`
`PHILIP MORRIS PRODUCTS,S.A.,
`Petitioner,
`
`Vv.
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner
`
`IPR2020-01602
`Patent 9,901,123
`
`Petitioner’s Demonstratives
`Jan. 6, 2022
`
`Ex. 1043-1 Demonstrative Exhibit — Not Evidence
`
`Philip Morris Products,S.A.
`Exhibit 1043
`PMP v. RAI
`IPR2020-0 1602
`
`

`

`The ’123 Patent
`
`‘““mixture ... wicked into contact”’
`
`“‘puff-actuated controller”’
`
`Dependent Claims
`
`Independent Claims | & I5
`
`“absorbent fibrous/wicking material is in contact with the ... heater” (claims 14 and 24) nicotine formulations (claims 6 and 19)
`
`“cartridgeis electrically conductive” (claims |
`
`1 and 23)
`
`
`
`

`

` The ’123 Patent
`
`
`
`

`

`The ’123 Patent
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 9,901,123 B2
`*Feb. 27, 2018
`
`ADUCUAEA
`
`US009901123B2
`
`a2) United States Patent
`Robinson et al.
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 9,901,123 B2
`*Feb. 27, 2018
`
`TOBACCO-CONTAINING SMOKING
`ARTICLE
`
`Applicant RAL STRATEGIC HOLDINGS, INC..
`Winston-Salem, NC (US)
`
`Inventors: John Howard Robinson, Kemersville,
`NC (US); David William Griffith, Jr..
`Winston-Salem, NC (US); Billy Tyrone
`Conner, Clemmons, NC (US); Evon
`Llewellyn Crooks, Mocksville, NC
`(US), Dempsey Bailey Brewer, Jr,
`East Bend, NC (US)
`
`Assignee: RAI Strategic Holdings, Inc.,
`Winston-Salem, NC (US)
`
`Notice:
`
`Subject to any disclaimer. the term ofthis
`patent is extended or adjusted under 35
`U.S.C, 154(b) by 0 days.
`
`This patent is subject to a terminal dis-
`claimer.
`
`(58) Field of Classification Search
`None
`See application file for complete search history.
`
`(56)
`
`References Cited
`
`U.S. PATENT DOCUMENTS
`
`1.314.682 A
`L.771366 A
`
`11/1924 Wilson
`7/1930 Wyss et al.
`(Continued)
`
`FOREIGN PATENT DOCUMENTS
`
`276250
`Is4i577
`
`T1965
`11/2004
`(Continued)
`
`OTHER PUBLICATIONS
`
`Lu, Zhang, “Safe Substinite", China Daily, Jul. 11, 2005,
`(Continued)
`
`Primary Examiner — Michael H Wilson
` 15/286,087
`Assistant Examiner—Phu Nguyen
`Oct. 5, JO16
`(74) Attorney, Agent, or Firm — Womble Bond Dickinson
`(US) LLP
`
`Prior Publication Data
`
`US 2017/0020200 Al
`
`Jan. 26, 2017
`
`(57)
`
`ABSTRACT
`
`"123 Patent (Ex. 1001 at 1)
`
`(63) Continuation of application No. 14/527,287, filed on
`Oct. 29, 2014, which is a continuation of application
`No. 13/297,983, filed on Nov. 16, 2011, now Pat. No.
`8,899,238, which is a continuation of application No.
`12/763,890, filed on Apr. 20, 2010, now Pat. No.
`8,079,371, which is a continuation of application No.
`
`11/550,634, filed onOct.18,2006,now Pat. No.
`7,726,320.
`
`Related U.S. Application Data
`
`Continuation of application No. 14/527,287,filed on
`Oct. 29, 2014, which is a continuation ofapplication
`(Continued)
`
`Int. CL
`A24F 1/00
`A24F 47/00
`
`(2006.01)
`(2006.01)
`(Continued)
`
`U.S. Cl.
`CPC oe ADE474008 (2013.01); A2IB F302
`(2013.01); A2dB I5/72 (2013.01), A2dB
`15/167 (2016.11);
`
`(Continued)
`
`A smoking article may include a cigarette incorporated
`within an clectncally powered acrosol generating device that
`acts as a holder for that cigarette. The smoking article
`possesses at least one form of tobacco. The smoking article
`also possesses a mouth-end picce that is used by the smoker
`to inhale components of tobacco that are generated by the
`action of heal upon components of the cigarette. A repre-
`sentative smoking article possesses an ouler housing incor-
`porating a source of electrical power (e.g., a battery), a
`sensing mechanism for powering the device at least during
`periods of draw, and a healing device (c.g., at least one
`electrical resistance heating element) for forming a ther-
`mally generated aerosol thal incorporates components of
`tobacco. During use, the cigarette is positioned within the
`(Continued)
`
`"a, iy
`SALADADAAAAAAt
`
`a.aYa —
`a
`BBus= Yue
`YA cope
`
`i
`
`Demonstrative Exhibit — Not Evidence
`
`

