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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
`U.S. Patent No. 9,901,123
`Issued: February 27, 2018
`Application No.: 15/286,087
`Filing Date: October 5, 2016
`
`For: Tobacco-Containing Smoking Article
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`FILED VIA E2E
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`DECLARATION OF STEWART FOX IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,901,123
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 001
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`TABLE OF CONTENTS
`Introduction and Qualifications ......................................................... 1
`I.
`Summary of Materials Reviewed and Considered ............................ 3
`II.
`III. Level of Skill in the Art and Perspective Applied in this
`Declaration ......................................................................................... 6
`IV. The ’123 Patent .................................................................................. 7
`Background and Background Description ............................... 7
`The Ruyan Devices and “E-CIG” .......................................... 10
`Description – The Described Embodiments .......................... 21
`Figure 1’s embodiment ................................................ 22
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`Figure 2’s embodiment ................................................ 30
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`Figure 3’s embodiment ................................................ 32
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`Control and Sensing (Figures 4 and 5) ........................ 34
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`The Claims ............................................................................. 36
`Claim Construction .......................................................................... 38
`V.
`VI. Understanding of Legal Principles Relevant to Obviousness .......... 38
`VII. Summary of Primary Prior Art References ...................................... 40
`Chinese Patent No. CN 2719043 (“Hon,” Ex. 1005) ............ 40
`U.S. Patent No. 4,947,874 (“Brooks,” Ex. 1006) .................. 43
`U.S. Patent No. 2,057,353 (“Whittemore,” Ex. 1007) .......... 46
`VIII. Claims 1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, and 23-26 are
`Unpatentable over Hon, alone or with Brooks and Whittemore ..... 47
`Independent Claims 1 and 15: Overview and the
`Combination ........................................................................... 47
`Preambles ............................................................................... 50
`Element 1/15[a]: an electrical power source ......................... 51
`Element 1/15[b]: electrical resistance heater ......................... 53
`Element 1/15[c]: puff-actuated controller ............................. 55
`Element 1/15[d]: rod-shaped carrier device .......................... 66
`Overview of Hon’s rod-shaped carrier device
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`comprising a cartridge ................................................. 67
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`Exhibit 1003
`Page 002
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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` Mixture of tobacco extract (comprising nicotine) and
`aerosol-forming material ............................................. 69
`Absorbent fibrous/wicking material ............................ 71
`Single unit cartridge/carrier ......................................... 77
`[Removably] engaged .................................................. 80
`Rod-shaped and generally tubular, with airflow
`therethrough ................................................................. 82
`Element 1/15[e]: wicking and aerosol formation .................. 83
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` Dependent Claims .................................................................. 94
`Claim 2: glycerin or propylene glycol ......................... 94
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`Claims 5 and 18: organic acid ..................................... 94
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`Claim 7: synthetic polymer fibrous material ............... 94
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`Claims 9, 11, 21 and 23: cartridge materials ............... 95
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`Claim 12: carrier is removably engaged ..................... 99
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`Claims 14 and 24: absorbent fibrous material in contact
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`with heater ................................................................. 100
`Claim 25: wick in proximity to heater ...................... 100
`Claim 26: air passageway along length of cartridge . 100
`IX. Claims 3, 4, 13, 16, and 17 are Unpatentable Over Hon, Whittemore,
`Brooks, and Susa ............................................................................ 101
`Claims 3, 4, 16, and 17: flavoring agent, and menthol in
`particular .............................................................................. 101
`Claim 13: glycerin, tobacco extract, and a flavoring agent . 103
`Claims 6 and 19 are Unpatentable Over Hon, Whittemore, Brooks,
`and Ray ........................................................................................... 104
`XI. CONCLUSION .............................................................................. 108
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`X.
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 003
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`I.
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`Introduction and Qualifications
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`I have been retained by Philip Morris Products, S.A (“Petitioner”) to
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`provide my opinion concerning the validity of U.S. Patent No. 9,901,123 (attached
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`to the accompanying Petition as Ex. 1001, “the ’123 patent”) in support of a
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`Petition for Inter Partes Review (“IPR”). I am being compensated for my time in
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`connection with this IPR at my standard consulting rate, which is £125 per hour,
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`plus actual expenses, regardless of the outcome of this matter.
