UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. Reynolds Vapor Company,
`
`Petitioner
`
`v.
`
`Fontem Holdings 1 B.V.
`
`Patent Owner
`
`U.S. Patent No.: 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
`
`Inter Partes Review No. IPR2016-01268
`
`DECLARATION OF DR. ROBERT H. STURGES
`REGARDING U.S. PATENT NO. 8,365,742
`
`Philip Morris Products, S.A.
`Exhibit 1041
`PMP v. RAI
`IPR2020-01602
`
`Ex. 1041-001
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. Reynolds Vapor Company,
`
`Petitioner
`
`v.
`
`Fontem Holdings 1 B.V.
`
`Patent Owner
`
`U.S. Patent No.: 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
`
`Inter Partes Review No. IPR2016-01268
`
`DECLARATION OF DR. ROBERT H. STURGES
`REGARDING U.S. PATENT NO. 8,365,742
`
`Philip Morris Products, S.A.
`Exhibit 1041
`PMP v. RAI
`IPR2020-01602
`
`Ex. 1041-001
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 2
`D.
`Information Considered ......................................................................... 3
`LEGAL STANDARDS FOR PATENTABILITY .......................................... 3
`II.
`III. OVERVIEW AND BACKGROUND OF THE ‘742 PATENT ..................... 9
`A. Overview of the ‘742 Patent .................................................................. 9
`B.
`Person of Ordinary Skill in the Art ..................................................... 12
`IV. CLAIM CONSTRUCTION .......................................................................... 13
`V. DESCRIPTION OF THE PRIOR ART THAT FORMS THE
`BASIS FOR UNPATENTABILITY ............................................................. 15
`A. Hon ‘043 (Ex. 1002; Ex. 1003) ........................................................... 15
`B. Whittemore (Ex. 1004) ........................................................................ 21
`VI. CLAIMS 2 AND 3 OF THE ‘742 PATENT ARE OBVIOUS ..................... 23
`A. Motivation For Combining Hon ‘043 With Whittemore .................... 23
`VII. CONCLUSION .............................................................................................. 40
`
`
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`
`
`
`
`i
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`Ex. 1041-002
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`
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`
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`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained by the law firm of Brinks Gilson & Lione on
`1.
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`behalf of R.J. Reynolds Vapor Company to provide this Declaration concerning the
`
`technical subject matter relevant to the inter partes review petition concerning U.S.
`
`Patent No. U.S. Patent No. 8,365,742 (“the ‘742 patent”; Exhibit 1001).1 I have
`
`been asked to render an opinion regarding the validity of claims 2 and 3 (the
`
`“challenged claims”).
`
`B.
`2.
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`Background and Qualifications
`
`I am currently a Professor in the Departments of Mechanical and
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`Industrial Systems Engineering at Virginia Polytechnic Institute (“Virginia Tech”).
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`From 1987 to 1997, I was first an Assistant Professor and then later an Associate
`
`Professor in the Mechanical Engineering Department at Carnegie Mellon
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`University. I have a combined Bachelor of Science and Master of Science degree
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`in mechanical engineering from M.I.T. and a Ph.D. in mechanical engineering
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`from Carnegie Mellon University.
`
`3.
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`In my past work, I have extensively studied and designed various fluid
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`power systems, including a robotic arm and robotic end effectors. In the latter, I
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`1 I refer to exhibit numbers that correspond to those I understand will be submitted
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`with the Petition for Inter Partes Review.
`
`
`
`1
`
`Ex. 1041-003
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`
`
`
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`applied fluid “resistors” that rely on porous media to provide resistance to flow. I
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`have also applied heat transfer fundamentals to design and build variations of
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`commercial steam engines used in my undergraduate labs at Carnegie Mellon
`
`University and my graduate course in Sustainability at Virginia Tech. In addition,
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`I have taught undergraduate courses focused on fundamental mechanics and the
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`conservation of energy, including basic principles of fluid flow and heat transfer.
`
`4.
`
`Based on my background, experience, education and professional
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`activities, I consider myself an expert in the fields of mechanical design,
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`mechatronics, and manufacturing, including systems that employ heat, mass and
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`fluid transfer.
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`5. My Curriculum Vitae, including my publications and patents, is
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`submitted herewith in Appendix A.
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $400 per hour for my study and
`6.
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`time in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and time in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`7.