`

`The ’123 Patent Admits That The Ruyan E-Cigarette
`Was “Representative” Of Key Components
`
`Electronic Control Components
`
`Representative types of elec-
`Lt
`tronic control components are of the type can be of the type
`possessed by the Ruyan Atomizing Electronic Cigarette
`available from Ruyan SBT Technology and Development
`Co., Ltd. See, also, the types of electronic systemsset forth
`in U.S. Pat. No. 4,947,874 to Brookset al.
`
`Power Sources
`
`Co., Ltd. |
`
`_ Cartridges
`
`Representative types of cartridges are of
`the type incorporated within a device available as Ruyan
`Atomizing Electronic Cigarette from Ruyan SBT Technol-
`ogy and Development Co., Ltd. can be modified by adding
`tobacco extract thereto, or by removing at least a portion of
`the substrate and nicotine-containing material incorporated
`therein and replacing that removed portion with a tobacco
`composition.
`
`Outer Housing |
`0Csayniggayy
`_A representative outer
`m
`Representative types of
`housing can be ofthe type possessed by the Ruyan Atom-
`power sources, and representative arrangements thereof
`within the outer container, are of the type incorporated
`within a device available as Ruyan Atomizing Electronic
`Cigarette froma Ruyan SBTTechnology and Development
`° 123 Patent at 20:26-33
`
`*123 Patent at 22:6-14
`
`izing Electronic Cigarette available from Ruyan SBT Tech-
`nology and Development Co., Ltd.
`As
`
`"123 Patent at 19:56-59
`
`"123 Patent at 20:43-47
`
`End Cover
`A representative end cover or cap 35 can be of
`the type possessed by the Ruyan Atomizing Electronic
`Cigarette available from Ruyan SBT Technology and Devel-
`opment Co., Ltd.
`
`123 Patent at 20:8-11
`
`Heating Elements
`Representative types of resistance heat-
`ing elements are incorporated within a device available as
`Ruyan Atomizing Electronic Cigarette from Ruyan SBT
`Technology and Development Co., Ltd.
`13 Patent at 21-45-48
`
`Mouth-end Piece
`_ A representative mouth-end
`piece can be of the type incorporated within a device
`available as Ruyan Atomizing Electronic Cigarette from
`Ruyan SBT Technology and Development Co., Ltd.
`
`"123 Patent at 24:9-13
`
`ae
`
`Sensing Mechanisms
`_ Representative types of sensing
`mechanism components are incorporated within a device
`available as Ruyan Atomizing Electronic Cigarette from
`Ruyan SBT Technology and Development Co., Ltd. See,
`also, those types of airflow sensing mechanisms proposed in
`EPO 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 Brooks et al.;
`
`"123 Patent at 20:52-58
`
`Demonstrative Exhibit — Not Evidence
`
`

`

`Ruyan Was A Commercially Available Device From The Inventor of Hon
`
`Ruyan Website (Dec. 27, 2005)
`
`(19) State Intellectual Property Office of the People's Republic of China
`
`(51) Int. CV
`A24D 1/18
`
`[D*
`[12] UtilityModel PatentSpecification
`[11] Authorized Publication No. CN 2719043Y
`
`A24F47/00
`
`Address Suites 1010-12, 10/F) West Wing, Shun
`Tak Centre, 168-200 Connaught Road Central, Hong
`Kone
`
`[73] Patent Assignee Hon Lik
`
`(4) 28te oF CONITY Mou. seinZer onwome
`Cigarette
`[57] Abstract
`The present utility model relates to an atomizer
`‘rome cigarette
`containing no tar and only
`
`ISSN1008-4274 Ex. 1013 at 7
`
`SCIENCES HAAVSINIIE
`Hon Lik is the Chinese pharmacist who inventedthe electronic cigarette.
`Ex. 1025 at |
`
`a negati
`Ww,
`pressure cavity is set in the sensor; the atomizer is in
`contact with
`the
`liquid-supplying
`bottle;
`an
`atomization cavity is sect
`inside of the alomizer, a
`
`set between one side of the liquid-supplyingbotile
`and the enclosure, and an aerosol passage is openc
`
`retaearing to lock the liquid-supplying bottle is
`on the other sideof the liquid.supp'yms bottle;
`ur
`inlet, waved pressure
`cavity, vaor-lgu
`separrator, atomiz ee gas
`vent, and
`Outhprece are connected successively. Ther > 1s no
`lar - the sou ich nodeDeineBday
`fecling and excitemen Titi ing:
`there
`of ignition, and there is no fire
`hazar
`
`reduces the risk of cancer;
`
`use
`
`Los Anacles Cimes
`Hongothisfirst patent on the e-cigarette in 2003 and introduced it to the Chinese
`
`market the next year. The company he worked for, Golden Dragon Holdings, was so
`
`Published by Intellectual Property Publishing House
`
`inspired that it changed its name to Ruyan (meaning “like smoke”) andstartedselling
`
`abroad.
`
`Ex. 1018 at 2
`
`Demonstrative Exhibit — Not EvidenceEx.1043-6
`
`