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`
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`I am an experienced engineer and have spent over 25 years developing
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`products, including medical devices and drug delivery products, from concept
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`through approvals and into market. I have particular expertise in medical devices,
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`including coronary catheters, surgical instruments, in vitro diagnostic instruments,
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`and drug delivery devices.
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`I obtained my MA in Engineering Science, 1st class, from Downing
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`College of Cambridge University, in 1986.
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`I am currently the Director of Maddison Consulting, Limited, in
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`Cambridge, UK. I founded my consulting company in 2011 and have been the
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`director since then. In this role, I provide project management services and product
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`development consultancy.
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`
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`One example of my product development experience is when I led the
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`development of an in vitro diagnostic instrument for a UK SME. I worked as the
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`Exhibit 1003
`Page 004
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`project manager of a client team, driving a group of 30 staff to develop the
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`instrument from concept to regulatory submission in 9 months. I also led the
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`development of a novel colonoscope, from concept to clinical trials. We developed,
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`manufactured and verified a new design of endoscope in just over 12 months. In
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`another example, I led the development of a handset for use in electrosurgery. This
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`was a complete turn-key project, from concept design to verification and
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`production ramp up, and was completed in only 9 months.
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`
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`Since January 2013, I have also worked for Team Consulting,
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`Limited, on two occasions. On one, I managed the development of an organ
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`preservation system that provides organ preservation, repair and assessment prior
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`to transplantation. The project involved development from a prototype to a
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`validated system.
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`From September 2010 to July 2011, I led the Patient Care sector of
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`Sagentia, one of the five business units of the company, with responsibility for
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`profit and loss, business development, and line management of a small team of
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`sector specialists for drug delivery and critical care devices and markets.
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`
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`From 2002 to 2010, I was a Managing Consultant and Skill Group
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`Leader of the Product Engineering Group at PA Consulting Group. The majority
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`of my work was in the area of medical device development, and included running
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`Exhibit 1003
`Page 005
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`internal and client teams to take various medical devices from concept to
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`production.
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`From 1991 to 2002, I was Group Leader of Cambridge Consultants
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`Limited’s Medical Products Group. I managed projects and led technical teams in
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`the design and development of various medical devices.
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` Further details regarding my experience are listed on my CV, which I
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`have been assured by counsel will be filed in this proceeding as Exhibit 1004.
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`II.
`
`Summary of Materials Reviewed and Considered
` All of the opinions contained in this Declaration are based on the
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`documents I reviewed and my knowledge and professional judgment. In forming
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`the opinions expressed in this Declaration, while drawing on my experience, I
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`reviewed the following documents:
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`Ex. Description
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`1001 U.S. Patent No. 9,901,123 (“the ’123 patent”)
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`1005 Chinese Patent No. CN 2719043 (“Hon”) (including certified English
`translation and original Chinese version of the patent document)
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`1006 U.S. Patent No. 4,947,874 (“Brooks”)
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`1007 U.S. Patent No. 2,057,353 (“Whittemore”)
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`1008 European Patent Publication No. EP 0845220 (“Susa”)
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`1009 U.S. Patent No. 4,284,089 (“Ray”)
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`Exhibit 1003
`Page 006
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`Ex. Description
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`1010 Chemical and Biological Studies on New Cigarette Prototypes that
`Heat Instead of Burn Tobacco, R. J. Reynolds Tobacco Company
