CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Clark S. Cheney
`Administrative Law Judge
`
`In the Matter of
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`CERTAIN TOBACCO HEATING
`ARTICLES AND COMPONENTS
`THEREOF
`
`Investigation No. 337-TA-1199
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`RESPONDENTS’ JOINT DISCLOSURE OF FINAL CONTENTIONS IN RESPONSE
`TO INDIVIDUAL INTERROGATORY NO. 12
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`I.
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`INTRODUCTION
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`Respondents Altria Client Services LLC, Altria Group, Inc., Philip Morris USA Inc., Philip
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`Morris International Inc., and Philip Morris Products S.A. (collectively, “Respondents”) provide
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`the following final contentions in response to Individual Interrogatory No. 12.
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`Complainants assert claims from U.S. Patent No. 9,839,238 (“the ’238 patent”); U.S. Patent
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`No. 9,930,915 (“the ’915 patent”); and U.S. Patent No. 9,901,123 (“the ’123 patent”) (collectively,
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`“the Asserted Patents”). In particular, Complainants allege that Respondents infringe claim 19 of
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`the ’238 patent; claims 1, 2, 3, and 5 of the ’915 patent; and claims 27-30 of the ’123 patent
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`(collectively, “the Asserted Claims”). Complainants also contend that their Domestic Industry
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`Products practice claims 1-3, 5-11, 13, 15-16, 18-21 of the ’238 patent; claims 1-4 of the ’915
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`patent; and claims 1-7, 9, 11-19, 21, 23-26 of the ’123 patent (collectively, “the Domestic Industry
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`Claims”). Respondents’ final contentions address the Asserted Claims and the Domestic Industry
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`Claims of the Asserted Patents.
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`Ex. 2005-0001
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`contend that the VUSE Vibe practices the Domestic Industry Claims of the ’123 patent.
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`Consequently, under Complainants’ own contention, the VUSE Vibe anticipates those claims.
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`4.
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`35 U.S.C. §§ 102, 103 (pre-AIA and AIA)
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`a.
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`Anticipation & Obviousness
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`Prior art references and systems that anticipate and/or render obvious the Asserted and
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`Domestic Industry Claims of the ’123 patent are identified above and in accompanying exhibits,
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`which, as noted, are incorporated by reference as if fully set forth herein. The exhibits provided
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`identify how the prior art discloses and/or renders obvious each and every element of the Asserted
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`and/or Domestic Industry Claims of the ’123 patent, and discloses and/or renders obvious those
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`claims as a whole. To the extent an element or claim is not anticipated, the claim is rendered
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`obvious by combination with one or more other prior art references identified, including as mapped
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`in the accompanying exhibits.
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`Furthermore, to the extent a finder of fact determines that a limitation of any of the Asserted
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`and/or Domestic Industry Claims of the ’123 patent is not disclosed by one of the references,
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`products, and/or systems identified above, the claims are nevertheless unpatentable as obvious
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`because they contain nothing that constitutes patentable innovation. No asserted claim goes
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`beyond combining familiar elements according to known methods to achieve predictable results,
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`or does more than choose between clear alternatives known to those of ordinary skill in the art.