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`The list attached at Appendix B identifies my past expert
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`engagements.
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`
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`2
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`Ex. 1041-004
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`
`
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`Information Considered
`
`D.
`8. My opinions are based on my years of education, research, and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered, among other things, the ‘742 patent and its
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`prosecution history, as well as the record of the two prior IPRs involving the ‘742
`
`patent (IPR2015-00859 and IPR2015-01587), in addition to the prior art and other
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`materials referred to herein.
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`9.
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`I may rely upon these materials and/or additional materials to rebut
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`arguments raised by the patent owner.
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`10.
`
`I reserve the right to supplement this Declaration in response to
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`additional evidence that may come to light.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`11.
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`claims of the ‘742 patent, I am relying upon certain basic legal principles that
`
`counsel has explained to me.
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`12.
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`It is my understanding that, to anticipate a claim under 35 U.S.C.
`
`§ 102, a prior art reference must teach every limitation of the claim.
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`13.
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`It is also my understanding that a claimed invention is unpatentable
`
`under 35 U.S.C. § 103 as being obvious if the differences between the invention
`
`and the prior art are such that the subject matter as a whole would have been
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`
`
`3
`
`Ex. 1041-005
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`
`
`
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`obvious at the time the invention was made to a person having ordinary skill in the
`
`art to which the subject matter pertains. I also understand that the obviousness
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`analysis takes into account factual inquiries including the level of ordinary skill in
`
`the art, the scope and content of the prior art, and the differences between the prior
`
`art and the claimed subject matter. I understand that a patent claim may be invalid
`
`because it was obvious in view of the prior art. The requirements to prove
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`obviousness are contained in 35 U.S.C. § 103(a), which is reproduced in pertinent
`
`part below:
`
`A patent may not be obtained though the invention is not
`identically disclosed or described as set forth in section 102 of
`this title, if the differences between the subject matter sought
`to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`
`35 U.S.C. § 103(a).
`
`14.
`
`I understand that multiple references may, in some circumstances, be
`
`combined to render a patent claim obvious. Possible sources for a reason,
`
`suggestion, or motivation to combine references include:
`
`•
`
`the nature of the problem to be solved;
`
`
`
`4
`
`Ex. 1041-006
`
`
`
`
`
`
`•
`
`•
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`the teachings of the prior art; and
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`the knowledge of persons of ordinary skill in the art.
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`15.
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`I have further been advised that the following factors may support a
`
`conclusion of obviousness:
`
`•
`
`Combining prior art elements according to known methods to
`
`yield predictable results;
`
`•
`
`Simple substitution of one known element for another to obtain
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`predictable results;
`
`•
`
`Use of a known technique to improve similar devices (methods,
`
`or products) in the same way;
`
`•
`
`Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`•
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`“Obvious to try” - choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`•
`
`Known work in one field of endeavor may prompt variations of
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`it for use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to one of
`
`ordinary skill in the art; and
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`
`
`5
`
`Ex. 1041-007
`
`
`
`
`
`
`•
`
`Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art reference teachings to arrive at the claimed invention.
`
`16.
`
`In determining whether or not a patented invention would have been
`
`obvious, I understand that the following factors should be considered:
`
`•
`
`•
`
`•
`
`•
`
`The scope and content of the prior art;
`
`The differences between the prior art and the claims at issue;
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`The level of ordinary skill in the art; and
`
`Any evidence of secondary considerations.
`
`17.
`
`I understand that combining familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`Further, if a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique is obvious unless its actual applications is
`
`beyond his or her skill.
`
`18.
`
`I understand that where the claimed invention involves more than the
`
`simple substitution of one known element for another, or the mere application of a
`
`known technique to a piece of prior art ready for the improvement, it often will be
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`necessary to look to interrelated teachings of multiple patents; the effects of
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`demands known to the design community or present in the marketplace; and the
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`
`
`6
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`Ex. 1041-008
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`
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`background knowledge possessed by a person having ordinary skill in the art; all in
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`order to determine whether there was an apparent reason to combine the known
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`elements in the fashion claimed. Even in such a case however, the analysis need
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`not seek out precise teachings directed to the specific subject matter of the
`
`challenged claim; rather, the inferences and creative steps that a person of ordinary
`
`skill would employ can be taken into account.
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`19.