`Monograph (1988) (“RJR monograph”) (excerpts) (markings on
`exhibit appeared in the used copy purchased by counsel)
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`1011 U.S. Patent No. 4,793,365 (“Sensabaugh”)
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`1012 Letter from Robert B. Swierupski, Director, National Commodity
`Specialist Division, to Mark Weiss, Weiss & Moy, P.C. regarding
`tariff classification ruling (Aug. 22, 2006), https://rulings.cbp.gov/
`ruling/M85579
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`1013 Webpages from Beijing SBT Ruyan Technology & Development
`Corp., Sbtry.cn (archived at web.archive.org, 2005-2006), with
`Affidavit of Elizabeth Rosenberg of the Internet Archive
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`1014
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`International Patent Publication No. WO 98/57556 (“Biggs”)
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`1015 Webpages from E-cig.com (archived at web.archive.org, 2006-2007)
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`1018 Barbara Demick, A High-Tech Approach to Getting a Nicotine Fix,
`L.A. Times (Apr. 25, 2009), https://www.latimes.com/archives/la-
`xpm-2009-apr-25-fg-china-cigarettes25-story.html
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`1019 Philip Morris U.S.A. interoffice correspondence from R.H. Mofitt to
`K. Torrence regarding operational analysis of SBT Ruyan Atomizing
`Nicotine Inhaler (Sept. 27, 2004) (available at
`https://www.industrydocuments.ucsf.edu/docs/fnpb0219)
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`1020 Philip Morris U.S.A. interoffice correspondence from R.H. Moffitt to
`K. Torrence regarding operational analysis of SBT Ruyan Atomizing
`Nicotine Inhaler (Sept. 27, 2004) (original)
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`4
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`Exhibit 1003
`Page 007
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`Ex. Description
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`1023 Kevin Hatch, et al., Preliminary Evaluation of a Commercially
`Available Electric Aerosol Inhaler from China (Sept. 14, 2006) (RJR
`Teardown”) (available at https://www.industrydocuments.ucsf.edu/
`docs/nyvy0228)
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`1025 Hon Lik, I Was Sure That the Electronic Cigarette Would be
`Welcomed with Open Arms, Sciences et Avenir (Oct. 7, 2013)
`https://www.sciencesetavenir.fr/sante/i-was-sure-that-the-electronic-
`cigarette-would-be-welcomed-with-open-arms_26020 (updated Oct.
`18, 2013)
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`1026 U.S. Patent No. 7,117,867 (“Cox”)
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`1027 U.S. Patent No. 4,735,217 (“Gerth”)
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`1028 European Patent Publication No. EP 1,618,803 (“Hon-803”)
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`1029 U.S. Patent No. 5,388,574 (“Ingebrethsen”)
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`1030 U.S. Patent No. 6,095,153 (“Kessler”)
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`1031 U.S. Patent No. 4,449,541 (“Mays”)
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`1032 U.S. Patent No. 8,950,587 (“Thomson”)
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`1033 George Wypych, Handbook of Polymers (2nd ed. 2016)
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`1035 U.S. Patent No. 1,968,509 (“Tiffany”)
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` My opinions are guided by my appreciation of how a person of
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`ordinary skill in the art would have understood the claims of the ’123 patent at the
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`time of the alleged invention, which I have been asked to assume is October 18,
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`2006.
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`Exhibit 1003
`Page 008
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`III. Level of Skill in the Art and Perspective Applied in this Declaration
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`I understand that certain issues relating to validity must be judged
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`from the perspective of a person of ordinary skill in the relevant art (“POSA”). I
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`have been informed by counsel that determining the level of ordinary skill includes
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`considering things such as the type of problems encountered in the art, prior art
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`solutions to those problems, rapidity with which innovations are made,
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`sophistication of the technology, and the educational level of typical workers in the
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`field.
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` With respect to the challenged claims of the ’123 patent, a person of
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`ordinary skill in the art in the October 2006 timeframe would have been familiar
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`with electrically powered articles that deliver aerosols generated from liquid
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`mixtures and/or the components and underlying technology used in such devices.
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` A person of ordinary skill in the art would have gained knowledge of
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`such systems, components, and/or underlying technology through a mixture of
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`training and work experience. The experience and education levels may vary
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`between persons of ordinary skill, with some persons having a Bachelor’s degree
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`in mechanical engineering, electrical engineering, chemistry, or physics, or a
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`related field, and three to four years of industry experience, and others holding a
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`Master’s degree in mechanical engineering, electrical engineering, chemistry, or
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`Exhibit 1003
`Page 009
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`physics, or a related field, and one to two years of industry experience. More
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`education can supplement relevant experience and vice versa.