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`The Asserted and/or Domestic Industry Claims would have been obvious to a POSA over
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`at least the following combinations:
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`
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`
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`
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`The Accord in combination with the Bullet Heater, Hajaligol, Adams, Morgan,
`and/or Park
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`Ruyan e-Cigar alone or in combination with Hon ’043, Whittemore, Tiffany, Susa,
`Mays, Gori, Ray, Hon ’955, Takeuchi, Tamaoki, Sensabaugh, and/or Jakob
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`Ruyan e-Cigarette alone or in combination with Hon ’957, Hon ’043, Whittemore,
`Tiffany, Susa, Mays, Gori, Ray, Hon ’955, Takeuchi, Tamaoki, Sensabaugh, and/or
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`92
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`Ex. 2005-0002
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`Jakob
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`
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`
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`
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`
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`
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`Hajaligol alone or in combination with the Bullet Heater, Adams, and/or Brooks
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`Morgan alone or in combination with the Bullet Heater
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`Hon ’043 alone or in combination with Whittemore, Tiffany, Susa, Mays, Gori,
`Ray, Hon ’955, Takeuchi, Tamaoki, Sensabaugh, and/or Jakob
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`Yang alone or in combination with Hon ’043, Whittemore, Tiffany, Susa, Mays,
`Gori, Ray, Hon ’955, Takeuchi, Tamaoki, Sensabaugh, and/or Jakob
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`Hon ’957 alone or in combination with Hon ’043, Whittemore, Tiffany, Susa,
`Mays, Gori, Ray, Hon ’955, Takeuchi, Tamaoki, Sensabaugh, and/or Jakob
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`Reasons a person of ordinary skill in the art would have known and been motivated to make these
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`and other combinations are discussed more immediately below, in Section IV.C.4.b.
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`With respect to claim 27, Complainants appear to contend that the prior art does not
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`disclose “the elongated portion of the resistance heating element positioned proximal to the center
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`of the outer housing.” Instead, Complainants allege the prior art heating elements are “away” from
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`the center, not “at or near” the center as they interpret the claim limitation to require. However,
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`Complainants provide no criteria for drawing this distinction, and provide no explanation for how
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`they interpret the scope of this claim. The ’123 patent also provides no guidance whatsoever to
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`determine whether the elongated portion of the heater is “proximal” to the center of the outer
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`housing. As named co-inventor Billy Conner testified, Complainants appear to simply “eyeball[]
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`it.” Conner Dep. Tr. at 110:1-117:1. To the extend Complainants’ criteria provides reasonable
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`certainty as to the scope of this claim, Respondents’ prior art meets this limitation.
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`With respect to claims 1 and 15, Complainants appear to contend that the “carrier device
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`is operatively positioned such that … the mixture … can be wicked into contact with the electrical
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`resistance heater” requires direct contact between the tobacco extract and aerosol-forming material
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`mixture and the electrical resistance heater. However, claims 14, 24, and 25 recite that the wicking
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`material may be in proximity to the heater or in contact with the heater. Because claims 14, 24,
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`93
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`Ex. 2005-0003
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`and 25 depend from claims 1 and 15 (respectively), a person of ordinary skill reading the claims
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`would understand that the fibrous/wicking material in claims 1 and 15 may be positioned “in
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`proximity to” the heater or it may be “in contact with” the heater. Claims 1 and 15 also require the
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`fibrous/wicking material to “wick[]” the mixture “into contact with the heater.” This is true even
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`if the fibrous/wicking material itself is “in proximity to,” and thus not “in contact with,” the heater.
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`Thus, a POSA reading the claims would understand that “wick[ing]” the mixture “into contact
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`with the heater” may be performed even if the wick does not contact the heater, but is merely “in
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`proximity to” the heater.
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`b.
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`Teaching, Suggestion, or Motivation to Combine References
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`Respondents contend that no specific motivation to combine the references identified
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`above is necessary for references identified in these contentions to render the Asserted and
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`Domestic Industry Claims invalid. Nevertheless, Respondents identify exemplary (and not
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`exhaustive) motivations and reasons to combine the cited art.