`

`From: Robinson, John H.
`Sent: Friday, August 04, 2006 9:37 AM
`
`R
`Baye \Ahsiustise (Piss. 2h, WUE) |
`
`on (123 Invent
`
`ne
`*
`
`il
`
`,
`
`The ’123 Patent Inventors Tore Down A “Commercially Available”’
`Ruyan E-Cigarette Before Filing The ’123 Patent
`
`Ex. 1024 at 1 Pet. 6, 40-42
`
`Kk
`
`Kk
`
`Kk
`
`eS
`
`|
`
`| visited with my colleague, Steve Dworkin, at Duke yesterday and obtained 2 more electric cigars and 2
`more electric pipes for study here at RJRT. Steve brought these back for me from his recent trip to China
`where he met with executives from the Ruyan Companyat their main offices in Beijing.
`
`Ex. 1024 at 2
`
`> eeTs
`
`From: Robinson, John H.
`Sent: Friday, August 04, 2006 4:39 PM
`
`st
`
`| am putting together a plan to dissect/analyze the hardware from the pipe and cigar, and will also initiate
`a plan to get someanalytical data, e.g., how much nicotine and propolyne glycol are yielded during
`puffing, using some R&D smoking machines.
`
`s
`-
`Ex. 1013 at 7
`
`Demonstrative Exhibit — Not Evidence
`
`Ex. 1043-7
`
`

`

`The ’123 Patent Inventors Tore Down A “Commercially Available”
`Ruyan E-Cigarette Before Filing The ’123 Patent
`
`
`
`AUTHORS: DATE:|September 14, 2006
`Kevin Hatch!
`Eric Hunt’
`David Griffith?
`John Robinson”
`
`Demonstrative Exhibit — Not Evidence Ex. 10232at14
`
`PRELIMINARY EVALUATION OF A COMMERCIALLY AVAILABLE ELECTRIC
`AEROSOL INHALER FROM CHINA
`
`*K
`
`*K
`
`*K
`
`*K
`
`*K
`
`*K
`
`SUMMARY: The commercially available electronic cigar from Beijing SBT RUYAN
`Technology & Development Co., Ltd, produces a heated aerosol containing tobacco extract and
`nicotine.
`
`Ex. 1023 at |
`
`Ex. 1043-8
`
`

`

`Yeda Research & Dev. Co. v. Mylan Pharms., Inc., 906 F.3d 1031, 1041-42 (Fed. Cir. 2018) (internal quotations omitted) Pet. 9, 34
`
`“[Nlon-prior art evidence of what was known... can be relied on for their
`proper supporting roles, e.g., indicating the level of ordinary skill in the
`art, what certain terms would mean to one with ordinary skill in the art, and
`how one with ordinary skill in the art would have under-stood a prior
`art disclosure.”
`
`RJR’s Teardown of the Ruyan Device
`Illustrates A POSA’s Background Knowledge
`
`Demonstrative Exhibit — Not Evidence
`
`

`

`Petitioner Does Not Rely On Ruyan AsStatutory Prior Art
`
`Petition
`
`Petitioner’s Reply
`
`e Ground 1: Claims1, 2, 5, 7,9, 11, 12, 14, 15, 18, 21, and 23-26 are
`
`Contrary to Patent Owner’s argument, the Petition does not use the RJR
`
`Teardown as prior art. Rather, due to its direct relevance to the specification of
`
`the ’123 Patent, and to the contemporaneous knowledgeofthe inventors and POSAs,
`
`Petitioner and Mr. Fox use it
`
`to illustrate a POSA’s knowledge of general
`
`Petitioner’s Reply at 20 Demonstrative Exhibit — Not Evidence
`
`erlals used for various components
`MN
`BS
`Phe is Ny SE
`CREEEASEISS
`and the device’s general construction. Such usage is proper. See Yeda, 906 F.3d at
`
`Unpatentable Over Hon (Ex. 1005), alone or with Brooks (Ex. 1006) and
`Whittemore (Ex. 1007);
`
`e Ground2: Claims 3, 4, 13, 16, and 17 are Unpatentable Over Hon,
`
`Whittemore, Brooks, and Susa (Ex. 1008);
`e Ground 3: Claims 6 and 19 are Unpatentable Over Hon, Whittemore,
`Brooks, and Ray (Ex. 1009).
`
`Petition at 3
`
`mmercial
`
`practices
`
`in the art
`
`h as
`
`the material
`
`for
`
`vari
`
`mponent
`
`

