Patent Owner Response
`IPR2020-01602
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner
`
`Patent No. 9,901,123
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`
`
`
`Case IPR2020-01602
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`PATENT OWNER RESPONSE
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`Patent Owner Response
`IPR2020-01602
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................. iii
`LIST OF PATENT OWNER EXHIBITS ................................................................ iv
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`THE ALLEGED GROUNDS OF UNPATENTABILITY ............................ 2
`III. THE ’123 PATENT ........................................................................................ 2
`A. Overview Of The ’123 Patent .............................................................. 2
`B.
`The Challenged Claims ........................................................................ 6
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 12
`VI. OVERVIEW OF THE CITED REFERENCES ........................................... 12
`A. Hon ..................................................................................................... 13
`B.
`Brooks................................................................................................. 16
`C. Whittemore ......................................................................................... 18
`D.
`Susa ..................................................................................................... 19
`E.
`Ray ...................................................................................................... 19
`VII. HON, BROOKS, AND WHITTEMORE DO NOT RENDER
`CLAIMS 1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, AND 23-26 OBVIOUS
`(GROUND 1) ................................................................................................ 20
`A.
`Claims 1 and 15: “the mixture … can be wicked into contact
`with the electrical resistance heater and volatilized” ......................... 20
`1.
`Hon Does Not Disclose That “the mixture … can be
`wicked into contact with the electrical resistance heater
`and volatilized” ........................................................................ 20
`a)
`Hon Does Not Disclose That Its Liquid Mixture
`Comes Into Contact With Its Heating Element ............. 21
`Hon’s Liquid Mixture Is Not Transferred To Hon’s
`Heating Element By Wicking ........................................ 27
`A POSA Would Not Have Combined Hon With
`Whittemore ............................................................................... 33
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`b)
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`2.
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`TABLE OF CONTENTS
`(continued)
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`Patent Owner Response
`IPR2020-01602
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`Page
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`a)
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`b)
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`B.
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`C.
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`2.
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`The Board Correctly Determined That Petitioner
`Has Not Established Why A POSA Would Have
`Attempted To Modify Hon With Whittemore ............... 33
`The Board Should Disregard Mr. Fox’s Opinions
`Regarding The “Ruyan Devices” .................................. 37
`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” ..................................... 44
`1.
`Hon Does Not Disclose The Claimed Controller .................... 44
`2.
`Petitioner Has Not Demonstrated That It Would Have
`Been Obvious To Modify Hon With Brooks ........................... 47
`Petitioner Cannot Show That A Number Of Dependent Claims
`Would Have Been Obvious For Additional Reasons ......................... 55
`1.
`Claims 11 and 23: “wherein the cartridge is electrically
`conductive” .............................................................................. 55
`Claims 14 and 24: “wherein the absorbent fibrous
`material is in contact with the electrical resistance heater” ..... 57
`VIII. HON, BROOKS, WHITTEMORE, AND SUSA DO NOT RENDER
`CLAIMS 3, 4, 13, 16, AND 17 OBVIOUS (GROUND 2) .......................... 58
`IX. HON, BROOKS, WHITTEMORE, AND RAY DO NOT RENDER
`CLAIMS 6 AND 19 OBVIOUS (GROUND 3) ........................................... 59
`CONCLUSION ............................................................................................. 61
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`X.
