UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - - - x
`PHILIP MORRIS PRODUCTS, S.A., :
`Petitioner, : Case IPR2020-01602
`v. :
`RAI STRATEGIC HOLDINGS, INC., : Patent 9,901,123
`Patent Owner. :
`- - - - - - - - - - - - - - - X
`
`Deposition of CHARLES E. CLEMENS
`Conducted Virtually
`Friday, October 1, 2021
`11:56 a.m. EDT
`
`Job No.: 397414
`Pages 1 - 125
`Reported by: Debra A. Whitehead
`
`Philip Morris Products, S.A.
`Exhibit 1042
`PMP v. RAI
`IPR2020-01602
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`Ex. 1042-001
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - - - x
`PHILIP MORRIS PRODUCTS, S.A., :
`Petitioner, : Case IPR2020-01602
`v. :
`RAI STRATEGIC HOLDINGS, INC., : Patent 9,901,123
`Patent Owner. :
`- - - - - - - - - - - - - - - X
`
`Deposition of CHARLES E. CLEMENS
`Conducted Virtually
`Friday, October 1, 2021
`11:56 a.m. EDT
`
`Job No.: 397414
`Pages 1 - 125
`Reported by: Debra A. Whitehead
`
`Philip Morris Products, S.A.
`Exhibit 1042
`PMP v. RAI
`IPR2020-01602
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`Ex. 1042-001
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`2
`
` Deposition of CHARLES E. CLEMENS, conducted
`virtually.
`
` Pursuant to notice, before Debra Ann Whitehead,
`E-Notary Public in and for the State of Maryland.
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`Ex. 1042-002
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`3
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` A P P E A R A N C E S
`ON BEHALF OF PETITIONER:
` GREGORY K. SOBOLSKI, ESQUIRE
` LATHAM & WATKINS, LLP
` 505 Montgomery Street
` Suite 2000
` San Francisco, California 94111
` (415) 391-0600
` - and -
` DAVID ZUCKER, ESQUIRE
` LATHAM & WATKINS, LLP
` 555 Eleventh Street, NW
` Suite 1000
` Washington, DC 20004
` (202) 637-2200
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`Ex. 1042-003
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`4
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` A P P E A R A N C E S C O N T I N U E D
`ON BEHALF OF PATENT OWNER:
` GEOFFREY K. GAVIN, ESQUIRE
` JONES DAY
` 1221 Peachtree Street, NE
` Suite 400
` Atlanta, Georgia 30361-3053
` (404) 521-3939
` - and -
` ROBERT M. BREETZ, ESQUIRE
` JONES DAY
` North Point
` 901 Lakeside Avenue
` Cleveland, Ohio 44114-1190
` (216) 586-3939
`
`ALSO PRESENT:
` BRIAN KRIEGER, A/V Technician
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`Ex. 1042-004
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`5
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` C O N T E N T S
`EXAMINATION OF CHARLES E. CLEMENS PAGE
` By Mr. Sobolski 6
`
` EXHIBITS MARKED IN PRIOR SESSIONS
` (Not Attached)
`RAI DEPOSITION EXHIBIT PAGE
` Exhibit 2010 Declaration of Charles E. 9
` Clemens
`
`PHILIP MORRIS DEPOSITION EXHIBIT
` Exhibit 1001 U.S. Patent No. 9,901,123 31
` Exhibit 1005 ZL Patent No. 200420031182.0 64
` Exhibit 1007 U.S. Patent No. 2,057,353 22
` Exhibit 1023 Preliminary Evaluation of a 100
` Commercially Available Electric
` Aerosol Inhaler from China
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`Ex. 1042-005
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`6
`
` P R O C E E D I N G S
` CHARLES E. CLEMENS,
` having been duly sworn, testified as follows:
` EXAMINATION BY COUNSEL FOR PETITIONER
`BY MR. SOBOLSKI:
` Q Mr. Clemens, good morning. My name is
`Greg Sobolski. I'm an attorney at Latham &
`Watkins --
` A Good morning.
` Q -- and I'm going to be taking your
`deposition today.
` How are you?
` A Doing well, doing well. Thank you.
` Q Great. I'm going to ask you just a
`couple of questions to get us started. And some
`of these questions are because we're in the format
`of a virtual deposition. So if I ask them to you,
`please don't take them personally; they're just
`because ordinarily I would be in the room with you
`and I wouldn't need to ask them.
` A Understood.
` Q So that's the background.
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`7
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` Is that all right?
` A Yes.