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`I would have qualified as a person of at least ordinary skill in the art
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`as of October 18, 2006, and I have a sufficient level of knowledge, experience, and
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`education to provide an expert opinion in the field of the challenged claims of the
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`’123 patent.
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` My opinions in this Declaration are based on the perspective of a
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`person of ordinary skill in the art in the 2006 time frame. This is true even if the
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`testimony is stated in the present tense.
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` Each of the statements below reflects my opinion based on my review
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`of the ’123 patent and the other references I identified above as the materials I
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`reviewed and considered.
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`IV. The ’123 Patent
` Background and Background Description
` The ’123 patent is titled “Tobacco-Containing Smoking Article.”
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` The patent begins with a Background section that includes common
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`prior art cigarettes and other smoking articles (1:26-54), modifying or replacing
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`the tobacco in an attempt to reduce the risk of potentially harmful effects (1:55-
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`2:36), and aerosol-generating devices that use combustible or other heat sources
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`(2:63-3:48).
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`Exhibit 1003
`Page 010
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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` After the Background section, the ’123 patent’s Detailed Description
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`section starts by providing additional background, describing the many types of
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`prior art tobaccos, tobacco products and devices, various prior art aerosol-forming
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`materials (e.g., glycerin) and prior art methods of using them in “smoking articles”
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`(e.g., in a container or absorbed into a fibrous material). ’123 patent 8:37-19:36.
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`As the patent recognizes expressly (e.g., “traditionally used” additives at 15:14)
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`and by citing old patents and documents, this was all known in the prior art at the
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`time. The patent does not expressly point out in this section what it adds to the
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`prior art.
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`I note that the ’123 patent does not limit itself to devices for tobacco,
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`as a layman might use the term. It also describes what is commonly called
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`“vaping,” i.e., producing an aerosol1 from a liquid rather than a solid tobacco
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`product. For example, the ’123 patent points to two e-cigarette (or vaping) devices
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`as using a preferred liquid mixture to produce an aerosol:
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`1 Technically, a vapor is a material in its gaseous state. An aerosol is small liquid
`droplets or small particles suspended in a gas (e.g., air), such as the visible
`“steam” from a boiling pot on a kitchen stove. That visible “steam” is an aerosol
`that is formed when invisible water vapor (actual steam) condenses into small
`droplets.
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`Exhibit 1003
`Page 011
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent at 14:1-25. Later, the patent explains that these two vaping devices
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`are “representative.”
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`Exhibit 1003
`Page 012
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent at 19:22-37. The Ruyan devices are referenced (but never described)
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`throughout the patent and I will discuss them further based on other
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`contemporary evidence. The “E-CIG” device appears similar, and I will discuss it
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`further also. See Ex. 1013 (archived web pages showing the Ruyan device); Ex.
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`1015 (archived web pages from e-cig.com, cited in the ’123 patent at 4:23); Ex.
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`1019/1020 (PMUSA’s teardown of a Ruyan device in 2004); Ex. 1023 (RJR’s
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`teardown of a Ruyan device in 2006).
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`The Ruyan Devices and “E-CIG”
` As I stated in the immediately preceding section, the ’123 patent
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`repeatedly references Ruyan devices and “E-CIG.”
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`• “Exemplary aerosol-forming materials also include those types of materials
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`incorporated within devices available through Atlanta Imports Inc.,
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`Acworth, Ga., USA., as an electronic cigar having the brand name E-CIG,
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`which can be employed using associated Smoking Cartridges Type C1a,
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`C2a, C3a, C4a, C1b, C2b, C3b and C4b; and as Ruyan Atomizing
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`Electronic Pipe and Ruyan Atomizing Electronic Cigarette from Ruyan
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`SBT Technology and Development Co., Ltd., Beijing, China.” ’123 patent
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`14:15-25.