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`First, a person of ordinary skill in the art would have been motivated to combine one or
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`more of the references identified above because they all relate to common objectives and subject
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`matter. The references share commonalities in terms of their general subject matter, as well as the
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`types of equipment, products, and/or approaches they describe. Moreover, a person of ordinary
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`skill would have been motivated to combine the references based on the nature of the problem to
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`be solved, the teachings of the prior art, and their own knowledge. The identified prior art
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`addresses the same or similar technical issues and suggests the same or similar solutions to those
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`issues. To the extent Complainants challenge a combination of prior art with respect to a particular
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`element, Respondents may supplement these contentions to further specify a motivation to
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`combine. In doing so, Respondents may rely on cited or uncited portions of the prior art, other
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`94
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`Ex. 2005-0004
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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` “the elongated portion of the resistance heating element positioned proximal to
`the center of the outer housing”
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`’123 patent, cl. 27. A person of ordinary skill would not understand with reasonable
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`certainty the scope of this claim limitation, in particular when an elongated portion of a resistance
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`heating element is, or is not, positioned “proximal” to the center of the smoking device’s outer
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`housing. For example, ’123 patent co-inventor Billy Conner, Reynolds’ Director of Carbon
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`Tipped Heated Products, confirmed that in order to determine if an elongated portion of a
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`resistance heating element is position at, near, or away from the center of the outer housing he
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`would “eyeball[] it.” Conner Dep. Tr., Exs. 10-11 (and surrounding testimony). Thus, the criteria
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`for choosing whether the elongated portion of the resistance heating element is “proximal” to the
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`center of the outer housing is “highly subjective.” Interval Licensing LLC v. AOL, Inc., 766 F.3d
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`1364, 1371 (Fed. Cir. 2014). Therefore, the term “might mean several different things and ‘no
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`informed and confident choice is available among the contending definitions.” Id. (quoting
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911, 134 S. Ct. 2120, 2130 (2014).)
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`Respondents reserve the right to supplement their final contentions through expert
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`discovery.
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`
`Dated: September 18, 2020
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`
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`
`
`
`
`By: Maximilian A. Grant
`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
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`107
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`Ex. 2005-0005
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`Chicago, IL 60611
`Telephone: (312) 876-7700
`Facsimile: (312) 993-9767
`
`Counsel for Respondents Altria Client Services
`LLC, Altria Group, Inc., Philip Morris USA, Inc.,
`Philip Morris International Inc., and Philip Morris
`Products S.A.
`
`108
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`Ex. 2005-0006
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`

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`1
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`1 A certified translation of Hon ’043 is provided as Attachment 1.
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`inlet 4, passes through the sensor airflow channel 18, and flows into the atomization
`Hon ’043 at 7: (“Air enters into the normal pressure cavity 5 via the air
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`particular an atomizer electronic cigarette containing no tar and only nicotine.”)
`Hon ’043 at 4: (“The present utility model relates to an atomizer electronic cigarette, in
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`successively.”)
`separator, atomizer, aerosol passage, gas vent, and mouthpiece are connected
`electronic cigarette containing no tar…the air inlet, normal pressure cavity, vapor-liquid
`Hon ’043, Abstract: (“The present utility model relates to an atomizer
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`See, e.g., Hon ’043, Title (“Electronic Atomization Cigarette”).
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`Hon ’043.
`To the extent the preamble is limiting, it is disclosed and/or rendered obvious by
`Chinese Patent No. 2719043
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`smoking article comprising:
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`1(pre) An electrically-powered, aerosol-generating
`Cl.
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`U.S. Patent No. 9,901,123
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`
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`understood to include the figure as well. In addition, citations necessarily include any contextual description and disclosure in Hon ’043.
`and description of the figure, and any text relating to the figure. Similarly, where a cited portion of text refers to a figure, the citation should be
`Where Respondents cite to a particular figure in Hon ’043, the citation should be understood to encompass, in addition to the figure itself, the caption
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`
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`inherently.
`prior art below are exemplary and identify exemplary instances where the prior art discloses a given limitation expressly, implicitly, and/or
`agreement or view as to the meaning, definiteness, written description support for, or enablement of any claim addressed therein. The citations to the
`is met in any particular way. Respondents’ initial invalidity disclosures are made in a variety of alternatives and do not represent Respondents’
`should in no way be seen as, admissions or adoptions as to any particular claim scope or construction, or as any admission that any particular element
`do not agree with Complainants’ application of the claims, or that the claims satisfy 35 U.S.C. § 112. Respondents’ disclosures herein are not, and
`Respondents apply the prior art in light of Complainants’ improper assertions of infringement and improper application of the claims. Respondents
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`patent.
