Trials@uspto.gov
`571-272-7822
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`Paper No. 31
`Entered: March 1, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
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`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`IPR2020-01602
`Patent 9,901,123 B2
`_______________
`
`Record of Oral Hearing
`Held: January 6, 2022
`_______________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
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`571-272-7822
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`
`
`
`Paper No. 31
`Entered: March 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`IPR2020-01602
`Patent 9,901,123 B2
`_______________
`
`Record of Oral Hearing
`Held: January 6, 2022
`_______________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
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`IPR2020-01602
`Patent 9,901,123 B2
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`GREGORY SOBOLSKI, ESQ.
`Latham & Watkins, LLP
`500 Montgomery Street
`Suite 2000
`San Francisco, CA 94111
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`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`DAVID MAIORANA, ESQ.
`Jones Day
`901 Lakeside Avenue E.
`Cleveland, OH 44114
`
`
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`
`
`The above-entitled matter came on for hearing on Thursday, January
`6, 2022, commencing at 10:00 a.m., EDT, by video/by telephone.
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`IPR2020-01602
`Patent 9,901,123 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE KOKOSKI: Today we will hear arguments in
`
`IPR2020-01602 concerning U.S. patent No. 9,901,123. I'm Judge
`Kokoski and I'm joined today by Judge Ankenbrand and Judge
`Roesel. Start with appearances beginning with Petitioner.
`
`MR. SOBOLSKI: Good morning, Your Honor. Greg
`Sobolski arguing on behalf of Petitioners from Latham &
`Watkins, and I'm joined by my lead counsel, Jon Strang.
`
`JUDGE KOKOSKI: Okay. Thank you. Patent Owner?
`
`MR. MAIORANA: Good morning, Your Honor. David
`Maiorana from Jones Day on behalf of the Patent Owner. I'm
`joined by my partner, Kenny Luchesi.
`
`JUDGE KOKOSKI: Okay. Thank you. Consistent with
`our Hearing Order each party has 60 minutes to present their
`arguments. Petitioner will proceed first. You may reserve time
`for rebuttal. How much time would you like to reserve?
`
`MR. SOBOLSKI: Fifteen minutes please, Your Honor.
`
`JUDGE KOKOSKI: Okay. And Patent Owner will then
`have 60 minutes to present their case and you may reserve time
`for surrebuttal. How much time would you like to reserve?
`
`MR. MAIORANA: Twenty minutes, Your Honor. Thank
`you.
`JUDGE KOKOSKI: Okay. Before we begin, I just want to
`
`remind the parties that we each have a copy of your
`demonstratives that you provided. During your argument please
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`identify clearly and specifically the demonstrative referenced by
`slide or screen number so that everyone can follow along and
`this will also ensure clarity and accuracy of the court reporter's
`transcript. We request that you keep your line muted when
`you're not speaking. Please keep in mind the remote nature of
`this hearing may result in audio lags so please pause prior to
`speaking so as to avoid speaking over others. With that,
`Petitioner, you can proceed when you're ready.
`
`MR. SOBOLSKI: I am ready, Your Honor. Thank you
`very much. Your Honor, on slide 2 of Petitioner's
`demonstratives we have the agenda of disputed issues that I'm
`prepared to address today but I'm happy to answer any questions
`that the Board has about any of them. But I'd like to begin
`where I think the most important dispute today may be.
`
`With respect to independent claims 1 and 15 which require
`that the mixture be wicked into contact with the heater and
`dependent claim 25 which requires that the wick be in proximity
`to the heater, I think the evidence and the arguments why Hon
`alone teaches those claims is well laid out in the briefing. The
`evidence is clear and the claim construction issues that drive that
`are laid out well in the briefs.
`So I'd like, if I may, to begin by focusing on dependent
`claims 14 and 24 and the combination of Hon plus Whittemore.
`As the Board knows claims 14 and 24 recite that the wicking
`material be in contact with the heater and the combination of
`Hon and Whittemore is the grounds and the basis on which
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`Petitioners have argued those claims would have been obvious.
`If I may turn the Board's attention to demonstrative 48,
`please. At the outset, Your Honors, there is no dispute in this
`proceeding that the Whittemore reference as early as 1935 taught
`wicking a liquid into contact with an electrical resistance heater
`as claims 1, 14, and 24 each recite. Patent Owner's expert
`admitted that at his deposition and that's the excerpt on the right
`hand side of slide 48.