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`I also understand that obviousness is proven where there existed at the
`
`time of the claimed invention a known problem for which there was an obvious
`
`solution encompassed by the patent’s claims. It is not relevant whether the
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`combination was obvious to the inventor, but rather whether it would have been
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`obvious to the person of ordinary skill, and under the correct analysis, any need or
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`problem known in the field, which is addressed by the claimed subject matter, can
`
`provide a reason for combining the elements in the manner claimed.
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`20.
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`I understand that design incentives and other market forces can
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`prompt the combining of different works, either in the same field or a different
`
`field and a person of ordinary skill in the art would recognize the value of
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`improvements obtained by combining unless its actual application of the works is
`
`beyond his or her skill. Familiar items may have obvious uses beyond their
`
`primary purposes, and in many cases a person of ordinary skill will be able to fit
`
`the teachings of multiple patents together like pieces of a puzzle.
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`
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`7
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`Ex. 1041-009
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`
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`21.
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` I understand that one of ordinary skill in the art would have been
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`motivated to combine prior art references that disclose similar systems and
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`improve upon them through modifications known to one of ordinary skill.
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`22.
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`In determining obviousness, I understand that evidence of objective
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`indicia of non-obviousness (also known as “secondary considerations”) is also
`
`considered and that this is to be done before any ultimate determination of
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`obviousness is made. I have been advised that the following factors may be
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`considered as secondary considerations: (1) a long-felt and unmet need in the art
`
`for the invention; (2) failure of others to achieve the results of the invention; (3)
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`commercial success of the invention; (4) copying of the invention by others in the
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`field; (5) whether the invention was contrary to accepted wisdom of the prior art;
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`(6) expression of disbelief or skepticism by those skilled in the art upon learning of
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`the invention; (7) unexpected results; (8) praise of the invention by those in the
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`field; and/or (9) commercial acquiescence (licensing).
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`23.
`
`I also understand that, in order for secondary considerations to be
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`relevant to the issue of obviousness, a patentee must establish a nexus between
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`such secondary considerations and the claimed invention. Stated one way, the
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`nexus requirement means that the secondary consideration is sufficiently derived
`
`from merits of the claimed invention, rather than other factors. I understand that if
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`the patentee comes forward with a showing of one or more secondary
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`
`
`8
`
`Ex. 1041-010
`
`
`
`
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`considerations and the required nexus, then the burden of coming forward with
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`evidence in rebuttal shifts to the party challenging the patent. Additionally, a party
`
`asserting invalidity may come forward with evidence of the absence of such
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`secondary considerations or nexus. Further, it is my understanding that evidence
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`of secondary considerations does not always overcome a strong showing of
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`obviousness.
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`III. OVERVIEW AND BACKGROUND OF THE ‘742 PATENT
`A. Overview of the ‘742 Patent
`24. The ‘742 patent is generally directed to an electronic cigarette.
`
`
`
`
`
`Fig. 1
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`25. With respect to Fig. 1 of the ‘742 patent, the electronic cigarette
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`includes a battery 3, an atomizer assembly 8 and a liquid storage 9. Ex. 1001 at
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`2:30-38, 44-45; 3:6-8, 49-51; Fig. 1. The electronic cigarette also includes a shell
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`(a) which is hollow and integrally formed. Id. at 2:30-33. The battery assembly
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`connects with said atomizer assembly and both are located in said shell (a). Id.
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`
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`9
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`Ex. 1041-011
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`
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`The shell (a) has through-air-inlets (a1). Id. at 2:37-38; Fig. 1. A porous
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`component of the atomizer assembly 8, i.e., protuberance/bulge 812, contacts the
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`liquid storage 9 “to achieve the capillary impregnation for liquid supply.” Id. at
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`3:16-21; 4:37-40.
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`26. Further details of the atomizer assembly 8 are illustrated in annotated
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`Figs. 17 and 18, which are reproduced below. Id. at Figs. 17-18.
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`27. The atomizer assembly includes “a frame (82), the porous component
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`(81) set on the frame (82), and the heating wire (83) wound on the porous
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`component (81). The frame (82) has a run-through hole (821) on it. The porous
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`component (81) is wound with heating wire (83) in the part that is on the side in
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`the axial direction of the run-through hole (821). One end of the porous
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`component (81) fits with the cigarette bottle assembly.” Id. at 5:42-50.