`under 35 U.S.C. § 102(b) because it published on August 24, 2005, more than one year before the earliest claimed effective filing date of the ’123
`and 103 (pre-AIA) the domestic industry claims (1-7, 9, 11-19, 21, 23-26) of U.S. Patent No. 9,901,123 (the “’123 patent”). Hon ’043 is prior art
`Chinese Patent No. 2719043 (“Hon ’043”)1, alone or in combination with other prior art, anticipates and/or renders obvious under 35 U.S.C. §§ 102
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`
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`Exhibit C4
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`Ex. 2005-0007
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`

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`2
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`shaped, or a pipe-shaped body is constituted in the present utility model. An air inlet 4 is
`See, e.g., Hon ’043 at Fig. 1 and 6: (“As shown in Figure 1, a mouthpiece-shaped, cigar-
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`references cited in these contentions.
`Hon ’043 discloses and/or renders obvious this limitation, alone and/or in view of other
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`
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`end distal to the mouth-end;
`outer housing having a mouth-end and an
`an electrical power source within a tubular
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`1(a)
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`Hon ’043 with the other art identified in these contentions.
`limitation, this limitation was well known and/or it would have been obvious to combine
`To the extent Complainants contend Hon ’043 does not disclose or render obvious this
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`Hon ’043 at Fig. 1 (and associated text).
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`glycol.”)
`2%, organic acid 0.1-3.1%, and antioxidant 0.1-0.5%, and the rest is 1, 2-propylene
`Hon ’043 at 8: (“The nicotine solution contains 0.4-3.5% nicotine, tobacco flavor 0.05-
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`
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`sucked out via the aerosol passage 12, gas vent 17, and the mouthpiece 15.”)
`hole 29; droplets of small diameters suspend in the airflow and form an aerosol, which is
`wall under the vortex effect and are re-absorbed by the porous body 27 via the overflow
`effect of the heating element 26; atomized droplets of large diameters are attached to the
`ultrasonically by the first piezoelectric element 23 and is further atomized under the
`and ejected in the form of droplets into the atomization cavity 10; it is atomized
`solution in the porous body 27 is driven by the high-speed airflow of the ejection hole
`cavity 10 in the atomizer 9 via the through hole on the vapor-liquid separator 7. The
`Chinese Patent No. 2719043
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`
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0008
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`

`

`3
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`known. ’123 Patent, 20:26-31 (“Representative types of power sources, and
`The ’123 patent also concedes that power sources within an outer housing were
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`
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`Cigarette available from Ruyan SBT Technology and Development Co., Ltd.”).
`cover or cap 35 can be of the type possessed by the Ruyan Atomizing Electronic 10
`Technology and Development Co., Ltd..”); ’123 patent at 20:8-11 (“A representative end
`possessed by the Ruyan Atomizing Electronic Cigarette available from Ruyan SBT
`e.g., ’123 Patent at 19:56-59 (“A representative outer housing can be of the type
`Furthermore, the ’123 patent concedes that such arrangements were known. See,
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`supply, e.g., a commercially available dry cell or rechargeable cell.”)
`opening of the casing main body 14. The power supply 62 is preferably a DC power
`removed from the casing main body 14 by opening/closing a cap 64 that closes the rear
`See, e.g., EP 0 845 220 (“Susa”) at ¶ 42 (“The power supply 62 can be mounted in and
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`
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`Hon ’043 with the other art identified in these contentions.
`limitation, this limitation was well known and/or it would have been obvious to combine
`To the extent Complainants contend Hon ’043 does not disclose or render obvious this
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`
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`Hon ’043 at 7: (“[R]e-chargeable battery 2”).
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`in the enclosure 14.”)