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`TABLE OF AUTHORITIES
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`Patent Owner Response
`IPR2020-01602
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`Page
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`CASES
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`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) .......................................................................... 33
`
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .......................................................................... 60
`
`Lantz Med., Inc. v. Bonutti Research, Inc.,
`IPR 2015-00995, Paper 11 (PTAB Oct. 21, 2015) ............................................. 37
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9
`
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`IPR2016-01268, Paper 63 (PTAB Dec. 19, 2017) ............................................. 34
`
`Salpeter v. ARP Wave, LLC,
`IPR2019-01384, Paper 12 (PTAB Jan. 27, 2020) .............................................. 37
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 60
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`STATUTES
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`35 U.S.C. § 103 .............................................................................................. 2, 58, 59
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`35 U.S.C. § 311(b) ............................................................................................. 37, 38
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.23(b) ................................................................................................ 33
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`37 C.F.R. § 42.104(b)(4) .......................................................................................... 37
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`Trial Practice Guide Update (July 2019) ................................................................. 33
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`Patent Owner Response
`IPR2020-01602
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`Ex. 2003
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`LIST OF PATENT OWNER EXHIBITS
`Ex. 2001 Complaint from ITC Investigation No. 337-TA-1199
`Ex. 2002
`ITC Procedural Schedule in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. June 11,
`2020)
`Excerpt of Respondents’ Pre-Hearing Brief in Certain Tobacco
`Heating Articles and Components Thereof, ITC Inv. No. 337-TA-
`1199 (U.S.I.T.C. Dec. 11, 2020)
`Ex. 2004 U.S. Patent Application Publication No. 2007/0267031
`Ex. 2005
`Excerpts of Respondents’ Joint Disclosure of Final Contentions in
`Response to Individual Interrogatory No. 12 (Final Invalidity
`Contentions) in Certain Tobacco Heating Articles and Components
`Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. Sept. 18, 2020)
`
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`Ex. 2006 Order Denying Respondents’ Motion for Leave to Amend Their
`Response to the Complaint in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. Oct. 22,
`2020)
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Excerpts of Deposition Transcript of Stewart M. Fox in Certain
`Tobacco Heating Articles and Components Thereof, ITC Inv. No.
`337-TA-1199 (U.S.I.T.C. Nov. 6, 2020)
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`Excerpts of Ruyan Product Internal R&D Assessment (March 2007)
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`Excerpts of Commission Staff Attorney’s Pre-Hearing Brief in Certain
`Tobacco Heating Articles and Components Thereof, ITC Inv. No.
`337-TA-1199 (U.S.I.T.C. Jan. 4, 2021)
`
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`Ex. 2010 Declaration of Charles E. Clemens
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`Ex. 2011
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`Ex. 2012 University of California San Francisco – Tobacco Industry Record of
`Ex. 1023
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`Transcript of June 25, 2021 Deposition of Stewart Fox
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`Ex. 2013 University of California San Francisco – Tobacco Industry Record of
`Ex. 1019
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`Patent Owner Response
`IPR2020-01602
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`Ex. 2014 PDF of https://ucfilament.com/materials/nichrome/ related to
`nichrome alloys
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`Ex. 2015
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`PDF of https://www.birkmfg.com/blog/why-use-platinum-in-rtd-
`temperature-sensors/ related to platinum
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`v
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`

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`INTRODUCTION
`Petitioner challenges 22 claims of the ’123 patent. Petitioner’s lead reference
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`Patent Owner Response
`IPR2020-01602
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`I.
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`in all three Grounds – Hon – describes a dual-stage atomizer that is quite different
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`from the smoking article claimed in the challenged claims of the ’123 patent.
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`Recognizing this, Petitioner asserts that independent claims 1 and 15 are obvious in
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`view of Hon alone or Hon combined with two secondary references (Whittemore
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`and Brooks). But as the Board found in the Institution Decision, a POSA would not
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`have modified Hon in view of Whittemore, including because Whittemore’s wire-
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`wrapped wick has “little relation” to Hon’s atomizer. Similarly, on a full record
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`including this PO Response and testimony from RAI’s expert, Charles Clemens, it
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`is also clear that a POSA would not have modified Hon’s controller for its dual-stage
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`atomizer in view of the controller circuitry that Brooks describes.
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`Petitioner is thus left with arguing obviousness based on Hon alone – a
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`position Petitioner effectively concedes is untenable, given its attempts to backstop
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`Hon with Whittemore and Brooks. But, as explained in detail below, Hon fails to
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`teach or suggest two limitations in independent claims 1 and 15 – (i) the “mixture …
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`wicked into contact with the electrical resistance heater” and (ii) the “controller …
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`adapted for regulating current flow through the electrical resistance heater during
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`draw.” In addition, Petitioner fails to show that a number of dependent claims would
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`have been obvious in view of Hon and the identified secondary references, including
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`Patent Owner Response
`IPR2020-01602
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`dependent claims requiring (a) an electrically conductive cartridge (claims 11 and
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`23), (b) that the absorbent fibrous/wicking material of the cartridge is in contact with
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`the electrical resistance heater (claims 14 and 24), and (c) that the liquid mixture in
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`the cartridge comprises essentially pure nicotine or extracts/formulations comprised
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`predominantly of nicotine (claims 6 and 19).