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`28. Claims 2 and 3 are the subject of my opinion. Both claims 2 and 3 are
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`independent claims. Claims 2 and 3 are reproduced below:
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`2. An electronic cigarette, comprising:
`
`10
`
`
`
`Ex. 1041-012
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`
`
`
`
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`a battery assembly and an atomizer assembly within a housing with the
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`battery assembly electrically connected to the atomizer assembly;
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`a liquid storage component in the housing;
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`with the housing having one or more through-air-inlets;
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`the atomizer assembly including a porous component supported by a frame
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`having a run-through hole;
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`a heating wire wound on a part of the porous component in the path of air
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`flowing through the run-through hole; and
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`the porous component substantially surrounded by the liquid storage
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`component.
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`3. An electronic cigarette, comprising:
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`a battery assembly and an atomizer assembly within a housing with the
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`battery assembly electrically connected to the atomizer assembly;
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`with the housing having one or more through-air-inlets and an outlet;
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`the atomizer assembly includes a frame having a run through hole, and a
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`porous component between the frame and the outlet;
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`a heating wire wound on a part of the porous component which is
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`substantially aligned with the run-through hole; and
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`with the porous component in contact with a liquid supply in the housing.
`
`
`
`11
`
`Ex. 1041-013
`
`
`
`
`
`
`B.
`29.
`
`Person of Ordinary Skill in the Art
`
`I understand that the ‘742 patent must be reviewed through the eyes of
`
`a person having ordinary skill in the art (i.e., a “PHOSITA”). I understand that the
`
`PHOSITA is presumed to know the relevant prior art. I am advised that that
`
`factors that guide the determination of level of ordinary skill in the art may
`
`include: the education level of those working in the field, the sophistication of the
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`technology, the types of problems encountered in the art, the prior art solutions to
`
`those problems, and the speed at which innovations are made may help establish
`
`the level of skill in the art.
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`30.
`
`It is my opinion that relevant and related art for the claims of the ‘742
`
`patent includes, among other things, electromechanical devices with the ability to
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`atomize liquids and deliver an aerosol to a user. Further, it is my opinion that the
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`PHOSITA for the ‘742 patent is a person with at least the equivalent of a
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`Bachelor’s degree in electrical engineering, mechanical engineering, or biomedical
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`engineering or related fields, along with at least 5 years of experience designing
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`electromechanical devices, including those involving circuits, fluid mechanics and
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`heat transfer. I base my opinions on my review of the ‘742 patent, the relevant
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`prior art, including art disclosing electronic cigarettes that atomized a nicotine
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`solution to deliver an aerosol to a user to simulate smoking, and my background in
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`designing and developing systems that apply heat transfer and fluid mechanics.
`
`
`
`12
`
`Ex. 1041-014
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`
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`31. For purposes of my opinions as set forth in this Declaration, I have
`
`asked to apply the perspective of the PHOSITA as of May 2006.
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`IV. CLAIM CONSTRUCTION
`It is my understanding that, in an inter partes review proceeding, the
`32.
`
`terms of the challenged claims should be given their broadest reasonable
`
`interpretation, as understood by the PHOSITA and consistent with the disclosure
`
`of the ‘742 patent. I understand that, where a patent applicant provides an explicit
`
`definition of a claim term in the specification, that definition may control the
`
`interpretation of that term in the claim. I also understand that if no explicit
`
`definition is given to a term in the patent specification, the claim terms must be
`
`evaluated using the ordinary meaning of the words being used in those claims. I
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`also understand that the words in the claims are to be evaluated using the
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`perspective of a person of ordinary skill in the art. I have applied this standard to
`
`my understanding of the claims and the discussion of the prior art below.
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`33.
`
`In conducting my analysis, I have considered the terms used in claims
`
`2 and 3 the ‘742 patent and what they mean. In my analysis, I have applied a
`
`meaning to the terms as they would have been understood by the PHOSITA.
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`34.
`
`I understand that the Board previously construed the term “frame” to
`
`mean a “rigid structure” in IPR2015-00859 (“VMR IPR proceeding”). Ex. 1011 at
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`8. For purposes of my analysis, I have used the Board’s construction. I also
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`
`
`13
`
`Ex. 1041-015
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`
`
`
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`understand that the Board previously construed the phrase “porous component” to
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`mean “a component of the atomizer assembly in the electronic cigarette that
`
`includes pores and is permeable to liquid, such as cigarette solution from the
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`cigarette solution area.” Ex. 1011 at 10.