`7, an atomizer 9, a liquid-supplying bottle 11, and a mouthpiece 15 are set successively
`electronic circuit board 3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator
`set on the outer wall of said enclosure 14; a light emitting diode 1, a battery 2, an
`Chinese Patent No. 2719043
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`
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0009
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`

`

`4
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`foam, stainless steel fiber felt, high molecular polymeric foam, and ceramic foam; the
`characterized in that the porous body (27) in said atomizer (9) may be made of nickel
`Hon ’043 at Claim 11: (“An atomizer electronic cigarette as described in Claim 9,
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`
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`and it may also be made into a sheet.”)
`wires, nichrome, or iron-chromium-aluminum alloy wires containing rare earth elements,
`Hon ’043 at 6: (“a heating element 26 is set in the cavity; it may be made of platinum
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`
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`into a sheet.”)
`chromium-aluminum alloy wires containing rare earth elements, and it may also be made
`Hon ’043 at 5: (“The heating element may be made of platinum wires, nichrome, or iron-
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`present utility model”)
`See, e.g., Hon ’043 at 5, Fig. 6 (“Figure 6 is a structure diagram of an atomizer of the
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`references cited in these contentions.
`Hon ’043 discloses and/or renders obvious this limitation, alone and/or in view of other
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`powered by said electrical power source;
`at least one electrical resistance heater
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`1(b)
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`Ruyan SBT Technology and Development Co., Ltd.”).
`incorporated within a device available as Ruyan Atomizing Electronic Cigarette from
`representative arrangements thereof within the outer container, are of the type
`Chinese Patent No. 2719043
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`
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0010
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`

`

`5
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`
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`aerosol from the liquid contained in and around the metallic wick.”)
`contained in the heater/wick assembly provides a higher temperature heat which creates
`material that is somewhat bendable but will hold its shape…. [A] 66 ohm heater coil
`assembled cigar. The second heater/wick is made of what appears to be a metallic cloth
`sits on top of the ceramic heater and protrudes into the spongy extract cartridge in the
`RJRITC_001101175 (“RJR Ruyan Teardown”) at 182: (“a second heater/wick (D) that
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`Development Co., Ltd.”).
`available as Ruyan Atomizing Electronic Cigarette from Ruyan SBT Technology and
`48 (“Representative types of resistance heating elements are incorporated within a device
`Furthermore, the ’123 patent concedes this limitation was known. ’123 Patent at 21:45-
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`Whittemore at claim 13.
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`the receptacle or socket of an ordinary flashlight C.”)
`positioned in a terminal socket forming part of an electric circuit, such, for example, as
`terminal plug B of any preferred construction, that is adapted to be plugged into or
`Whittemore at 1:39-45: (“The vessel A is carried by and permanently connected to a
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`the filament 3 will become heated”)
`combined in such a way that when said conductors are energized by an electric current,
`U.S. Patent No. 2,057,353 (“Whittemore”) at 1:24-28: (“a filament or heating element 3
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`Hon ’043 with the other art identified in these contentions.
`limitation, this limitation was well known and/or it would have been obvious to combine
`To the extent Complainants contend Hon ’043 does not disclose or render obvious this
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`Hon ’043 at Fig. 12 (and associated text).
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`sheet; the atomization cavity wall (25) may be made of alumina or ceramic.”)
`aluminum alloy wires containing rare earth elements, and it may also be made into a
`heating element (26) may be made of platinum wires, nichrome, or ironchromium-
`Chinese Patent No. 2719043
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0011
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`

`

`6
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`magnet 21 is fixated on the ripple film 22.”)
`magnet 21, and a reed switch 19 set in between are also set in the sensor 6; the second
`and is separated from the sensor 6 by a ripple film 22. A first magnet 20, a second
`Hon ’043 at 6: (“As shown in Figure 4, a negative pressure cavity 8 is set in the sensor 6,
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`14.”)