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`The Board should confirm the patentability of claims 1-7, 9, 11-19, 21, and
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`23-26 of the ’123 patent.
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`II. THE ALLEGED GROUNDS OF UNPATENTABILITY
`The alleged grounds of unpatentability for this trial are:
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` Ground 1: Claims 1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, and 23-26 are
`unpatentable under 35 U.S.C. § 103 over Hon alone or with Brooks and
`Whittemore;
` Ground 2: Claims 3, 4, 13, 16, and 17 are unpatentable under 35 U.S.C.
`§ 103 over Hon, Whittemore, Brooks, and Susa; and
` Ground 3: Claims 6 and 19 are unpatentable under 35 U.S.C. § 103 over
`Hon, Whittemore, Brooks, and Ray.
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`(Paper 9 (Institution Decision) at 7.)
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`III. THE ’123 PATENT
`A. Overview Of The ’123 Patent
`The ’123 patent generally describes smoking articles that heat tobacco rather
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`than burn it. (See, e.g., Ex. 1001 at 4:42-52.) In addition to heat-not-burn devices,
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`the ’123 patent also describes the use of e-liquid as an aerosol forming material. (Id.
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`Patent Owner Response
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`at 13:18-21.) For example, the patent discloses aerosol-forming material
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`formulations of mixtures of glycerin and water, or mixtures of propylene glycol and
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`water. (Id. at 14:13-15.)
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`The ’123 patent notes that the aerosol-forming material can be maintained
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`within the smoking article in a number of ways. For example, the aerosol-forming
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`material can be contained within a container in liquid form, or soaked within
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`absorbent fibrous materials or sponge-like materials. (Id. at 14:26-29.) The smoking
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`articles disclosed in the ’123 patent contain control circuitry that may include a
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`controller for regulating current flow through the device during draw by the user.
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`(Id. at 30:37-32:34.) The controller may be “puff-actuated,” meaning that the device
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`senses when a user draws (or takes a puff) on the device and then actuates the control
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`circuitry to operate the device.
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`Figure 1, reproduced below, shows a longitudinal cross-sectional view of one
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`embodiment of the ’123 patent invention:
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`Outer housing 20
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`Smoking article 10
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`Controller 50
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`Power source 36
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`Heating element 72
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`Distal end 13
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`(Id. at Fig. 1 (annotated).)
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`Mouth end 15
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`The smoking article 10 is “rod-like or tubular in nature, generally akin to a
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`cigarette-type or cigar-type smoking article” and has an outer housing 20 that is
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`likewise “generally tubular in shape.” (Id. at 19:41-50.) The outer housing 20
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`includes a mouth-end 15 and distal end 13, with “the distal end compris[ing] an
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`opening adapted for intake of air into the smoking article 10.” (Id. at 19:59-64.)
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`An electric power source 36, “such as at least one battery” is located within the
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`outer housing 20. (Id. at 20:12-13.) The smoking article 10 further includes a
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`controller 50 that is powered by the electric power source 36. (Id. at 20:33-43.)
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`The ’123 patent describes example circuits that can be included in the controller 50
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`(see, e.g., id. at 20:40-48, 30:37-32:34, describing Figs. 4 & 5) and further states that
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`“[r]epresentative types of electronic control components” for the controller 50 may
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`include those of U.S. Patent No. 4,947,874 to Brooks (id. at 20:43-48). Brooks is one
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`of the secondary references Petitioner relies on in the Petition. (See, e.g., Petition at
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`16-17, 25-29.)
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`In the embodiment of Figure 1, the smoking article 10 includes a cartridge 85
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`that contains tobacco 89 of some form and an aerosol-forming material. (Ex. 1001 at
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`22:1-3.) “The tobacco 89 and the aerosol-forming material can be in the form of an
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`intimate mixture or provided in separate regions of the cartridge 85.” (Id. at 22:3-6.)