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`35.
`
`In claim 2, the term “porous component substantially surrounded by
`
`the liquid storage component” is used. The ‘742 patent does not expressly define
`
`what is meant by this limitation. I note that this limitation was added during the
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`prosecution of the ‘742 patent. Ex. 1008 at 3. I also note that Fig. 1 of the ‘742
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`patent (annotated below) illustrates a situation where the bulge or protuberance 812
`
`of the porous component 81 is in contact with liquid storage 9. This permits liquid
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`transport from the liquid storage 9 to the porous component 81 via protuberance
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`812. Ex. 1001 at Fig. 1; 3:16-19; 63-67.
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`14
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`Ex. 1041-016
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`
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`36. For purposes of my analysis, I have construed “porous component
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`substantially surrounded by the liquid storage component” to encompass the above
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`illustrated structure from Figure 1 of the ‘742 patent.
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`V. DESCRIPTION OF THE PRIOR ART THAT FORMS THE BASIS
`FOR UNPATENTABILITY
`A. Hon ‘043 (Ex. 1002; Ex. 1003)
`37. Hon ‘043 discloses an electronic cigarette, which is illustrated in Fig.
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`1 from Hon ‘043 below. Ex. 1003 at Fig. 1.
`
`
`
`38. Hon ‘043’s electronic cigarette includes “a cell 2, an electronic circuit
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`board 3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an
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`atomizer 9, a liquid-supplying bottle 11 and a mouthpiece 15 … sequentially
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`provided within the shell 14.” Ex. 1003 at 9. “An air inlet 4 is provided on the
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`external wall of the shell 14.” Id.
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`39. Further details of Hon ‘043’s atomizer assembly 9 are illustrated in
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`annotated Fig. 6 of Hon ‘043.
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`
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`15
`
`Ex. 1041-017
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`
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`40. The atomizer has an atomization cavity wall 25 “surrounded with a
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`porous body 27.” Id. at 9. The porous body 27 includes a bulge 36. Id.; Fig. 6.
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`The bulge 36 of the porous body 27 is in physical contact with the liquid supply
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`inside bottle 11. A short stream ejection hole 30 or a long stream ejection hole 24
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`is also provided. Id.; Figs. 6-8. In use, “[t]he high speed stream passing through
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`the ejection hole drives the nicotine solution in the porous body 27 to eject into the
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`atomization cavity 10 in the form of droplet[s], where the nicotine solution is
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`subjected to the ultrasonic atomization by the first piezoelectric element 23 and is
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`further atomized by the heating element 26.” Id. at 10.
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`41. Hon 043’s atomization cavity wall 25 is a “frame” that provides
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`support for the porous body 27. The Board previously construed the term “frame”
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`to mean a rigid body. Ex. 1011 at 15. As disclosed by Hon ‘043, the atomization
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`
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`16
`
`Ex. 1041-018
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`
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`cavity wall 25 may be constructed from “aluminum oxide or ceramic.” Ex. 1003 at
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`9. The structure forming cavity wall 25 also includes a run-through hole (“long
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`stream ejection hole 24,” “short stream ejection hole 30”). Ex. 1003 at 9; Figs. 6-
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`8.
`
`42.
`
`I understand that the Board previously considered the Hon ‘043
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`reference during the VMR IPR proceeding, and concluded that VMR failed to
`
`demonstrate that the atomization cavity wall 25 (i.e., “frame”) provides support for
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`porous body 27. Ex. 1011 at 15-17. In reaching that conclusion, the Board stated
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`that the “Petitioner does not explain adequately, nor cite to sufficient evidence of
`
`record explaining, how porous component 27 is held up by atomization cavity wall
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`25. The teachings in Hon on which Petitioner relies describe porous component 27
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`surrounding atomization cavity wall 25, but do not indicate that atomization cavity
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`wall 25 is bearing the weight of, or holding up, porous cavity 27.” Id. at 15-16.
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`43.
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`I have considered the Board’s previous finding, and respectfully offer
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`the following observations. In my opinion, the PHOSITA would have understood
`
`that the cavity wall does in fact provide support for the porous component 27 in
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`Hon ‘043.
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`44. As illustrated below the atomization cavity wall 25 provides support
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`for the porous body 27 against axial displacement when the porous body 27 is
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`
`
`17
`
`Ex. 1041-019
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`
`
`
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`forcibly inserted into the solution storage porous body 28 in the liquid-supplying
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`bottle 11. Ex. 1003 at 9, 11; Figs. 1, 6, and 11.