`liquid-supplying bottle 11, and a mouthpiece 15 are set successively in the enclosure
`3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an atomizer 9, a
`wall of said enclosure 14; a light emitting diode 1, a battery 2, an electronic circuit board
`shaped body is constituted in the present utility model. An air inlet 4 is set on the outer
`Hon ’043 at 6: (“As shown in Figure 1, a mouthpiece-shaped, cigar-shaped, or a pipe-
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`lithium ion battery.”)
`Hon at 6: (“U2 is the low voltage detection element for over-discharge protection of the
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`transistor, is turned on; RL starts”)
`Hon at 6: (“The circuit principle is that when K1 is closed, U1, i.e. the field effect
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`of the field effect transistor (i.e. U1 starts).”
`of the excessive magnetic line of force of the first magnet 20, starting the electric switch
`from the reed switch 19; the reed switch 19 is closed (i.e. K1 is closed) under the effect
`point, the ripple film 22 in the sensor 6 is deformed to drive the second magnet 21 away
`signal; the electronic circuit board 3 connected therewith goes into operation. At this
`cavity 5 and the negative pressure cavity 8 will cause the sensor 6 to output an actuating
`pressure; the air pressure difference or high-speed stream between the normal pressure
`Hon ’043 at 6-7: (“When a smoker smokes, the mouthpiece 15 is under negative
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`See, e.g., Hon ’043 at Fig. 1, 4, 12.
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`references cited in these contentions.
`Hon ’043 discloses and/or renders obvious this limitation, alone and/or in view of other
`Chinese Patent No. 2719043
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`Exhibit C4
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`smoking article by a user; and
`a sensor adapted for sensing draw on the
`heater during draw, the controller comprising
`current flow through the electrical resistance
`outer housing and adapted for regulating
`a puff-actuated controller within the tubular
`U.S. Patent No. 9,901,123
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`1(c)
`Cl.
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`Ex. 2005-0012
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`

`

`7
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`atomizer 9 via the through hole on the vapor-liquid separator 7.”)
`through the sensor airflow channel 18, and flows into the atomization cavity 10 in the
`Hon ’043 at 7: (“Air enters into the normal pressure cavity 5 via the air inlet 4, passes
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`to achieve the effect of atomization.”)
`time; M1 provides the atomizer 9 with the high-frequency mechanical oscillatory wave
`transistor, is turned on; RL starts; the Colpitts oscillator starts oscillating at the same
`oscillator. The circuit principle is that when K1 is closed, U1, i.e. the field effect
`piezoelectric element 23; C1, C2, R3, L1, C3, BG, and M1 constitute a Colpitts
`detection element for over-discharge protection of the lithium ion battery; M1 is the first
`RL is the heating element 26; LED1 is the light emitting diode 1; U2 is the low voltage
`Hon ’043 at 6: (“As shown in Figure 12, the circuit schematic, K1 is the reed switch 19;
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`of the field effect transistor (i.e. U1 starts).”)
`of the excessive magnetic line of force of the first magnet 20, starting the electric switch
`from the reed switch 19; the reed switch 19 is closed (i.e. K1 is closed) under the effect
`point, the ripple film 22 in the sensor 6 is deformed to drive the second magnet 21 away
`signal; the electronic circuit board 3 connected therewith goes into operation. At this
`cavity 5 and the negative pressure cavity 8 will cause the sensor 6 to output an actuating
`pressure; the air pressure difference or high-speed stream between the normal pressure
`Hon ’043 at 6-7: (“When a smoker smokes, the mouthpiece 15 is under negative
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`Chinese Patent No. 2719043
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`U.S. Patent No. 9,901,123
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`Cl.
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`Exhibit C4
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`Ex. 2005-0013
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`8
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`be replaced by a Hall effect device or magnetodiode or magnetotransistor.”)
`increase, the vent of the silicone check valve 31 is opened. The reed switch 19 may also
`switch is closed and the circuit is turned on; as the air pressure difference continues to
`third magnet in the valve 34 gradually approaches the reed switch 19, until the reed
`inside of the silicone check valve 31; the air pressure increases and the air expands; the
`have a structure with a silicone check valve 31. During smoking, the airflow converges
`See also Hon ’043 at 7: (“As shown in Figure 5, the sensor 6 may also be designed to
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`Chinese Patent No. 2719043
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`U.S. Patent No. 9,901,123
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`Cl.