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`• Representative smoking articles, and exemplary components thereof, also
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`can be provided using components of those nicotine aerosol delivery
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`10
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`Page 013
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`systems available through Atlanta Imports Inc., Acworth, Ga., USA., as an
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`electronic cigar having the brand name E-CIG, which can be employed
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`using associated Smoking Cartridges Type C1a, C2a, C3a, C4a, C1b, C2b,
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`C3b and C4b. Exemplary components for representative smoking articles
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`also have been available components of those devices available as Ruyan
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`Atomizing Electronic Pipe and Ruyan Atomizing Electronic Cigarette from
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`Ruyan SBT Technology and Development Co., Ltd., Beijing, China. Id.
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`19:22-37.
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`• “A representative outer housing can be of the type possessed by the Ruyan
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`Atomizing Electronic Cigarette available from Ruyan SBT Technology
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`and Development Co., Ltd.” Id. 19:56-59.
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`• “A representative end cover or cap 35 can be of the type possessed by the
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`Ruyan Atomizing Electronic Cigarette available from Ruyan SBT
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`Technology and Development Co., Ltd.” Id. 20:8-11.
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`• “Representative types of power sources, and representative arrangements
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`thereof within the outer container, are of the type incorporated within a
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`device available as Ruyan Atomizing Electronic Cigarette from Ruyan
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`SBT Technology and Development Co., Ltd.” Id. 20:26-33.
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`• “Representative types of electronic control components are of the type can
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`be of the type possessed by the Ruyan Atomizing Electronic Cigarette
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`11
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`Page 014
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`available from Ruyan SBT Technology and Development Co., Ltd.” Id.
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`20:43-47.
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`• “Representative types of sensing mechanism components are incorporated
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`within a device available as Ruyan Atomizing Electronic Cigarette from
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`Ruyan SBT Technology and Development Co., Ltd. See, also, those types
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`of airflow sensing mechanisms proposed in EPO 1,618,803 to Hon [Ex.
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`1028].” Id. 20:52-55.
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`• “Representative types of resistance heating elements are incorporated
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`within a device available as Ruyan Atomizing Electronic Cigarette from
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`Ruyan SBT Technology and Development Co., Ltd.” Id. 21:45-48.
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`• “Representative types of cartridges are of the type incorporated within a
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`device available as Ruyan Atomizing Electronic Cigarette from Ruyan
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`SBT Technology and Development Co., Ltd.” Id. 22:6-14.
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`• “A representative mouth-end piece can be of the type incorporated within a
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`device available as Ruyan Atomizing Electronic Cigarette from Ruyan
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`SBT Technology and Development Co., Ltd.” Id. 24:9-13.
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` The patent does not describe the Ruyan (or E-CIG) device, but simply
`
`references it as I demonstrated above.
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` However,
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`the Tobacco Legacy Database
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`(https://www.
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`industrydocuments.ucsf.edu/tobacco/) has contemporary
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`teardown
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`reports
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`Exhibit 1003
`Page 015
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`generated by RJR and PMUSA, showing the internals of the Ruyan devices. These
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`reports (Exs. 1023 and 1019) are available at the URLs printed on them. Counsel
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`also provided me with a clearer copy of the PMUSA teardown (Ex. 1020). I will
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`generally cite to the clear copy at Ex. 1020.
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` Starting with the RJR teardown (Ex. 1023), I note that it is dated
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`September 14, 2006, which is just a few months before the ’123 patent’s earliest
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`effective filing date of October 5, 2006. It is authored and signed by ’123 patent’s
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`first two named inventors, John Robinson and David Griffith, and is stamped “RJR
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`R&D” at the top right of the cover page. Ex. 1023.
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` The report explains that RJR purchased several Ruyan devices and
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`“dissected” them. Ex. 1023 at 2-3. The report provides many photographs, but the
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`copies from the Tobacco Legacy Database are rather blurry. Nonetheless, they
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`provide evidence of the Ruyan device’s construction.
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`I also note that the Ruyan devices obtained and analyzed by RJR
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`appear to be the same as the Ruyan devices shown on the Ruyan website at the
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`time (archived by the Internet Archive, Ex. 1013) and in a 2006 Ruyan tariff ruling
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`(Ex. 1012). Note that I am focusing on the Ruyan cigar because it is most relevant
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`here, and not the pipe. However, RJR obtained and analyzed the Ruyan pipe and
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`cigar.
