RAI’s PTAB Presentation
`Philip Morris Products, S.A. v. RAI Strategic
`Holdings, Inc.
`Case No. IPR2020-01602
`
`Judges Kokoski, Roesel, and Ankenbrand
`January 6, 2021
`
`1
`
`RAI Strategic Holdings, Inc.
`Exhibit 2017
`Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc.
`IPR2020-01602
`
`
`Philip Morris Products, S.A. v. RAI Strategic
`Holdings, Inc.
`Case No. IPR2020-01602
`
`Judges Kokoski, Roesel, and Ankenbrand
`January 6, 2021
`
`1
`
`RAI Strategic Holdings, Inc.
`Exhibit 2017
`Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc.
`IPR2020-01602
`
`
`
`Elements Missing From Prior Art
`
`Claims 1 & 15: “the mixture . . . wicked into contact”
`Claims 1 & 15: “puff-actuated controller . . . for
`regulating current flow . . . during draw”
`Claims 11 & 23: “wherein the cartridge is electrically
`conductive”
`Claims 14 & 24: “the absorbent fibrous material is in
`contact with the electrical resistance heater”
`
`1 2
`
`3
`
`4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`’123 Patent
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1001 (“’123 patent”), Fig. 1
`
`3
`
`
`
`Claims 1 and 15: “wicked into contact”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’123 patent at 32:50-33:8
`
`4
`
`
`
`“Wicking into contact” is the transport mechanism
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’123 patent at 21:31-45
`
`’123 patent, Fig. 1
`
`5
`
`
`
`Claim 1 specifies transport mechanism
`
`Ex. 2010 at ¶43
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1042 at 43:10-15
`
`’123 patent at 32:50-33:8
`
`6
`
`
`
`Claims 14, 24, and 25 specify location
`
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’123 patent at 21:31-45
`
`’123 patent at 33:36-38; 34:23-28
`
`7
`
`
`
`“Wicking into contact” is the transport mechanism
`
`Paper 2 (“Petition”) at 50-51
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1003, Fox Declaration at ¶ 83
`
`Petition at 15
`
`8
`
`
`
`“Wicking into contact” is the transport mechanism
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 2010 at ¶¶ 75-77
`
`Ex. 2010 at ¶ 78
`
`9
`
`
`
`Hon ejects the liquid from the porous body and carries
`liquid into cavity with “high-speed airflow”
`
`The solution in the porous body 27 is driven by the
`high-speed airflow of the ejection hole and ejected in
`the form of droplets into the atomization cavity 10; it is
`atomized ultrasonically by the first piezoelectric
`element 23 and is further atomized under the effect of
`the heating element 26.
`
`Ex. 1005, Hon at 7
`
`Ex. 2010, Clemens Declaration at ¶ 72
`
`Petition at 13, annotating Hon Fig. 6
`
`10
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Both experts agree: Hon wicks liquid through the
`porous body 27, but not into contact with the heater
`
`Ex. 1003, Fox Declaration at ¶¶ 152-153
`
`Ex. 2010, Clemens Declaration at ¶ 71
`
`11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Hon does not disclose that liquid contacts the heater
`
`The solution in the porous body 27 is driven by the
`high-speed airflow of the ejection hole and ejected in
`the form of droplets into the atomization cavity 10; it is
`atomized ultrasonically by the first piezoelectric
`element 23 and is further atomized under the effect of
`the heating element 26.
`
`Cavity
`Heating
`element
`Porous
`body
`
`Ex. 1005, Hon at 7
`
`Bulge
`
`Cavity wall
`
`“[A] reference in any event is good
`only for that which it clearly and
`definitely discloses.”
`
`Ejection
`holes
`
`In re Hughes, 345 F.2d 184, 188 (CCPA 1965)
`
`Ex. 1005, Hon at 11
`
`Piezoelectric
`element
`
`12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Mr. Fox does not provide objective evidence of liquid
`contacting the heater
`
`Cavity
`Heating
`element
`Porous
`body
`
`Bulge
`
`Cavity wall
`
`Ex. 1003, Fox Declaration at ¶ 153
`
`Ex. 1003, Fox Declaration at ¶ 160
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ejection
`holes
`
`Piezoelectric
`element
`
`Ex. 1005, Hon at 11
`
`13
`
`
`
`Mr. Fox does not provide objective evidence of liquid
`contacting the heater
`
`Cavity
`Heating
`element
`Porous
`body
`
`Bulge
`
`Cavity wall
`
`Ex. 2011, Fox Tr. at 99:18-22, 105:3-5
`
`Ex. 1005, Hon at 11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ejection
`holes
`
`Piezoelectric
`element
`
`14
`
`
`
`Hon does not disclose the temperature or pressure in
`the cavity
`
`Ex. 2011, Fox Tr. at 105:6-10, 106:15-107:2
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 2010, Clemens Declaration at ¶ 70
`
`15
`
`
`
`Whittemore would not improve Hon’s electronic
`atomization cigarette
`
`Paper 9 (“Institution Decision”) at 27
`
`Institution Decision at 27
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`Whittemore would not improve Hon’s electronic
`atomization cigarette
`Hon
`
`Whittemore
`
`• New technology
`• Simple, inexpensive design
`• More efficient
`– Produces more aerosol
`– Uses less power
`• Heater separated from porous
`body by cavity walls
`• Airflow transport mechanism
`• Aerosolizes tiny droplets
`
`• Old technology
`• Complicated, expensive design
`• Less efficient
`– Produces less aerosol
`– Requires higher power
`• Heater connected to liquid with
`cotton string
`• String transport mechanism
`• Aerosolizes bulk liquid
`
`Ex. 2010, Clemens Declaration at ¶ 89;
`Ex. 1042, Clemens Tr. at 118:15-122:4
`
`17
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Hon teaches how to make a simpler/cheaper design
`
`To simplify the design, the first piezoelectric element 23
`on the atomizer 9 may be removed, and the atomization
`of the solution relies only on the heating element 26. The
`size of the atomizer may be smaller, and the connection
`structure of the entire atomizer electronic cigarette is the
`same as that of Embodiment 1.