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`Exhibit C4
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`Ex. 2005-0014
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`9
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`temperature range for volatilization of the aerosol former and the tobacco flavor
`circuit which maximizes initial heating of the heating element, until a desired
`Brooks at 5:1-6: (“The current regulating means normally includes an electrical control
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`means”)
`Brooks at 4:54-55: (“accurate and sophisticated current actuation and current regulating
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`by the user.”). See also, id. at 4:50-5:38.
`current flows through the resistance heating element to produce aerosol only during draw
`Brooks at 4:59-61: (“Preferably, the current actuation means is puff actuated, so that
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`source to provide a tobacco-flavored smoke or aerosol and other sensations of smoking”)
`articles which employ an electrical resistance heating element and an electrical power
`Brooks at 3:63-67: (“The present invention relates to cigarettes and other smoking
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`components.”)
`including many desirable aerosol forming substances and most volatile tobacco flavor
`(e.g., 150 C. to 350° C) to vaporize many volatile materials within a two second puff,
`until near the end of a typical two second puff, or (ii) provide a high enough temperature
`would not be able to provide enough electrical energy to (i) vaporize volatile material
`Brooks 3:34-42, see also id. at 3:15-48: (“It also is believed that the article of Gerth et all
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`and an electrical power source to produce a tobacco flavored smoke or aerosol.”)
`such as cigars, pipes, and the like, which employ an electrical resistance heating element
`Brooks at 1:6-10: (“The present invention relates to cigarettes and other smoking articles
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`temperature of the heating element, and a battery power supply.”)
`actuated current actuation means, a time-based current regulating means to control the
`electrical resistance heating element...The reusable controller normally includes a puff-
`U.S. Patent No. 4,947,874 (“Brooks”) at Abstract: (“Smoking articles employ an
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`Hon ’043 with the other art identified in these contentions.
`limitation, this limitation was well known and/or it would have been obvious to combine
`To the extent Complainants contend Hon ’043 does not disclose or render obvious this
`Chinese Patent No. 2719043
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0015
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`10
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`Brooks at 13:7-16:50.
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`element during periods of current actuation.”)
`regulating circuit or means for controlling the passage of current through the resistance
`resistance heating element 18, a current actuation mechanism 28, and a preferred current
`Brooks at 12:41-46: (“[T]he circuit of FIG. 9 includes a power source 34, the electrical
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`Brooks at 12:47-48: (“The circuit includes a puff actuated control switch 28.”)
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`the heating element and the amount of aerosol forming substance which is volatilized.”)
`detail hereinafter) regulates the flow of current to control the temperature experienced by
`Brooks at 10:53-58 (“During the puff, the preferred current control circuit (described in
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`element 18.”)
`pressure within the cigarette during draw and permits current flow through the heating
`Brooks at 10:42-45: (“The pressure actuated switch 28 responds to a sensed change in air
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`Brooks at 9:51-55: (“puff actuated, differential pressure sensitive switch”)
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`in intimate contact with resistance heating components; and the like.”)
`microporous high temperature polymers having moderate resistivities; porous substrates
`or films; carbon yarns, cloths, fibers, discs or strips; graphite cylinders, fabrics or paints;
`effective aerosol formation... Other suitable heating elements include porous metal wires
`wettable character, in order to carry a suitable amount of aerosol forming substance for
`preferably is a fibrous material having a high surface area and an adsorbant, porous,
`Brooks at 7:25-8:23: (“The resistance heating element 18 employed in cigarette 12
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`the Controller”); 20:54-21:41 (Example 4, “Assembly of the Controller).