`

`Petitioner Does Not Rely On Ruyan AsStatutory Prior Art
`
`Stewart Fox (Petitioner’s Expert)
`
`Q.
`
`...You are using the Ruyan devices to support your invalidity opinions
`regarding the domestic industry claims of the ’123 patent that are at issue
`in the IPR proceeding, correct?
`
`Fox Tr. (Ex. 2011) at 34:2-14 Demonstrative Exhibit — Not Evidence
`
`A. Again, I’m slightly nervous that if I repeat what you said there will be
`a legal argumentthat isn’t what I intended, so I’Il stick to my original
`statement: The Ruyan devices are informing me, helping me come to
`an opinion by informing me of how a person of ordinary skill in the
`art would have interpreted and understood the Hon ’043 patent, and
`therefore, showsthat the claims of the *123 patent are invalid.
`
`

`

`A POSA Would Be Familiar With Existing Smoking Devices
`
`Patent Owner’s Responseat 12 Demonstrative Exhibit — Not Evidence
`
`ey
`“
`WW
`Petition at 9-10
`
`technolo sed therein. Fox Decl.4]13-18.
`
`For purposesofthetrial in this proceeding, RAI accepts Petitioner’s proposed
`
`education and experience level of the POSA.
`
`(See Petition at 9-10.)
`
`Petition
`
`C.
`
`The Person of Ordinary Skill In The Art
`
`A POSAatthe time of the purported invention (the October 2006
`
`timeframe) would have had a Bachelor’s degree in mechanical engineering,
`
`electrical engineering, chemistry, or physics, or a related field, and three to four
`
`years of industry experience, or a Master’s degree in mechanical engineering,
`
`electrical engineering, chemistry, or physics, or a related field, and one to two
`
`years of industry experience. Such a POSA would have been familiar with
`
`electrically powered smokingarticles and/or the components and underlying
`
`

`

` Independent Claims | & 15
`
`
`
`

`

`Claims | & 15: Patent Owner Disputes Only Two Limitations
`
`eek = A a a WI ~~?
`
`ts
`
`ies
`
`HON, BROOKS, AND WHITTEMORE DO NOT RENDER
`CLAIMS1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, AND 23-26 OBVIOUS
`(GROUND1)..cccscssessessessessecscsscssesscsucsussucsucsscsucsesseseessessesussucsuesucssscaesaseavee 20
`
`Patent Owner’s Responseat1-11 (Table of Contents) Demonstrative Exhibit — Not Evidence
`
`A.
`
`B.
`
`Claims 1 and 15: “the mixture ... can be wicked into contact
`with the electrical resistance heater and volatilized”’ .....................68. 20
`
`ok
`
`ok
`
`ok
`
`Claims 1 and 15: “a puff-actuated controller within the tubular
`outer housing and adapted for regulating current flow through
`the electrical resistance heater during draw”................cccceeeeeceeeeeeeees 44
`
`

`

`IV. GROUND 2 (CLAIMS3,4, 13, 16, 17) AND GROUND3 (CLAIMS6,19)
`
`Petitioner is incorrect that RAI relies solely on its arguments for Ground |
`
`Claims | & 15: Arguments Are Directed Only to Ground|
`
`Patent Owner’s Sur-Reply at 21 Demonstrative Exhibit — Not Evidence
`
`with respect to both Grounds 2 and 3.
`
`(See Reply at 25-26.) For Ground 3, RAI
`
`specifically argued that claims 6 and 19 would not have been obvious in view of
`
`Hon, Whittemore, Brooks, and Ray for additional reasons. (See POR at 59-61.)
`
`

`

`Claims | & 15: Disputed Limitations
`
`a puff-actuated controllerwithin the tubular outer housing
`and adaptedfor regulatingcurrent flow through the
`electrical resistance heater during draw, the controller
`comprising a sensor adapted for sensing draw on the
`smoking article by a user; and
`
`°123 Patent, Claim 15 Demonstrative Exhibit — Not Evidence
`
`a puff-actuated SSRGSEwithin the tubular outer housing
`and adapted for regulatingcurrent flow through the
`electrical resistance heater during draw, the controller
`comprising a sensor adapted for sensing draw on the
`smoking article by a user; and
`
`. heacomprising
`:
`su
`sd
`the tobacco extract and the aerosol-forming material
`can beeee into contactoe the aaaresistance
`met:
`
`*123 Patent, Claim |
`
`de mixture comprising
`d
`thehaan extract and the oasisforming material
`can be wicked into contact wit ms aeewieal)resistance
`heater
`
`

`

`Independent Claims | & 15
`
`‘““mixture ... wicked into contact”’
`
` Ex. 1043-17
`
`

`

`It Ils Undisputed That Claims | & 15 Require Only That
`The “Mixture”? Can Be “Wicked Into Contact’’ With The Heater
`
`Demonstrative Exhibit — Not Evidence
`
`1. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`15. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`*s
`
`*
`
`*
`
`*
`
`tioned such that, during draw,
`
`ian knenon ¢extracta alaeroos0lI-formingeee
`heater and volatilized toSys a visible aaaneeen
`
`the mixture comprising
`
`tioned such that, during draw, the mixture comprising
`
`ihe tobacco:extractt and ihe aerosol-formingmnatextal
`heater a volatilized1to produce a visible mainstream
`
`i i a, iti
`
`pile —
`
`a
`
`a pe i. ill
`
`itn —— in
`
`-8ee
`
`—
`ee ———
`
`SEEEC pill ns DN
`
`— Sees a =
`
`°123 Patent, Claim |
`
`*123 Patent, Claim 15
`
`Ex. 1043-18
`
`