`
`Ex. 1005, Hon at 7, cited by PO Response at 36-37
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Institution Decision at 26
`
`18
`
`
`
`Whittemore’s wick has little relation to Hon
`
`Hon
`
`Whittemore
`
`≠
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Institution Decision at 28
`
`19
`
`
`
`Claims 1 and 15: “adapted for regulating current flow
`through the electrical resistance heater during draw”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’123 patent at 32:50-33:8
`
`20
`
`
`
`Regulating power during draw requires more than
`activating the heater
`
`Ex. 1001 at 31:17-34, cited by Paper 16 at 45
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1001 at 32:12-26, cited by Paper 16 at 45
`
`21
`
`
`
`Regulating power during draw requires more than
`activating the heater
`
`Ex. 1003, Fox Declaration at ¶ 110
`
`Ex. 2010, Clemens Declaration at ¶¶ 100-101
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`Hon’s heater stays powered during the entire draw
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 2010, Clemens Declaration at ¶¶ 102-104, 112
`
`23
`
`
`
`A POSA would not combine Hon with Brooks
`
`Modifying Hon with
`Brooks would:
`
`• Reduce power to Hon’s
`heater
`• Require additional
`circuitry and power
`consumption to
`implement
`• Go against Brooks’s
`criticism of nichrome
`heating elements
`
`Modifying Hon with
`Brooks is unnecessary
`because:
`• Additional temperature
`control is not needed
`• Hon’s heating element
`can withstand extreme
`temperatures and is
`designed to super heat
`Hon’s small atomization
`cavity
`
`Mr. Fox does not describe
`how a POSA would make
`the combination:
`• Mr. Fox does not account
`for the unique nature of
`Hon’s dual-stage
`atomizer
`• Mr. Fox does not show
`how a higher-power
`heater would be used to
`compensate for Brooks’s
`duty cycle
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 2010, Clemens Declaration at ¶¶ 105-119
`24
`
`
`
`Relying on “Ruyan” is improper
`
`No “Ruyan” document would
`have been available to a POSA
`as of October 2006
`
`Asserted Grounds
`
`Institution Decision at 7, citing Petition at 3
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Salpeter v. ARP Wave, LLC, IPR2019-01384, Paper 12 at
`15 (PTAB Jan. 27, 2020)
`
`25
`
`
`
`Relying on “Ruyan” is improper
`
`Ex. 2011, Fox Deposition at 47:18-48:4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 2011, Fox Deposition at 34:2-14
`
`26
`
`
`
`Claims 14, 24: “wherein the absorbent wicking material
`is in contact with the electrical resistance heater”
`
`Petitioner relies only on the
`combination of Hon/Whittemore
`
`Ex. 2010, Clemens Declaration at ¶¶ 82-96
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Institution Decision at 27
`
`27
`
`Petition at 61
`
`
`
`Claims 11, 23: “wherein the cartridge is electrically
`conductive”
`
`Battery
`
`Atomizer
`
`Liquid-supplying
`bottle
`Ex. 1005, Hon at 9
`
`Hon does not tell, and does not need to tell, a POSA
`what materials to use to implement Hon’s cartridge.
`
`Hon’s heater is in the power unit
`not the cartridge
`• No reason to make the cartridge
`electrically conductive
`• Cartridge would not electrically
`conduct anything
`
`Ex. 1003, Fox Declaration at ¶ 179
`
`Ex. 2010, Clemens Declaration at ¶¶ 120-124; Ex. 1005 at 9
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Claims 6, 9: “wherein the mixture comprises essentially pure
`nicotine, extracts composed predominantly of nicotine, or
`formulations composed predominantly of nicotine”
`
`Paper 16, PO Response at 60
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1009, Ray at 2:22-30
`
`Ex. 1009, Ray at 3:55-59
`
`29
`
`
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