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`
`
`45. More specifically, the porous body 27 is attached to the atomization
`
`cavity wall 25. The PHOSITA would have recognized that the porous body is
`
`attached to the cavity wall 25 via either a friction fit or through a bonding material
`
`to prevent axial displacement of the porous body under the shear forces exerted at
`
`the interface of cavity wall 25 with the porous body 27 when the porous body is
`
`inserted into the storage porous body 28. The shear forces could be particularly
`
`significant when the porous body and the solution storage body 28 are made from
`
`materials that have similar and relatively high rigidity. See Ex. 1003 at 9-10
`
`(noting that porous body 27 may be made from “nickel, stainless steel fiber felt,
`
`high molecule polymer foam and foam ceramic,” and that solution storage body 28
`
`“can be filled with polypropylene fiber, terylene fiber, nylon fiber, or be filled with
`
`plastic that are shaped by foaming, such as polyamine resin foam column or
`
`polypropylene foam column; alternatively, it may be made of a column formed by
`
`
`
`18
`
`Ex. 1041-020
`
`
`
`
`
`molding polyvinyl chloride, polypropylene, polycarbonate into a stack of
`
`laminated layers.”). The PHOSITA would have recognized that the foregoing
`
`materials can have a wide range of rigidities.
`
`46.
`
`In addition, the PHOSITA would also have understood that the
`
`leading edge of the atomization wall 25 provides further support to the porous
`
`body 27 as it is inserted into the solution storage body 28.
`
`47. The atomization cavity wall 25 also provides radial support when the
`
`low pressure area surrounding the atomizer is raised due to blowing on the
`
`mouthpiece, particularly if the porous body 27 is made from a material with
`
`relatively low rigidity. More specifically, the PHOSITA would have understood
`
`that there normally is a lower pressure region surrounding the atomizer 9 since its
`
`flat face is at a higher pressure due to the fact that the air is not moving
`
`substantially and that the area around the cylindrical part of the atomizer is very
`
`restricted.
`
`48. By Bernouli's law, known to the PHOSITA, drawing on the
`
`mouthpiece creates a substantially lower pressure around the atomizer: on the
`
`order of a fraction of a pound per square inch. However, should the user blow into
`
`the mouthpiece by mistake, the pressure in the space around the atomizer could
`
`rise to as much a 2 pounds per square inch or more. This inadvertent action by the
`
`
`
`19
`
`Ex. 1041-021
`
`
`
`
`
`user could cause the porous body 27 to impinge upon and/or destroy the
`
`atomization cavity 10 but for the support provided by atomization cavity wall 25.
`
`49.
`
`Indeed, inadvertent over pressure caused by, for example, the user
`
`blowing into the mouthpiece is contemplated by Hon ‘043. Hon ‘043 has a check
`
`valve 31 for preventing over pressure at the low pressure volume 8 under such
`
`circumstances that could result in over pressure. Ex. 1003 at 11, last full
`
`paragraph; Fig. 10. The low pressure volume 8 is used as a sensitive pressure
`
`sensor. Since it is made out of "ripple film" and needs to be sensitive to the small
`
`changes in pressure that occur during a "draw", a substantial over pressure could
`
`destroy it. Ex. 1003 at 14; Fig. 4. To protect the low pressure volume 8, the check
`
`valve 31 is located in the area of vapor-liquid separator 7 (see Fig. 1) to prevent
`
`over pressure resulting from the user blowing into the mouthpiece 15 from
`
`reaching and damaging low pressure sensor 8.
`
`50. With respect to the issue of the atomization cavity wall allegedly not
`
`providing support for the porous body, I disagree with the arguments advanced by
`
`Patent Owner in the previous VMR IPR proceeding. Specifically, the Patent
`
`Owner argued that the “the porous body 27 supports the wall 25 as the porous body
`
`[holds] the wall in place.” Ex. 1011 at 15; Ex. 1012. However, even if that were
`
`true, this is not inconsistent with atomization cavity wall 25 also providing support
`
`for porous body 27 to prevent displacement under shear forces caused by the
`
`
`
`20
`
`Ex. 1041-022
`
`
`
`
`
`forcible impression of the bulge 36 with the solution storage porous body
`
`component 28 within liquid supply bottle 11, or from over pressure caused by the
`
`user blowing into the mouthpiece 15.