`

`RAI agrees with the Board that claims | and 15 do not require that the claimed
`
`Claims | & 15 Undisputedly Do Not Require
`That The Wicking Material ‘““Contact’”’ The Heater
`
`Patent Owner’s Response at 20-21 Demonstrative Exhibit — Not Evidence
`
`absorbent fibrous/wicking material be in contact with the heater — rather, as the
`
`Board notes, dependent claims explicitly state that the absorbent fibrous/wicking
`
`material may be in proximity to the heater or in contact with the heater.
`
`

`

`15. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`*K
`
`K
`
`K
`
`The Plain Language of Claims | & 15 Does Not Require
`That The Wicking Material ‘““Contact’”’ The Heater
`
`°123 Patent, Claims 24-25 Demonstrative Exhibit — Not Evidence
`
`the mixture comprising
`the tobacco extract and the aerosol-forming material
`can be wicked into contact with the electrical resistance
`
`oe,
`Ta i Pie
`
`
`
`ee Nni—— —iin oe se ei —_
`
`
`in
`
`
`
`
`
`ee _. 7 i ' —— ™Fll= = —— a
`
`123 Patent, Claim 15
`
`24. The smoking article of claim 15, wherein the absor-
`bent wicking material
`is in contact with the electrical
`resistance heater.
`
`25. The smokingarticle of claim 15, wherein the absor-
`bent wicking material is positioned in proximity to the at
`least one electrical resistance heater.
`
`

`

`The Prior Art Teaches ‘‘mixture ... wicked into contact’”’
`
`Fion teaches “‘wicking”’ the liquid “into contact”’
`with the heater
`
`with the heater Demonstrative Exhibit — Not Evidence
`
`A POSA would combine Hon with Whittemore,
`which undisputedly “wicks” liquid “into contact”
`
`

`

`Independent Claims | & 15
`
`‘““mixture ... wicked into contact”’ Fon
`
`
`
`

`

`Hon (Ex. 1005)
`
`[19] State Intellectual Property Office of the People's Republic of China
`
`(51) Int. CV
`Al4D 1/18
`A24F 47/00
`
`[12] Utility Model Patent Specification
`[21] ZL Patent No. 200420031182.0
`[45] Authorized Publication Date August 24, 2005
`11] Authorized Publication No.
`
`2719043Y
`
`.
`
`—a
`
`eeeae [11] Authorized Publication No. CN 2719043 Y
`
`Demonstrative Exhibit — Not Evidence
`
`145] Authorized Publication Date August 24, 2005
`
`Address Suites 1010-12, 10/F, West Wing, Shun
`Tak Centre, 168-200 Connaught Road Central, Hong
`Kong
`[72] Designer Hon Lik
`
`ioRiEn
`
`[57] Abstract
`The present utility model relates to an atomizer
`electronic cigarette containing no tar and only
`nicotine, comprising an enclosure and a mouthpiece;
`an air inlet is set on the outer wall of the enclosure;
`an electronic circuit board, a normal pressure cavity,
`a sensor, a vapor-liquid separator, an atomizer, and a
`liquid-supplying bottle are set successively in the
`enclosure; wherein the electronic circuit board is
`composed of an electronic switch circuit and a high-
`frequency generator; a sensor airflow channel
`ts
`
`opened on one side of the sensor, a negative
`pressure cavity 1s set in the sensor; the atomizer is in
`contact with
`the
`liquid-supplying
`bottle;
`an
`atomization cavity is sct
`inside of the atomizer; a
`retaining ring to lock the liquid-supplying bottle is
`set between one side of the liquid-supplying bottle
`and the enclosure, and an aerosol passage is opened
`on the other side of the liquid-supplying bottle; the
`air
`inlet, normal pressure
`cavity, vapor-liquid
`separator, atomizer, acrosol passage, gas vent, and
`mouthpiece are connected successively. There is no
`tar
`in the present utility model, which greatly
`reduces the msk of cancer; users can still have the
`feeling and excitement of smoking; there is no need
`ofignition, and there is no fire hazard.
`
`tlle —
`— al
`ee
`=——
`
`a
`
`ha
`
`-
`
`is
`
`—
`
`:
`
`ie
`
`,
`
`Se
`
`inns
`
`_
`
`-
`
`ian gl ret
`
`et
`
`.
`
`— ;
`-
`
`—
`
`le
`
`.
`
`—
`
`an
`
`Hon (Ex. 1005) at ]
`neil
`.
`-
`:
`
`ill =
`
`Claims 2 Pages Specification 5 Pages Attached
`
`“i
`
`|
`Ws
`
`\
`
`Nees
`
`at,
`
`'
`
`ISSN1008-4274
`
`Published byIntellectual Property Publishing House
`
`