`JUDGE ROESEL: This is Judge Roesel. I'm unable to hear
`anymore. Can we stop for a moment, please?
`JUDGE KOKOSKI: Let's go off the record.
`THE REPORTER: Off the record.
`
`(Pause, due to technical difficulties.)
`JUDGE KOKOSKI: Let's go back on the record and start
`up again. Go ahead.
`MR. SOBOLSKI: So on demonstrative 48 as I was saying,
`the key point -- there's no dispute that Whittemore teaches the
`limitations of dependent claims 14 and 24 and Patent Owner's
`expert, Mr. Clemens, admitted that at his deposition in this
`proceeding, that's the excerpt on slide 48. The only dispute with
`respect to these claims is whether a POSA would have had a
`reason to make the simple substitution of Whittemore's tried and
`true and simple heater and cheaper heater to replace Hon's more
`complicated and expensive atomizer solution. A POSA would,
`and the key issue here is that Hon itself actually recognizes the
`need to simplify its complicated atomizer design and Hon even
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`teaches that one approach to doing that is to rely solely on a
`heater. A POSA reading the teaching in Hon to rely solely on a
`heater would go in that direction and keep going in that direction
`towards the tried and true single heater and wick solution of
`Whittemore which, as I'll address, the record in this proceeding
`shows was undisputedly cheaper and it was also simpler. Now
`there's pre- and post-Institution objective evidence in the record
`to confirm a POSA would make that simple substitution.
`If I may begin by turning the Board's attention to
`demonstrative 51. Demonstrative 51 has an excerpt from the
`'123 patent specification and the first point here is the
`specification confirms this is a straightforward substitution
`because it would have been well within the skill and knowledge
`of a POSA to understand that the selection of the resistance
`heating elements were not just a matter of design choice but also
`readily apparent in this art and that echoes Mr. Clemens's
`testimony that Whittemore's tried and true heater was one of
`those readily apparent design choices that had been known since
`1935 and that takes us to the second point which is indicated on
`demonstrative 55.
`Now this is the excerpt at the top that I was referring to
`from the Hon reference. Hon expressly recognizes the need to
`simplify its complicated piezoelectric-based atomizer. Now, this
`is also the excerpt that Patent Owner has emphasized throughout
`this proceeding. But here Hon is not only acknowledging that its
`piezoelectric design has complexity, but equally important Hon
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`is emphasizing a possible way to simplify that complicated
`design is by relying only on the heating element. Now the use of
`a heating element with the tried and true solution of Whittemore
`of course and it advantageously also avoids the use of more
`complicated parts like Hon's ceramic wall or porous body or
`piezoelectric elements.
`Now I submit Patent Owner has throughout the proceeding
`misread this important teaching from the Hon reference and to be
`clear, the Patent Owner has not argued that there's any teaching
`away in Hon from Whittemore's solution. So what this passage
`actually teaches is a direction, an alternative direction and a
`POSA going in that direction has no reason under the law, as the
`Federal Circuit has explained in cases that we briefed like Allied
`Erecting & Dismantling Co. v. Genesis Attachments, LLC to not
`go further down the same direction. That's the motivation to
`arrive at Whittemore and use its tried and true simpler heating
`element.
`The next important objective evidence in the record, Your
`Honors, relates to the undisputed fact that Whittemore's heater
`would have been understood by a POSA to be cheaper than Hon's
`more complicated atomizer solution. If I can point Your Honors
`to demonstrative 54. This is another excerpt from Patent
`Owner's Mr. Clemens's deposition in this proceeding and in the
`excerpts on the right Your Honors will see that Mr. Clemens
`admitted that a thread, which is the detector's material in
`Whittemore, a thread is not expensive. The piezoelectric
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`transducer, as there is in Hon, is more expensive than a thread.
`So is a porous body and so is a ceramic wall and in fact Mr.
`Clemens further admitted at his deposition which is Exhibit
`1042, in his deposition transcript at page 118 beginning at line 9
`Mr. Clemens also admitted that it would be cheaper to assemble
`Whittemore's wick heater arrangement that it would be to
`assemble the more complicated atomizer of Hon. This is post-
`institution objective evidence that Whittemore's tried and true
`design was cheaper than Hon's complicated atomizer. There is
`no dispute about that and it's an important part of the motivation
`for a POSA to make this simple substitution.
`The next point I want to make, Your Honors, that there's
`objective evidence that a POSA would also understand that
`Whittemore's heater was less complicated than Hon's atomizer.