`invention”). See also, id. at 9:55-65, 12:39-16:31, 17:41-18:33 (Example 1 “Assembly of
`of time-based control circuits and related wiring or preferred controllers of the
`Brooks at Figs. 9, 10 and 7:5-7: (“FIGS. 9 and 10 are representative schematic diagrams
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`5:1-38.
`substances is reached, usually between about 150 C. and about 350° C.”). See also id. at
`Chinese Patent No. 2719043
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0016
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`11
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`which may be filled by polypropylene fiber, polyester fiber, nylon fiber, or foamed
`Hon at 5: (“A liquid storing porous body is installed inside of the liquid-supplying bottle,
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`liquid-supplying bottle and the mouthpiece of the present utility model”)
`See, e.g., Hon ’043 at 5: (“Figure 11 is a structure diagram of the connection between the
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`references cited in these contentions.
`Hon ’043 discloses and/or renders obvious this limitation, alone and/or in view of other
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`Philip Morris Ruyan Teardown 2004 (“PM Ruyan Teardown”) at 2.
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`having a generally tubular shape and adapted
`absorbent fibrous material, the cartridge
`forming material absorbed within an
`comprising a tobacco extract and an aerosol-
`storage compartment containing a mixture
`comprising a cartridge providing a liquid
`mouth-end of the tubular outer housing and
`a rod-shaped carrier device engaged with the
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`1(d)
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`RJR Ruyan Teardown at 185, 187, 189-190.
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`Brooks et al.; and 5,388,574 to Ingebrethsen.”).
`1,618,803 to Hon; and U.S. Pat. No. 4,735,217 to Gerth et al.; U.S. Pat. No. 4,947,874 to
`Co., Ltd. See, also, those types of airflow sensing mechanisms proposed in EPO
`Ruyan Atomizing Electronic Cigarette from Ruyan SBT Technology and Development
`types of sensing mechanism components are incorporated within a device available as
`set forth in U.S. Pat. No. 4,947,874 to Brooks et al.”); id. at 20:52-59 (“Representative
`SBT Technology and Development Co., Ltd. See, also, the types of electronic systems
`type 45 possessed by the Ruyan Atomizing Electronic Cigarette available from Ruyan
`(“Representative types of electronic control components are of the type can be of the
`The ’123 patent concedes this limitation was known. ’123 Patent, 20:43-48
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`also id. at 4:50-5:26.
`normally would be too costly to incorporate into a single use, disposable article.”) See
`and (ii) accurate and sophisticated current actuation and current regulating means that
`relatively large power sources, capable of generating 10 to 40 watts of power or more,
`portions of the invention is particularly advantageous in that it permits the use of (i)
`Brooks 4:50-57: (“The use of such a reusable article with the cigarette and disposable
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`id. at 15:15-27.
`means to prevent the heating element from overheating during rapid puffing.”). See also
`Brooks at 5:25-26: (“More preferably, the current regulating means also includes a
`Chinese Patent No. 2719043
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`Exhibit C4
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`U.S. Patent No. 9,901,123
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`Cl.
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`Ex. 2005-0017
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`12
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`and are re-absorbed by the porous body 27 via the overflow hole 29; droplets of small
`26; atomized droplets of large diameters are attached to the wall under the vortex effect
`piezoelectric element 23 and is further atomized under the effect of the heating element
`form of droplets into the atomization cavity 10; it is atomized ultrasonically by the first
`porous body 27 is driven by the high-speed airflow of the ejection hole and ejected in the
`atomizer 9 via the through hole on the vapor-liquid separator 7. The solution in the
`through the sensor airflow channel 18, and flows into the atomization cavity 10 in the
`Hon ’043 at 7: (“Air enters into the normal pressure cavity 5 via the air inlet 4, passes
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`reinstall it into the enclosure 14, and tighten the mouthpiece 15.”)
`the liquid-supplying bottle 11, add the solution into the liquid-supplying bottle 11,
`the liquid-supplying bottle 11, one may rotate and remove the mouthpiece 15, remove
`Hon ’043 at 7: (“Threads