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 016
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`I note that the Ruyan e-cigar seems to have been available with at least
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`two different outer coverings, one looks like simulated wood and the other is gold-
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`colored with some artwork. The device obtained and analyzed by PMUSA in 2004
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`appears to be slightly different, but has the same general construction.
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` Ex. 1013 at 5, 11 Ruyan website:
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`Page 017
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`The pages containing the above pictures were archived in 2005 and 2006, as
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`indicated in the web.archive URLs on each page.
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` Ex. 1012, Ruyan tariff ruling:
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`
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`The above pictures appear in a tariff classification ruling from the U.S.
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`government dated August 22, 2006, and apparently in response to a letter dated
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`July 20, 2006. This document is available at the U.S. Customs and Border
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`Protection website at https://rulings.cbp.gov/ruling/M85579.
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`Exhibit 1003
`Page 018
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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` Ex. 1023 at 4-5, RJR teardown in 2006:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 019
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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` Exs. 1019 and 1020, PMUSA teardown in 2004:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 020
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`Exs. 1019 and 1020 are the same document. Ex. 1019 is a copy from the Tobacco
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`Legacy Database (available at the URL at the bottom), while Ex. 1020 is a much
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`clearer copy that I obtained from counsel. I note that the device torn down by
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`PMUSA in 2004 appears slightly different to the device in RJR’s 2006 teardown.
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`For example, the Ruyan device obtained by RJR appears to have a different outer
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`housing that does not require a decorative outer cover:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 021
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`Ex. 1023 at 5. The Ruyan device in the 2004 PMUSA teardown, however, has a
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`decorative outer covering over the battery compartment:
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`Ex. 1020 at 3. In addition, the means of retaining the battery is slightly different
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`in the two devices. Otherwise, the general construction and operation appears
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`similar. For example, the heater/atomizer arrangements appear to be of the same
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`or similar construction:
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`Ex. 1023 at 8, Ex. 1020 at 3.
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` Ex. 1015, archived e-cig.com website:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 022
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`It is unclear from the e-cig.com website whether it was selling the Ruyan device
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`or a replica. In any event, it appears to be the same or a similar device to the one
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`on the Ruyan website and torn down by RJR. I also note that the pages containing
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`the above pictures were archived by the Internet Archive on the dates in 2006 and
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`2007 shown on the pages themselves.
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`I have been told by counsel that the above documents evidence what
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`a POSA would have known about the construction of the Ruyan (and E-CIG)
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`devices at the relevant time, i.e., the ’123 patent’s earliest claimed effective filing
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`date of October 5, 2006. I recognize that one of the pages of e-cig.com was not
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`archived until 2007 (Ex. 1015 at 4). I do not have an opinion on whether that
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`particular web page was available before the January, 2007 date in that page’s
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`web.archive URL, and my opinion does not depend on what is shown on that page.
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 023
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`That page does, however, provide some evidence regarding the construction and
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`operation of the same (or apparently the same) device pictured on the other pages,
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`especially because it is consistent with what RJR and PMUSA revealed about
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`Ruyan’s actual devices.
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`I also note that the inventor of the principal prior-art reference in this
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`proceeding, Ex. 1005 (Chinese Patent No. CN 2719043), is Hon Lik. Hon is also
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`credited with inventing the Ruyan device. Exs. 1018, 1025 (LA Times article,
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`Sciences et Avenir article). Thus, it is unsurprising that the device in Hon’s patent
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`filed in 2004 (Ex. 1005) is similar to the devices disassembled in 2004 and 2006
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`by PMUSA and RJR, respectively. I will discuss the relevant similarities in the
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`context of the ’123 patent’s claims later in this declaration.