`

`mimeee kteD
`
`Controller
`
`> 13
`
`2
`
`mor)
`
`|\
`
`enw|)) fh) Coma
`
`1 & 11 (annotated) Demonstrative Exhibit — Not EvidenceEx.1043-24
`
`=H
`
`| i
`
`Puff Sensor Atomizer
`
`17
`
`15 Mouthpiece
`
`Liquid-storing porous body
`
`=UE= ia:
`
`Liquid-supplying bottle II
`
`Hon (Ex. 1005) Figs.
`
`

`

`Hon (Ex. 1005)
`
`The solution in the porous body 27is
`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 underthe effect of the heating element 26; atomized droplets of large diameters are attached to
`the wall under the vortex effect and are re-absorbed by the porous body 27 via the overflow hole 29;
`droplets of small diameters suspend in the airflow and form an aerosol, which is sucked out via the
`aerosol passage 12, gas vent 17, and the mouthpiece 15. The liquid storing porous body 28 in the liquid-
`supplying bottle 11 is in contact with the bulge 36 on the atomizer9 to realize the solution supply via
`capillary infiltration.
`
`Hon (Ex. 1005) at 7
`
`Se ec
`
`- Pet. 46-49
`
`The atomizer 9 is in contact with
`the liquid-supplying bottle 11 via a bulge 36; an atomization cavity 10 is set inside of the atomizer 9. As
`shown in Figures 6 and 7, an overflow hole 29 is opened on the atomization cavity wall 25 of the
`atomization cavity 10; a heating element 26 is set in the cavity; it may be made of platinum wires,
`nichrome, or iron-chromium-aluminum alloy wires containing rare earth elements, and it may also be
`made into a sheet. An ejection hole is opened on oneside directly opposite to the heating element 26; the
`ejection hole may be a long stream ejection hole 24 or a short stream ejection hole 30 according to the
`material of the atomization cavity wall 25. The long stream ejection hole 24 may use a 0.1mm-1.3mm slit
`structure or a single-hole or multi-hole structure with @ 0.2mm-1.3mm hole(s); the diameter of the short
`stream ejection hole 30 is 0.3mm-1.3mm. A porous body 27 is wrapped around the atomization cavity
`wall 25, and [the porous body] may be made of nickel foam, stainless steel fiber felt, high molecular
`polymeric foam, and ceramic foam.
`
`aa_i
`
`Demonstrative Exhibit — Not Evidence
`
`Hon (Ex. 1005) at 6
`
`-_
`
`

`

`Institution Decision
`
`On this record, we find that Petitioner sufficiently shows that Hon
`
`discloses “during draw, the mixture comprising the tobacco extract and the
`
`aerosol-forming material can be wicked into contact with the electrical
`
`resistance heater and volatilized,” as claims 1 and 15 recite.
`
`K
`
`K
`
`K
`
`Fion’s Liquid Is “wicked into contact’ With The Heater
`
`Institution Decision at 23 & 24 Demonstrative Exhibit — Not Evidence
`
`teaches wicking material (porous body 27) in close proximity to the heater
`
`(heating element 26), wherein liquid is wicked into contact with the heater
`
`through ejection hole 24 whenair is drawn through the smokingarticle.
`
`Hon
`
`

`

`Hon’s Liquid Is “wicked into contact” With The Heater
`
`ae 23 )
`
`where it contacts “heating element 26”andis volatilized. Hon at 7; Fox Decl.
`
`Ejection Holes
`
`FIG.6
`
`q 153.
`
`Petition at 47-48
`
`Hon (Ex. 1005) Fig. 6 (annotated, yellow arrows added)
`
`Demonstrative Exhibit — Not Evidence
`
`Ex. 1043-27
`
`Petition
`
`Starting with Hon alone, Hon’s atomizer wicksthe liquid from bottle 11 to
`
`the heater as follows: “The liquid storing porous body 28 in the liquid-supplying
`
`bottle 11 is in contact with the bulge 36 on the atomizer9 to realize the solution
`
`Cavity (0
`
`supply via capillary infiltration,” i.e., wicking the solution out of the bottle. Hon at
`
`7; Fox Decl. {§ 151-152. The liquid mixture is wicked from the bottle 11 to the
`
`bulge 36 in porous body 27, and is then further wicked around and through the
`
`porous body 27 “wrapped around the atomization cavity wall 25” to ejection holes
`
`na
`Heating Elements
`
`27
`Porous Body
`
`24.
`
`*
`
`*
`
`*
`
`1/15[d] above. During the user’s draw, the wicked liquid mixture contacts the
`
`heating element—“[t]he solution in the porous body 27 is driven by the high-speed
`
`airflow ... and ejected in the form of droplets into the atomization cavity 10,”
`
`36 Bulge
`
`25
`Cavity Wall
`
`\
`
`Piezoelectric
`
`Element
`
`