`
`B. Whittemore (Ex. 1004)
`51. Whittemore is prior art under 35 U.S.C. § 102(b). Whittemore
`
`discloses a vaporizing unit, which is illustrated in annotated Fig. 2 of Whittemore
`
`below.
`
`52. A vaporizing vessel A is “adapted to hold a liquid medicament x and
`
`provided with an electrically-operated heating means comprising two electrical
`
`conductors 1 and 2 and a filament or heating element 3 combined in such a way
`
`
`
`
`
`21
`
`Ex. 1041-023
`
`
`
`
`
`that when said conductors are energized by an electric current, the filament 3 will
`
`become heated.” Ex. 1004 at p. 1, left col., ll. 18-28. Whittemore also discloses a
`
`wick D around which the heating element 3 is wrapped. According to Whittemore,
`
`“a wick D made of any suitable material and combined with the heating element or
`
`filament 3 in such a way that a portion of said wick is always in contact or
`
`approximate contact with the heating element or filament 3, and a portion of said
`
`wick is always in contact with the medicament in the vaporizing vessel, whereby
`
`said medicament will be carried by capillary action to a point where it will be
`
`vaporized by the heat from the filament 3.” Id. at p 1, left col., l. 54 - right col., l.
`
`8.
`
`53. As further explained below, the PHOSITA would have understood the
`
`importance and reason for Whittemore’s statement that the heating "the wick
`
`always in contact" with the “heating element or filament 3.” This direct physical
`
`contact is for the purpose of providing heat transfer efficiency, and thus the ability
`
`to vaporize the medicament with the heating element at a lower relative
`
`temperature than if there were an air gap between the heating element and the
`
`wick. Contact heating uses far less energy to vaporize a liquid than does
`
`convection with an air gap.
`
`
`
`22
`
`Ex. 1041-024
`
`
`
`
`
`VI. CLAIMS 2 AND 3 OF THE ‘742 PATENT ARE OBVIOUS
`A. Motivation For Combining Hon ‘043 With Whittemore
`It is my opinion that each of claims 2 and 3 of the ‘742 patent are
`54.
`
`obvious based on the combination of Hon ‘043 and Whittemore.
`
`55. As illustrated in the claim chart below, Hon ‘043 discloses all the
`
`claim limitations except that Hon ‘043 does not expressly disclose a heating wire
`
`wound on a part of the porous component of the atomizer. However, it would have
`
`been obvious to substitute Whittemore’s heating wire/wick configuration for Hon
`
`‘043’s heating wire, because Whittemore’s configuration is more energy efficient
`
`than the configuration disclosed in Hon ‘043.
`
`56. As the PHOSITA would have understood, Hon ‘043 is a relatively
`
`inefficient way for heating the nicotine droplets ejected from porous body 27. As
`
`the PHOSITA would have understood, the liquid nicotine droplets are expelled
`
`into the atomization chamber 10, and heated by heating element 26. The
`
`PHOSITA would have also understood that there are air gaps between the nicotine
`
`droplets in the atomization chamber 10 and the heating element 26. Air is a very
`
`good insulator, i.e., a poor heat transfer material, and thus Hon ‘043’s heating
`
`element needs to be at a higher temperature in order to vaporize the nicotine liquid
`
`droplets than if the droplets were in direct contact with the heating element. This
`
`
`
`23
`
`Ex. 1041-025
`
`
`
`
`
`is clear when one considers the difference between touching a hot object directly
`
`and only coming close to it.
`
`57. This is and was a well-known principle of basic thermodynamics (that
`
`air is a good insulator; relatively poor heat transfer material), and is demonstrated
`
`by, for example, Rohsenow and Choi (Ex. 1016 at 3), which is a standard textbook
`
`that was certainly available to, and would have been known by, the PHOSITA at
`
`the time of the invention of the ‘742 patent. Rohsenow and Choi provide a Table
`
`6.1 listing heat coefficients (measures of effectiveness for transferring heat) for
`
`heat convection and conduction. This is important because convection is far less
`
`effective than conduction in heating the liquid. A PHOSITA would have
`
`understood how to interpret Table 6.1. A flowing gas has a heat transfer
`
`coefficient of 2 to 50. In contrast, he
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