`Now, the first point I'd like to make here is what the patent
`itself, the '123 specification itself admits on this point. If I may
`turn Your Honors to slide 5. Slide 5 has a series of excerpts
`from the '123 patent and all of them have one thing in common,
`this consistent admission throughout the specification that a
`commercially available prior electronic cigarette called the
`Ruyan Atomizing Electronic Cigarette was representative of a
`host of key components. It's admitted in no fewer than ten times
`throughout the specification and that includes importantly for
`this issue the excerpt we have in the middle of slide 5, which
`admits that the Ruyan Atomizing E-Cigarette was representative
`-- had representative types of resistance heating elements. This
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`was known to a POSA it was accessible. There's nothing special
`about the heating element. Why does this matter? Ruyan was
`the company that made this electronic cigarette and the
`individual who designed it at Ruyan is Mr. Hon Lik. As Your
`Honors know, Mr. Hon Lik is the sole inventor in the Hon
`reference that's at issue in this case.
`Now the key point is there's further objective evidence in
`this record about how a POSA would think about these Hon-style
`heating mechanisms. I'd like to turn the Board's attention to
`slide 62 on that point. Slide 62 is an excerpt from Exhibit 1043
`which is a teardown of a Ruyan electronic cigarette that was
`performed by Patent Owner before filing the '123 patent
`application and it wasn't just Patent Owner, it was a team of
`Reynolds's engineers that included the two lead inventors on the
`'123 patent. In other words, this teardown is important because
`it's objective independent evidence in the record of what a POSA
`would think, would conclude, when studying this Hon device that
`was commercially available. Independent of litigation before the
`cloud or threat of litigation what could these engineers, looking
`at this commercially available Hon electronic cigarette,
`conclude?
`Well, here's one of the key points is highlighted on the
`bottom. The Patent Owner engineers and the inventors remarked
`that the grid dissection of the Ruyan electronic device had an
`intricate design, it had a complexity of design. That complex
`design meant it had a small margin for error in assembly and that
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`probably accounted, according to them, to the relatively high
`cost of that device. So this is independent complementary
`evidence objectively in the record of how a POSA would
`understand and would conclude that the type of atomizer that's
`taught in Hon is in fact complex, is in fact expensive and there's
`a motivation to find a simpler, cheaper solution. That would
`have been found through the simple substitution of bringing in
`Whittemore's tried and true heater.
`JUDGE KOKOSKI: Counsel?
`MR. SOBOLSKI: One final point --
`JUDGE KOKOSKI: Counsel, this is Judge Kokoski. I have
`a question. So this -- my understanding is this is an internal
`report to RJR; is that correct? Was it a publicly available --
`MR. SOBOLSKI: Yes, Your Honor.
`JUDGE KOKOSKI: -- at the time?
`MR. SOBOLSKI: Yes. Correct. It is publicly available
`now. At the time this was an internal report. The Ruyan website
`and information about it, pictures about it, that was publicly
`available. This Exhibit 1043 at the time, you are correct, was
`internal to Reynolds.
`JUDGE KOKOSKI: So there seems to be evidence of what
`the inventors knew. How is this evidence of what a person of
`ordinary skill in the art knew at the time?
`MR. SOBOLSKI: Sure -- and to be clear, Your Honor,
`because I think there's been some confusion about this in the
`papers. Petitioners have never relied on Exhibit 1043 as prior
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`art. In other words, it's not part of our formal grounds or
`combinations. This is evidence though when a team of engineers
`objectively through the lens of, as engineers, let's see what this
`device looks like. What's it all about, what are the pros, what
`are the cons? This is what they would conclude. Now the
`Federal Circuit's been clear that that is proper evidence. In other
`words the Federal Circuit has explained, and I have the excerpt
`from this on slide 8 if Your Honors would like to see the citation
`-- I'm sorry, slide 9. In the Yeda Research & Dev. Co. v. Mylan
`Pharms Inc. case the Federal Circuit explained that non-prior art
`evidence of what was known can be relied on for supporting
`roles and those supporting roles can include relevant here the
`level of skill in the art for what a POSA would have understood
`about a prior art disclosure and Judge Kokoski, that is the
`purpose for which we're using this teardown and Exhibit 1043.
`In other words, any engineer reasonably would draw these
`conclusions. Certainly this is complementary evidence. It is no
`way contradicts our expert Mr. Fox's assertions about what a
`POSA would understand when looking at Hon. It shows the same
`conclusions.