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`The smoking article 10 further includes a resistive heating element 72 that “can be
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`employed in close proximity to an absorbent wicking material such that aerosol-
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`forming material can be wicked or otherwise transferred so as to contact the second
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`resistance element or contact an area in close proximity to the second resistance
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`element (e.g., a region that is exposed to a [sic] the heat produced by the second
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`resistance element).” (Id. at 21:38-45.) “The representative smoking article 10 is
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`assembled such that a certain amount of aerosol-forming material and tobacco
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`components can be wicked or otherwise transferred to heating element 72 or the
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`region in close proximity to the heating element.” (Id. at 22:20-24.)
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`5
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`B.
`The Challenged Claims
`Petitioner challenges claims 1-7, 9, 11-19, 21, and 23-26 of the ’123 patent.
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`Patent Owner Response
`IPR2020-01602
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`Independent claim 1 recites:
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`1. An electrically-powered, aerosol-generating smoking article
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`comprising:
`an electrical power source within a tubular outer housing having a
`mouth-end and an end distal to the mouth-end;
`at least one electrical resistance heater powered by said electrical
`power source;
`a puff-actuated controller within the tubular outer housing and
`adapted for regulating current 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
`a rod-shaped carrier device engaged with the mouth-end of the
`tubular outer housing and comprising a cartridge providing a
`liquid storage compartment containing a mixture comprising a
`tobacco extract and an aerosol-forming material absorbed within
`an absorbent fibrous material, the cartridge having a generally
`tubular shape and adapted for airflow therethrough;
`wherein the rod-shaped carrier device is operatively positioned such
`that, 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 to produce a visible
`mainstream aerosol incorporating tobacco components or
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`6
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`tobacco-derived components that can be drawn into the mouth of
`the user of the smoking article.
`(Ex. 1001 at 32:50-33:8.)
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`Patent Owner Response
`IPR2020-01602
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`Claims 2-7, 9, and 11-14 depend from claim 1. (Id. at 33:9-23, 33:27-28,
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`33:31-40.) Specifically, claim 6 recites that the mixture comprises essentially pure
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`nicotine, extracts composed predominately of nicotine, or formulations composed
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`predominantly of nicotine; claim 11 recites that the cartridge is electrically
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`conductive; and claim 14 recites that the absorbent fibrous material is in contact with
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`the electrical resistance heater. (Id.)
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`Independent claim 15 is similar to claim 1. (Id. at 33:41-34:2.) Claim 15
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`recites:
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`15. An electrically-powered, aerosol-generating smoking article
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`comprising:
`an electrical power source in the form of a battery within a tubular
`outer housing having a mouth-end and an end distal to the mouth-
`end;
`at least one electrical resistance heater powered by said electrical
`power source;
`a puff-actuated controller within the tubular outer housing and
`adapted for regulating current 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
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`Patent Owner Response
`IPR2020-01602
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`a rod-shaped carrier device removably engaged with the mouth-end
`of the tubular outer housing and comprising a cartridge providing
`a liquid storage compartment containing a mixture comprising a
`tobacco extract comprising nicotine and an aerosol-forming
`material selected from glycerin, propylene glycol, or a mixture
`thereof, the mixture absorbed within an absorbent wicking
`material, the cartridge having a generally tubular shape and
`adapted for airflow therethrough;
`wherein the rod-shaped carrier device is operatively positioned such
`that, 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 to produce a visible
`mainstream aerosol incorporating tobacco components or
`tobacco-derived components that can be drawn into the mouth of
`the user of the smoking article.
`(Id. at 33:41-34:2.)
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`Claims 16-19, 21, and 23-26 depend from claim 15. (Id. at 34:3-12, 34:17-
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`18, 34:21-30.) Specifically, claim 19 recites that the mixture comprises essentially
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`pure nicotine, extracts composed predominately of nicotine, or formulations
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`composed predominantly of nicotine; claim 23 recites that the cartridge is
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`electrically conductive; and claim 24 recites that the absorbent wicking material is
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`in contact with the electrical resistance heater. (Id.)
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`IV. CLAIM CONSTRUCTION
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`Claim terms are to be construed in this proceeding in accordance with the
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`Patent Owner Response
`IPR2020-01602
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`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
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`banc). In its Petition, Petitioner proposed no constructions for the subject matter of
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`the challenged claims, choosing instead to adopt “any reasonable construction,
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`including their plain meaning” without explaining its position on what these alleged
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`plain meanings are. (Petition at 10.) In the POPR (Paper 6), Patent Owner reserved
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`the right to put forth constructions for any claim terms should the Board institute trial.