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` Description – The Described Embodiments
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`Immediately after the above block quote stating that the Ruyan is
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`composed of “exemplary components for representative smoking articles,” the
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`’123 patent describes Figures 1, 2 and 3 as three different embodiments of its
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`device. The first, Figure 1, is described at 19:37-24:48. The second, shown in
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`Figure 2, is described at 24:49-27:35. The third is shown in Figure 3 and described
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`at 27:36-30:36.
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 024
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` Figures 4 and 5 and their accompanying text (30:37-31:39 and 31:40-
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`32:34, respectively) describe two embodiments of the control circuit for use in the
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`three devices. I will discuss these figures in more detail later.
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`Figure 1’s embodiment
`I will now discuss the patent’s Figure 1 embodiment, which as I will
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`explain, is the most relevant figure.
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`’123 patent at Fig. 1, 19:37-24:48. The patent states that this embodiment is “a
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`representative smoking article 10” with “an overall shape that is generally rod-
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`like or tubular in nature, generally akin to a cigarette-type or cigar-type smoking
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`article.” ’123 patent 19:37-43. The patent states: “A representative outer housing
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`can be of the type possessed by the Ruyan Atomizing Electronic Cigarette
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`available from Ruyan SBT Technology and Development Co., Ltd.” ’123 patent
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`19:56-59; see also 20:8-12 (“A representative end cover or cap 35 can be of the
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`Exhibit 1003
`Page 025
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`type possessed by the Ruyan Atomizing Electronic Cigarette available from
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`Ruyan SBT Technology and Development Co., Ltd.”).
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` Likewise, the Figure 1 device’s power source inside the tubular
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`housing was known and used in the Ruyan.
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`’123 patent 20:12-32; see also 29:32-50 (selection of the battery and heating
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`elements is “a matter of design choice” that will be “readily apparent to” a POSA
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`to achieve the desired performance).
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` Figure 1’s puff-actuated controller and sensor was also known in the
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`art, and in particular, in the Ruyan and also in a patent to Brooks (Ex. 1006), which
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`I will discuss later. The patent first explains that its exemplary circuits for its
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`Exhibit 1003
`Page 026
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`“electrically powered control components 50” use typical components such as
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`those found in the Ruyan and entire “electronic systems” in Brooks:
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`’123 patent 20:33-48. The patent continues, explaining that the puff sensor
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`detects when the user draws on the device—detects a “puff”—using known
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`sensors such as those in the Ruyan, Brooks, and several other prior-art patents:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 027
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent 20:49-21:10.
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` The device in Figure 1 uses electrical resistance heaters powered by
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`the battery and controlled by the controller, such as those in the Ruyan:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 028
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent 21:15-48. As discussed above, an absorbent wicking material may
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`wick the liquid “so as to contact” a heating element. Notably, the “puff-actuated
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`controller” may turn the heater (or heaters) on during the duration of a user’s
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`“puff” on the device:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 029
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent 21:48-57. And as I stated (and quoted) earlier, the controller can be
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`the “electronic systems set forth in” Brooks and those in Figures 4 and 5. ’123
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`patent 20:33-48. I will discuss Brooks and Figures 4 and 5 in more detail later.
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` The Figure 1 embodiment also includes a “cartridge 85” that can be
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`made of a wide range of materials:
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`’123 patent 21:63-22:1. The patent explains that the cartridge from the Ruyan
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`device may be used, and modified by removing the “fibrous substrate and
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`aerosol-forming material” and replacing it with “tobacco cut filler” and other
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`substances:
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 030
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent 22:34-43. However, the cartridge may be used apparently
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`unmodified, with its original liquid mixture:
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`’123 patent 23:4-13. As I mentioned (and block-quoted) earlier, the ’123 patent
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`explains that the Ruyan uses an “exemplary” aerosol-forming material combined
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`with “other liquid materials”
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 031
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`Declaration ISO Pet. for Inter Partes Review of USP 9,901,123
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`’123 patent 14:13-25.
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` Figure 1 also includes a mouth-end piece such as that found in the
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`Ruyan device or other prior art:
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`’123 patent 24:4-18
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`Philip Morris Products, S.A.
`Exhibit 1003
`Page 032
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`Declaration ISO Pet