`JUDGE KOKOSKI: Okay. Thank you.
`MR. SOBOLSKI: Does that answer your question, Your
`Honor?
`JUDGE KOKOSKI: You can continue. Thank you.
`MR. SOBOLSKI: Thank you, Your Honor. So I'd like to
`turn to one more aspect of this Hon plus Whittemore record and
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`that is the prior proceeding that's in the papers. I'd like to turn
`the Board's attention to slide 58 if I may, and I will say at the
`outset, Judge Kokoski, I fully recognize I am about to talk about
`a prior proceeding in which Your Honor drafted the final written
`decision and I look forward to that discussion with you because I
`think that the record in the prior proceeding is very instructive in
`this proceeding for a couple of reasons. Of course, the Board
`here is not bound by it, we never suggested that and I want to be
`crystal clear about that and the Board can interpret that prior
`proceeding of course however it wishes. But there are two
`important points that I do want to stress because I think they
`help put some perspective on the nature of the dispute here and I
`think they undermine the factual arguments that Patent Owner
`has tried to make.
`So first for context, in that prior proceeding in the excerpt
`that we see here on slide 58. Reynolds in that case was the
`petitioner and so they were arguing obviousness of a couple of
`claims from a certain patent and what we see in the excerpt on
`slide 58 is what Reynolds argued is that a POSA would have
`been highly motivated to substitute the wick heating wire
`configuration of Whittemore with the heating wire of Hon to
`achieve predictable results. So they started with the premise that
`there was high motivation to look to Whittemore to simplify
`Hon.
`If we turn to slide 59. Here's the, I would submit the very
`critical point. Slide 59 on the left is the argument that Reynolds
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`made in support of that combination then. They argued that it
`would be simple thermodynamics that would motivate a POSA to
`modify Hon as taught by Whittemore. In contrast, they said,
`Whittemore's wick heating wire configuration is more thermally
`efficient than Hon. It was simple thermodynamics and a POSA
`would know Whittemore was more thermally efficient.
`But on the right is what Patent Owner has argued in this
`proceeding and it's exactly the opposite. Now their position is
`the very same Hon reference there'd be no motivation to include
`the heat or wick design of Whittemore and Hon has a heater
`that's more efficient. That's exactly the opposite of what they
`argued before and the simple question that I would put to the
`Board is what has changed? Nothing. It's still simple
`thermodynamics. There's nothing in the record in this
`proceeding that changes that. There's one more important point I
`think about that prior proceeding that --
`JUDGE ROESEL: Petitioner?
`MR. SOBOLSKI: -- (indiscernible) --
`JUDGE ROESEL: Petitioner, this is Judge Roesel. If I
`could interrupt for just a second. How about the experts in the
`1268 proceeding with Reynolds, did Reynolds have the same
`expert testifying about the combination of Hon and Whittemore
`as it does in this proceeding?
`MR. SOBOLSKI: I believe it was a different expert, Your
`Honor. I believe, well, it was Mr. -- it is Mr. Clemens in this
`proceeding and I think in the prior one, Judge Roesel, it was a
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`gentleman named Dr. Sturges.
`JUDGE ROESEL: Thank you.
`MR. SOBOLSKI: So if that answers your question, Your
`Honor, I'd like to turn to one final point that I think is highly
`instructive because it connects that prior proceeding to this
`proceeding in a meaningful way and that's on slide 61 and the
`top excerpt in particular. So in the top excerpt is a portion of the
`final written decision from that prior proceeding and to be clear
`in that prior proceeding the Board did not credit the obviousness
`argument that Reynolds made. Instead, it credited the
`obviousness argument that turns out to be what we are making in
`this proceeding. That's what we see here. The prior Board
`decision credited Patent Owner's contention, that was a company
`called Fontem. That contention was supported by testimony that
`it would be a simple substitution, as Petitioner proposes, to
`remove the entire atomizer of Hon and replace it with the wire
`wrapped wick of Whittemore. That is our combination in this
`proceeding. Replace the entire atomizer of Hon and replace it
`with Whittemore's wire wrapped wick directly into the liquid.
`That's the simple substitution.
`In other words, the dispute in the prior case was okay, the
`parties got to a point where they agreed okay, there would be a
`simple substitution but the fight was what would it be and the
`Board disagreed that it would be taking only part of Hon's
`atomizer and adding a second wick to it. What the Board
`credited was there is a simple substitution if there is a simple
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`substitution to be had, that simple substitution is remove the
`entirety of Hon, replace it with Whittemore. That is the
`argument in this case. That's what our expert, Mr. Fox, has
`explained in detail why a POSA would make that substitution
`and as we've seen the record in this case as it’s developed since
`Institution shows that simple substitution would have been
`indisputably cheaper and results in a configuration that's less
`complicated than what was in Hon.