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`In view of the Board’s Institution Decision, Patent Owner submits that one claim term
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`warrants discussion: “wicked into contact.”
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`Claims 1 and 15 both require the device to be structured such that “the mixture
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`comprising the tobacco extract and the aerosol-forming material can be wicked into
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`contact with the electrical resistance heater.” (Ex. 1001 at 33:2-5, 33:63-66
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`(emphasis added).) Dependent claims 14 and 24 further require that the absorbent
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`[fibrous/wicking] material be “in contact with the electrical resistance heater,” while
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`dependent claim 25 requires that the absorbent wicking material be “positioned in
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`proximity to” the heater. (Id. at 33:38-40, 34:23-28.) In the Institution Decision,
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`the Board appears to have preliminarily agreed with Petitioner’s position that if the
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`absorbent fibrous/wicking material is positioned in proximity to the heater, then this
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`Patent Owner Response
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`necessarily means that the liquid is “wicked into contact” with the heater. (Paper 9
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`at 23-24.) Patent Owner respectfully disagrees.
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`The reason for this disagreement is that the additional limitations of dependent
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`claims 14, 24, and 25 are just that – additional limitations. They are not, as the Board
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`appears to have thought, merely elaborations on what it means for liquid to be “wicked
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`into contact” with the heater. The “wicked into contact” limitation of the independent
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`claims relates to the manner in which – the “how” – the liquid reaches the heater. The
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`additional limitations supplied by dependent claims 14, 24, and 25 relate to the
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`location of the fibrous/wicking material (“in contact with” or “in proximity to”) with
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`respect to the heater. A wicking material might be located in proximity to the heater,
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`yet the material in that location would still not necessarily wick liquid “into contact”
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`with the heater. Petitioner’s attempt to conflate “wicked into contact” in claims 1 and
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`15 with the separate requirements of the dependent claims should be rejected.
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`Patent Owner submits that the plain and ordinary meaning of “wicked into
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`contact,” as used in claims 1 and 15 of the ’123 patent, is that the mixture comprising
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`the tobacco extract and the aerosol-forming material (i.e., the liquid) must be brought
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`into contact with the electrical resistance heater by wicking. This is supported by,
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`and consistent with, the specification of the ’123 patent.
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`For example, the specification explains that resistive heating element 72 “can
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`be employed in close proximity to an absorbent wicking material such that aerosol-
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`forming material can be wicked or otherwise transferred so as to contact the second
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`resistance element or contact an area in close proximity to the second resistance
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`element (e.g., a region that is exposed to a [sic] the heat produced by the second
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`resistance element).” (Ex. 1001 at 21:38-45.) In other words, a POSA reading the
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`specification of the ’123 patent would understand that, for the embodiment where
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`the heater is located in “proximity” to the wicking material, there are multiple
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`options for the manner in which the liquid may reach (or not reach) the heater: (1) it
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`can be “wicked . . . so as to contact” the heater; (2) it can be “otherwise transferred
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`so as to contact” the heater; (3) it can be “wicked . . . so as to contact . . . an area in
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`close proximity to” the heater; or (4) it can be “otherwise transferred so as to contact
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`. . . an area in close proximity to” the heater. (Ex. 2010 (Clemens Declaration) at
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`¶¶ 43-47.)
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`A POSA would understand that, by their plain language (“wicked into
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`contact”), claims 1 and 15 require the first option—“wicked so as to contact” the
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`heater. (Id at ¶ 46.) This claim language does not encompass other manners of
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`transfer, as those are explicitly described in the specification as different options.
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`(Id.) As explained further below, this portion of the specification highlights the
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`difference between what the claims require and the fundamentally different way that
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`the Hon device operates. The claims require option (1), where the liquid is “wicked
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`so as to contact” the heater. In contrast, Hon employs either option (3) or (4),
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`Patent Owner Response
`IPR2020-01602
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`wicking or otherwise transferring the liquid to an area in proximity to the heater and
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`that is exposed to the heat generated by the heater – and this is not what is recited in
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`claims 1 or 15.