`

`No Dispute That Hon Teaches “wicking”’
`
`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 underthe effect of the heating element 26;
`
`Cavity (0
`
`2K
`
`2K
`
`2K
`
`36 Bulge
`
`{7
`
`25
`VY Cavity Wa
`
`i
`
`lI
`
`Piezoelectric
`
`Element
`
`Hon (Ex. 1005) Fig. 6 (annotated, yellow arrows added) Pet. 46-48; ReplyI|
`
`26
`The liquid storing porous body 28 in the liquid-
`supplying bottle 11 is in contact with the bulge 36 on the atomizer 9 to realize the solution supply via Heating Elements
`capillary infiltration.
`Hon (Ex. 1005)at 7
`27
`Porous Body
`
`Charles Clemens (PatentOwner’s Expert)
`
`Q.
`term “capillary infiltration” means
`In Hon the
`wicking. Correct?
`A. Yes, that’s fair
`
`Clemens Tr. (Ex. 1042) at 66:12-14
`
`a Se
`XY
`
`a
`Ejection Holes
`
`rig¢
`
`Demonstrative Exhibit — Not Evidence
`
`Ex. 1043-28
`
`

`

`Patent Owner Wrongly Requires The Mixture
`To Contact The Heater “Solely” Due To Wicking
`
`Patent Owner’s Responseat 11 Demonstrative Exhibit — Not Evidence
`
`heater. Ud at 46.) This claim language does not encompass other manners of
`
`transfer, as those are explicitly described in the specification as different options.
`
`A POSA would understand that, by their plain language (“wicked into
`
`contact’), claims 1 and 15 require the first option—‘“wicked so as to contact” the
`
`

`

`Mr. Clemens Wrongly Requires The Mixture
`To Contact The Heater “Solely” Due To Wicking
`
`Clemens Tr. (Ex. 1042) at 38:13-17 Demonstrative Exhibit — Not Evidence
`
`Charles Clemens (Patent Owner’s Expert)
`Q. Is it your opinion that the plain meaning of "wicked into contact"
`requires that the mixture be brought into contact with the heater
`solely by wicking”?
`A. Yes. Yes, that is correct.
`
`

`

`Patent Owner And Mr. Clemens Are Wrong As A Matter Of Law
`
`Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l,., Inc., 246 F3d 1336, 1348 (Fed. Cir. 2001)
`
`1. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`15. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`of
`
`ok
`
`ok
`
`*K
`
`*k
`
`K
`
`The transition “comprising” creates a presumption that... the claim does not
`exclude additional, unrecited elements.
`
`°123 Patent, Claim 15 Demonstrative Exhibit — Not EvidenceEx.1043-31
`
`the mixture comprising
`,
`th:
`‘h
`the tobacco extract and the aerosol-forming material
`can be wicked into contact with the electrical resistance
`heater
`}
`
`the mixture comprising
`“raw,
`u
`the tobacco extract and the aerosol-forming material
`can be wickedinto contact with the electrical resistance
`heater
`
`°123 Patent, Claim |
`
`

`

`Patent Owner’s Narrow Construction Contradicts Claim 25
`
`15. An electrically-powered, aerosol-generating smoking
`article comprising:
`
`K
`
`K
`
`*K
`
`the mixture comprising
`the tobacco extract and the aerosol-forming material
`can be wicked into contact with the electrical resistance
`
`°123 Patent, Claims 24-25 Demonstrative Exhibit — Not Evidence
`
`123 Patent, Claim 15
`
`=
`
`=
`
`aii
`re — — oni
`
`on pe —_—
`
`24. The smoking article of claim 15, wherein the absor-
`bent wicking material
`is in contact with the electrical
`resistance heater.
`
`25. The smokingarticle of claim 15, wherein the absor-
`bent wicking material is positioned in proximity to the at
`least one electrical resistance heater.
`
`

`

`Fion’s Liquid Contacts Its Heater
`
`Petition
`
`Stewart Fox (Petitioner’s Expert)
`
`During the user’s draw, the wicked liquid mixture contacts the
`
`153. Whenthe user drawson the device, the liquid “solution in the porous
`
`heating element—“[t]he solution in the porous body 27 is driven by the high-speed
`
`body 27 is driven by the high-speed airflow ... and ejected in the form of droplets
`
`Hon (Ex. 1005) at7
`
`xiii, a
`
`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; atomized droplets of large diameters are attached to
`the wall under the vortex effect and are re-absorbed by the porous body 27 via the overflow hole 29;
`
`Fox Decl. (Ex. 1003) 4 153 Demonstrative Exhibit — Not Evidence
`
`airflow ... and ejected in the form of droplets into the atomization cavity 10,”
`
`into the atomization cavity 10,” where it contacts “heating element 26” and
`
`where it contacts “heating element 26” andis volatilized. Hon at 7; Fox Decl.
`
`volatilized into an aerosol “whichis sucked outvia the aerosol passage 12, gas vent
`
`153.
`
`1
`
`Petition at 48
`
`17, and the mouthpiece 15.” Hon at7.
`
`