`One final note about that prior proceeding because I
`recognize that in the Institution decision for this proceeding the
`Board expressed some skepticism about the way we're reading
`that prior proceeding. We take that very seriously. We've given
`it a lot of thought and here is what I would say to the Board
`about that. In the institution decision I think the Board focused
`on something that comes just after this excerpt that's on slide 61
`and there was a passage there in which the Board was quoting the
`expert in the case who said that if the porous body 27, and if
`Your Honors want to follow along the final written decision from
`the prior case is Exhibit 1043 and I am reading from page 18 of
`Exhibit 1043. So the Board said,
`"If the porous body 27 and the heating wire of Hon are
`removed then the atomizer of Hon is entirely discarded and
`replaced with something else having little relation to the
`atomizer disclosed in Hon."
`And I think in the institution decision here that little
`relation is what Your Honor focused on. But that little relation
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`is an indication that is in support of the simple substitution. In
`other words, we would agree in the sense that Whittemore,
`because it's simpler, cheaper, less complicated than Hon, when
`substituted for the entirety of Hon that has little relation so to
`speak in the sense that it's been highly simplified and made
`cheaper. In other words, the Board previously found that it
`would be redundant to adopt what was then Reynolds'
`substitution and instead the simple substitution, if there had been
`one, would have been to entirely remove Hon. Again, that is
`precisely the combination that we as Petitioners have advanced
`in this case and the record shows objective evidence of the
`reasons why the simple substitution would be made.
`If Your Honors have no further questions on the
`combination of Hon and Whittemore, I'd like to turn to the next
`second issue in claims 11 and 23 which recite that the cartridge
`is electrically conductive.
`If I can turn your attention to slide 92, please. Slide 92 is
`the language of the claims at issue and the points here are these
`are two dependent claims about material selection. They recite
`the smoking article of the claim 1 or 15 wherein the cartridge is
`electrically conductive.
`Now, if you look at slide 93 which is the specification's key
`disclosure about the material composition of the cartridge, the
`point is the specification describes no special significance to the
`material composition. In fact as Your Honors can see on this
`excerpt from slide 93 the specification teaches the cartridge can
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`be manufactured from a variety of materials that includes metals,
`that can include paper, can include plastic. It's interchangeable,
`there's no special significance to one or the other. No
`unexpected results from one or the other. No surprising results
`and no -- undisputedly there's no explanation in the specification
`why a cartridge that can conduct electricity works better or is
`preferable relative to these others. It's just a material claim
`limitation and that's the first key point because Patent Owner to
`rebut our argument is including a functional requirement on to
`that plain language. They're reading the plain language of the
`claims as if it recited something like wherein the cartridge is
`conducting electricity and that's not what's claimed. It's legal
`error to import a functional limitation in these dependent claims
`that don't have it.
`The next important point is on demonstrative No. 95 which
`is that the record in this proceeding confirms that metal materials
`were well known in the electronic cigarette art. In fact I'd point
`Your Honors' attention to, for example the three excerpts on here
`in particular the third one from the Kessler reference which
`shows background knowledge in the art and taught the use of a
`metallic mesh to hold and store more smokable liquid substances.
`As Mr. Fox has opined, it would have been obvious to a POSA to
`try to make Hon's liquid storing porous body 28 out of these
`other materials known to be suitable like the metal mesh that's
`described in Kessler and that's for reasons including metals
`conduct heat better than non-metals, they can reduce the risk of
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`liquid storing porous body in Hon suffering from heat related
`damage and Mr. Fox lays out those opinions in detail at, for
`example paragraphs 187, 188 and 189 of his declaration. Again,
`the key point here is really the sole rebuttal from the Patent
`Owner is that none of the wires in Hon's device are connected to
`Hon's cartridge but again that misses the point because it imports
`improperly and erroneously a functional limitation. The plain
`language of the claims on slide 92 says nothing about wires let
`alone a requirement that there be wires coming in to or out of the
`cartridge. The only requirement is selection of a material that is
`electrically conductive and those materials like metals were well
`known.