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`For these reasons, Patent Owner submits that the plain and ordinary meaning
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`of “wicked into contact” is that the aerosol-forming material must be brought into
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`contact with the electrical resistance heater by wicking.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`For purposes of the trial in this proceeding, RAI accepts Petitioner’s proposed
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`education and experience level of the POSA. (See Petition at 9-10.) Thus, for
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`purposes of the trial in this proceeding, the POSA for the ’123 patent would have
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`had a Bachelor’s degree in mechanical engineering, electrical engineering,
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`chemistry, or physics, or a related field, and three to four years of industry experience,
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`or a Master’s degree in mechanical engineering, electrical engineering, chemistry,
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`or physics, or a related field, and one to two years of industry experience. (See id.;
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`see also Ex. 2010 at ¶¶ 48-50.)
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`VI. OVERVIEW OF THE CITED REFERENCES
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`Petitioner asserts five references across the three grounds set forth in the
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`Petition:
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` Chinese Patent No. CN2719043Y (“Hon”) (Ex. 1005);
` U.S. Patent No. 4,947,874 to Brooks (“Brooks”) (Ex. 1006);
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`Patent Owner Response
`IPR2020-01602
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` U.S. Patent No. 2,057,353 (“Whittemore”) (Ex. 1007);
` European Patent Publication No. EP 0845220 (“Susa”) (Ex. 1008);
`and
` U.S. Patent No. 4,284,089 (“Ray”) (Ex. 1009).
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`(Petition at 3.)
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`A. Hon
`Hon describes an electronic atomization cigarette. (Ex. 1005 at 4.) As shown
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`in Figure 1 below (id. at 9), the electronic cigarette includes air inlet 4, normal
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`pressure cavity 5, sensor 6, vapor-liquid separator 7, atomizer 9 with atomization
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`cavity 10, liquid-supplying bottle 11, and mouthpiece 15 within a shell 14 (id. at 6).
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`Figure 6, reproduced below, is a structural diagram of the atomizer 9, which
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`includes atomization cavity 10, long stream ejection hole 24, atomization cavity wall
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`25, heating element 26, porous body 27, bulge 36, and first piezoelectric element 23.
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`(Id. at 6-7, 11.) The heating element 26 “may be made of platinum wires, nichrome,
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`or iron-chromium-aluminum alloy wires containing rare earth elements.” (Id. at 6.)
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`The “porous body 27 is wrapped around the atomization cavity wall 25, and
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`[the porous body] may be made of nickel foam, stainless steel fiber felt, high
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`molecular polymeric foam, and ceramic foam.” (Id. at 6.) “[T]he atomization cavity
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`wall 25 may be made of alumina or ceramic.” (Id.) The bulge 36 of the porous body
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`27 is in contact with the liquid-storing porous body 28 in the liquid-supplying bottle
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`11 to pull liquid around the outside of the atomizer cavity wall 25 using “capillary
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`infiltration.” (Id. at 7.)
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`When a user draws on (or puffs) the device, a negative pressure is created in
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`the mouthpiece 15 and air flows into the air inlets 4, through airflow channel 18 of
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`the sensor, through the hole in the vapor liquid separator 7, and then is forced through
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`ejection holes 24 into the atomization cavity 10 in the atomizer 9. (Id.) The
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`“solution in the porous body 27 is driven by the high-speed airflow of the ejection
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`hole [24] and ejected in the form of droplets into the atomization cavity 10.” (Id. at
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`7.) The nicotine solution is first atomized “ultrasonically by the first piezoelectric
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`element 23,” and then “further atomized under the effect of the heating element 26.”
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`(Id.) After atomization, small diameter droplets are suspended in the airstream and
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`form aerosols, which are sucked out via the aerosol passage 12, gas vent 17, and
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`mouthpiece 15. (Id.)
