lack of Written
`Description
`
`The ’123 patent specification does not disclose a “rod-shaped carrier device engaged”
`
`(“removably” or otherwise) with the “mouth-end of [a] tubular outer housing” that “provid[es] a
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`liquid storage compartment” as recited by claims 1 and 15. Rivera v. Int'l Trade Comm’n, 857 F.3d
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`1315, 1322–23 (Fed. Cir. 2017) (claims invalid for lack of written description where “the
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`specification fails to teach a potential configuration of elements”). The only “rod-shaped carrier
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`device” disclosed contains “tobacco material,” not liquid.423 And the only embodiment that
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`discloses using liquid at all is described in the context of Figure 1. The embodiments described in
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`Figures 2 and 3 use a “cigarette 150” that “possesses a charge or roll of tobacco 89.424 The
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`evidence will show that the smoking article disclosed in Figure 1, at best, contained a cartridge
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`inside the housing 20, not “engaged with the mouth-end of the tubular outer housing,” as claimed.
`
`
`423 JX-0002 at 7:30-8:22, Fig. 3.
`424 Id. at 24:57-60.
`
`
`143
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`Ex. 2003-0014
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`

`

`IX.
`
`CONCLUSION
`
`For the reasons set forth above, and as will be shown during the evidentiary hearing,
`
`Respondents respectfully request that no violation of Section 337 be found and no remedies issued.
`
`Dated: December 11, 2020
`
`Respectfully submitted,
`
`/s/ Bert C. Reiser
`Maximilian A. Grant
`Bert C. Reiser
`Jamie D. Underwood
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W.
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Brenda L. Danek
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Telephone: (312) 876-7700
`Facsimile: (312) 993-9767
`
`Counsel for Respondents
`
`270
`
`Ex. 2003-0015
`
`