`The second important part of the specification to which I
`would point Your Honors is at column 25, line 53 of the '123
`patent. At column 25, line 53 that reinforces the passage we just
`saw. Column 25 reads,
`"In one embodiment, the cartridge 85 and/or the wrapping
`material of the tobacco rod can be manufactured from materials
`that to some degree conduct electricity."
`That reinforces that it's a material selection set of
`dependent claims. There's no functional requirement in it.
`There's no support for that in the intrinsic record and it's legal
`error for the Patent Owner to import it.
`If I may then turn to the next issue in dispute, Your
`Honors, which is the puff-actuated controller limitation of
`independent claims 1 and 15. Two key points on this and as
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`Your Honors know there are two independent ways for the Board
`to find obviousness of this limitation. First, Hon alone teaches
`this limitation in the same way that Mr. Clemens, Patent Owner's
`expert, admitted the '123 patent described. So that's the first key
`point. The way it's taught in Hon is, by Mr. Clemens's own
`admission, what the '123 patent describes as the claimed puff-
`actuated controller adapted for regulating current flow during
`draw.
`Now, as to the second ground there's no dispute that Brooks
`teaches that limitation, the combination of Hon plus Brooks.
`There's no dispute about that. The only dispute is whether a
`POSA would combine Hon with Brooks and again that would be
`an obvious and simple substitution because by its own terms,
`Brooks teaches more accurate and sophisticated current actuation
`and current regulation means and heating protections.
`Now I want to briefly address the evidence that supports
`that Your Honors. If I could turn to slide 85. Again, there's no
`dispute about what Brooks teaches here and the first point is
`there's an important admission in the specification that I submit
`is dispositive on this issue. It's on slide 86. The first point is
`the specification admits that there were representative electronic
`controllers and not only were they known in the Ruyan e-
`cigarette that we talked about before, they were known
`specifically in the Brooks reference that's the basis for this
`ground; right? The patent makes that admission twice. That's
`what we've highlighted on slide 86.
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`So why would a POSA look to Brooks's controller? Well,
`as I said and this is excerpted on slide 87, Brooks has two
`important teachings that provide a motivation and clear reason
`for a POSA to implement its controller. It's accurate and
`sophisticated and it has overheating protection. That's especially
`important, the overheating protection, given what Patent Owner
`has argued throughout this case that Hon has some particular
`concern with make the device as hot as possible. That naturally
`motivates a POSA to look for a sophisticated solution to the
`problem on the overheating and Brooks offers --
`JUDGE KOKOSKI: Counsel, this is Judge Kokoski. I have
`a question on that. Previously you were arguing about Hon
`looking to simplify its device. Would adding this accurate and
`sophisticated current actuation controller from Brooks, would
`that further complicate the device or increase the expense or
`anything like that in contravention of what you argued earlier?
`MR. SOBOLSKI: I appreciate the question, Your Honor.
`The answer is no and the reason is Brooks and if I can turn Your
`Honor to slide 89, this is an important part of the teaching of
`Brooks, Brooks actually assembled its controller. The
`instructions are there, the information is there, the details are
`there. There's no particular effort or challenge or conditional
`details to be worked out other than simple adaptation so that
`Brooks functions and so that's the answer to Your Honor's
`question.
`I would make a second point though because I suspect my
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`IPR2020-01602
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`friend will argue the opposite. But to the extent that that
`circuitry, you know, would be -- well to the extent that there's
`more circuitry in Brooks than there is in Hon, that's a trade-off a
`POSA would happily make, would have a reason to make because
`of Brooks's teaching that it's accurate and sophisticated and I
`submit, Judge Kokoski, that sort of fundamental contradiction in
`the position Patent Owner takes in this case is that on the one
`hand they talk about how sort of crude Hon is and on the other
`hand they deny that there'd be any reason to improve or modify
`Hon. Those two things can't be reconciled and I think the way a
`POSA reconciles that if you look to a reference like Brooks that
`doesn't just teach an accurate and sophisticated controller design,
`but actually assembles it and shows how to implement it. Does
`that answer your question, Your Honor?
`JUDGE KOKOSKI: You can continue. Thank you.
`MR. SOBOLSKI: And so the final point on that, Your
`Honor, is in light of Brooks's teaching of the assembly and its
`controller, the key point there is it makes Brooks's controller
`more than just a teaching, it's reliable. It's known to be reliable
`and have exhibited consistent results and as Your Honors know
`and as the Federal Circuit has explained in cases like Par
`Pharmaceuticals when the prior art makes clear that use of the
`claimed technology became r
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