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`“To simplify the design,” Hon describes another embodiment, where “the first
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`piezoelectric element 23 on the atomizer 9 may be removed, and the atomization of
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`the solution relies only on the heating element 26.” (Id.) The size of the atomizer
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`could then be made smaller, and “the connection structure of the entire atomizer
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`electronic cigarette is the same as that of Embodiment 1.” (Id.) Hon also describes
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`another embodiment, shown in Figure 8 below, where the first piezoelectric element
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`23 and the heating element 26 in the atomizer 9 can be omitted, and an additional
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`second piezoelectric element 35 can be arranged in the atomization cavity. (Id.) In
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`this embodiment, “the airflow via the ejection hole vibrates the focal point at its
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`center to realize atomization, and the strong ultrasonic atomization effect is
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`achieved.” (Id.)
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`B.
`Brooks
`Brooks issued in 1990 and “relates to cigarettes and other smoking articles
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`such as cigars, pipes, and the like, which employ an electrical resistance heating
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`element and an electrical power source to produce a tobacco-flavored smoke or
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`aerosol.” (Ex. 1006 at 1, 1:6-10.) The ’123 patent specification expressly discusses
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`Brooks, stating that Brooks discloses “electronic control components” and “sensing
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`mechanism components” for electronic smoking articles. (Ex. 1001 at 20:43-63,
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`21:2-8.)
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`Figures 9 and 10 of Brooks illustrate exemplary time-based control circuits
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`and related wiring for preferred controllers of the Brooks invention. (Ex. 1006 at
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`7:5-7.) Each of the circuits of Figures 9 and 10 includes a power source 34, an
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`electrical resistance heating element 18, a current actuation mechanism 28, and a
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`current regulating circuit for controlling the passage of current through the resistance
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`element during periods of current actuation. (Id. at 12:39-46, 15:30-35.) Figure 9
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`is reproduced below.
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`Brooks describes the use of resistance heating elements that are preferably
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`fibrous materials with high surface areas and porous, wettable characteristics to carry
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`an aerosol forming substance. (Id. at 7:26-33.) Brooks more specifically explains
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`that its heating elements are preferably made of carbon. (Id. at 7:48-60.) In its
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`Background and Summary sections, Brooks criticizes the use of nichrome metal
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`resistance heating elements because nichrome metal heating elements are not porous
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`and also lack the desired surface area for use with the Brooks devices. (Id. at 3:15-
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`42, 4:7-31, 7:30-33.)
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`C. Whittemore
`Whittemore issued in 1936 and describes a vaporization unit for a therapeutic
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`Patent Owner Response
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`apparatus. (Ex. 1007 at 1-2.) As shown below in Figure 2, the vaporization vessel
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`A is a hollow glass container that holds liquid medicament x. (Id. at 1:19-28.) The
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`vaporization vessel A includes an electrically-operated heating means with
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`conductors 1 and 2 and a heating element 3. (Id.) The
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`vaporization vessel A includes an air inlet orifice 4 at a
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`point below the upper end of the vessel and a vapor outlet
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`5 in the top wall of the vessel. (Id. at 1:28-39.) Wick D
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`is a wick material and is “in contact or approximate
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`contact with the heating element” 3, such that the
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`“medicament will be carried by capillary action to a point
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`where it will be vaporized by the heat from the filament
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`3.” (Id. at 1:50-2:8.) The wick D forms an inverted v-
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`shaped device that extends “downwardly into the
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`medicament and terminating at or in close proximity to the closed bottom 6 of the
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`vessel A.” (Id. at 2:8-18.) The “unit will operate properly so long as there is
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`sufficient medicament in the vaporization vessel A to engage or contact with a
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`portion of the wick D.” (Id. at 2:19-25.)
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`D.
`Susa
`Susa is a 1998 EP publication that describes a flavor generation article used
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`Patent Owner Response
`IPR2020-01602
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`for generating flavor as an inhalation target by heating a liquid material with an
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`electric heater. (Ex. 1008 at 1:5-10.) As the e-liquid material for use with the flavor
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`generation article, Susa describes that the liquid material contains at least a flavor
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`substance. (Id. at 2:36-37.) For example, the liquid material may be “used for
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`enjoying only the flavor, e.g., menthol or caffeine,” and “it can be a material that
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`generates only the flavor.” (Id. at 6:24-28.) “Also, in order to add smoke to the
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`flavor, the liquid material 36 can contain a material which generates aerosol when
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`heated.” (Id. at 6:28-30.) Alcohols, including glycerin, propylene glycol, or their
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`mixture, or other componen