`

`Patent Owner's Argument Is Wrong As A Matter Of Law
`
`But Hon does not explicitly disclose that its liquid contactsits
`
`In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) Demonstrative Exhibit — Not Evidence
`
`A reference “need not satisfy an ipsissimis verbis [in the identical words] test”
`in orderto disclose a claim element.
`
`heating element, and both experts agree.
`
`Patent Owner’s Sur-Reply at 6
`
`

`

`6
`25
`Heating Elements
`Cavity Wall
`27
`heating element—“(t]he solution in the porous body 27 is driven by the high-speed|porous Body
`
`Hon (Ex. 1005) Fig. 6 (annotated, yellow arrows added) Demonstrative Exhibit — Not Evidence—Ex.1043-35
`
`Petition
`
`During the user’s draw, the wicked liquid mixture contacts the
`
`airflow ... and ejected in the form of droplets into the atomization cavity 10,”
`
`whereit contacts “heating element 26” andis volatilized. Hon at 7; Fox Decl.
`
`q 153.
`
`Petition at 48
`
`The Petition Explains That FHion Teaches Contact
`
`Cavity (0
`
`36 Bulge
`
`j
`
`—2
`
`A
`
`Ejection Holes
`
`fig¢
`
`Piezoelectric
`
`Element
`
`a 23
`
`XY’)
`
`

`

`6
`153. When the user draws on the device, the liquid “solution in the porous|Heating Elements 25
`
`27
`\
`Zp
`Cavity Wall
`body 27 is driven by the high-speed airflow ... and ejected in the form of droplets|porous Body
`
`Hon (Ex. 1005) Fig. 6 (annotated, yellow arrows added) Demonstrative Exhibit — Not EvidenceEx.1043-36
`
`into the atomization cavity 10,” where it contacts “heating element 26” and
`
`volatilized into an aerosol “whichis sucked out via the aerosol passage 12, gas vent
`
`17, and the mouthpiece 15.” Honat 7.
`
`Fox Decl. (Ex. 1003) §] 153
`
`,
`
`Piezoelectric
`
`Element
`
`XY’)
`
`Ejection Holes
`
`pig¢
`
`Mr. Fox’s Declaration Explains That Hon Teaches Contact
`
`Cavity (0
`
`36 Bulge
`
`_2
`
`Stewart Fox (Petitioner’s Expert)
`
`

`

`Patent Owner Misrepresents Mr. Fox’s Testimony
`
`Patent Owner’s Response
`
`|
`
`During his deposition, Mr. Fox concededthat
`
`Fox Tr. (Ex. 2011) at 94:22-95:8 (objection omitted) Demonstrative Exhibit — Not Evidence
`
`A. A person -- a POSAreading the Hon patent, it would be -- it would be
`obvious to them that the liquid is ejected out of the holes and strikes the
`heater in liquid form for it to be vaporized by the heater before it reaches
`the heater.
`
`Hon does not describe that the liquid contacts the heater. (Ex. 2011 at 94:22-95:8.)
`
`Patent Owner’s Responseat 25
`
`Stewart Fox (Petitioner’s Expert)
`
`Q. The Hon patent in the four corners of that document doesn't disclose that the
`material is reaching the heating element in liquid form, correct?
`
`Ex. 1043-37
`
`

`

`Patent Owner Misrepresents Mr. Fox’s Testimony
`
`Stewart Fox (Petitioner’s Expert)
`
`In your declaration, you don't cite any evidence that the liquid actually contacts
`the heating in liquid form, correct?
`
`Demonstrative Exhibit — Not Evidence Ex. 1043-38
`
`In my declaration, I said, in the context of the '123 patent, Hon does teach
`that the liquid is wicked onto the heater, which -- into contact with the
`heater, and a person of ordinary skill in the art would understand that it
`reaches the heater in liquid form.
`
`Q.
`
`A.
`
`Reply 8-9
`
`Fox Tr. (Ex. 2011) at 95:19-96:3
`
`

`

`Patent Owner Misrepresents Mr. Fox’s Testimony
`
`Stewart Fox (Petitioner’s Expert)
`
`Q. Now, the Hon patent never discloses that any liquid actually contacts the heating
`
`A. elementin liquid form, correct?
`
`A person of ordinary skill in the art would look at the specification in Hon
`and figure 6, and the specification states that a long stream ejection hole ts
`opened on oneside of the heating element. I recall it also says somewhere,
`but I can't find the exact reference, that the ejection hole is directly opposite
`the heating element. So with that information and looking at figure 6, a
`POSAwill understandthat the liquid is ejected out of the holes directly onto
`the heating element, where it would be vaporized and then form an aerosol.
`
`Fox Tr. (Ex. 2011) at 94:5-21 (objection omitted)
`
`Reply 8-9
`
`Demonstrative Exhibit — Not Evidence
`
`

`

`Patent Owner Misrepresents Mr. Fox’s Testimony
`
`Stewart Fox (Petitioner’s E