` Q You've been deposed before.
` Correct, Mr. Clemens?
` A Yes.
` Q And so you understand the ground rules of
`a deposition?
` A I do.
` Q You understand that you're testifying
`under oath today with respect to IPR2020-01602?
` A Yes.
` Q Any reason you cannot provide truthful
`and accurate testimony today, Mr. Clemens?
` A No.
` Q Is anyone with you today, Mr. Clemens?
` A No.
` Q Where are you today?
` A I'm in my home office.
` Q And where is that?
` A That's in Encinitas, California.
` Q Do you have anything with you?
` A I do have a -- just a copy of the -- of
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`Ex. 1042-007
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`8
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`the declaration.
` Q You have a copy of your expert
`declaration in the 1602 IPR?
` A Yes.
` Q Okay. Does that hard-copy material have
`any notes or other annotations, or is it totally
`clean?
` A It's totally clean.
` Q Do you have anything else with you, sir,
`like the '123 patent or exhibits from the IPR or
`anything like that?
` A No, I do not.
` Q You have no notes with you?
` A No, I do not.
` Q Okay. In that case, let's start with
`your expert declaration, sir. I understand you
`have it before you, but we'll put it up on the
`screen so that we're all looking at the same
`thing.
` A Okay.
` MR. SOBOLSKI: So if I could kindly ask
`to put up Mr. Clemens's expert declaration, which
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`Ex. 1042-008
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`9
`
`is Exhibit 2010.
` (RAI Exhibit 2010, previously marked, not
`attached.)
` MR. SOBOLSKI: Exhibit 2010 is the
`declaration of Charles E. Clemens in
`IPR2020-01602.
` Q I take it you recognize this document,
`Mr. Clemens?
` A Yes.
` Q And this is the same exhibit that you
`have in hard copy before you.
` Is that correct?
` A That's correct.
` Q You reviewed the petition that Philip
`Morris filed in this IPR. Correct?
` A Yes, I did.
` Q And let's turn to some questions that I
`have in your declaration, sir, just to make sure
`we're on the same page about the scope of what's
`in it; in other words, what you have addressed and
`what you have not addressed.
` Is that okay?
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`Ex. 1042-009
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`10
`
` A Sure.
` Q Let's go to Page 25 of Exhibit 2010.
` I'm looking at Subheading A1.
` Do you see it?
` A Yes.
` Q Your declaration opines on the
`limitation, The mixture can be wicked into contact
`with the electrical resistance heater and
`volatilized. Correct?
` A Yes, correct.
` Q And you call this the wicked-into-contact
`limitation. Correct?
` A Yes, that's correct.
` Q And I just want to make sure I understand
`which part of this wicked-into-contact limitation
`you are actually disputing.
` You agree that Hon teaches a liquid
`mixture. Correct?
` A That's correct.
` Q You agree that Hon teaches an electrical
`resistance heater?
` A That's correct.
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`11
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` Q You agree that Hon teaches that its
`liquid mixture is volatilized by the electrical
`resistance heater?
` A Correct.
` Q The only part of the wicked-into-contact
`limitation that you dispute with respect to Hon is
`the words "wicked into contact." Correct?
` A Yes, that's correct.
` Q Let's turn to Page 39 of your declaration
`at Section B, please.
` Do you see it?
` A I'm not sure I'm -- I know exactly what
`you're -- what part of this page are you referring
`to?
` Q Okay. Let's look at Page 39, Subsection
`B1.
` Do you see that?
` A Okay. Yes, I see B1, uh-huh.
` Q You opine on the limitation, "A
`puff-actuated controller within the tubular outer
`housing and adapted for regulating current flow
`through the electrical resistance heater during
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`12
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`draw."
` A Correct.
` Q You call this the puff-actuated
`controller limitation. Right?
` A That's correct.
` Q And just like we did previously, I just
`want to confirm that I understand which part of
`the puff-actuated controller limitation you
`actually dispute, Mr. Clemens.
` Is that okay?
` A Sure.
` Q You agree that Hon teaches a
`puff-actuated controller?
` A Well, yes.
` Q The only part of the puff-actuated
`controller limitation that you dispute with
`respect to the Hon reference is whether the
`control is, quote, "adapted for regulating current
`flow through the electrical resistance heater
`during draw."
` Correct?
` A Correct.
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`13
`
` Q And specifically I think the part that
`you actually dispute is whether -- are the words
`"during draw."
` Am I correct about that?
` A Well, I think it would be probably more
`accurate to say adapted for regulating, you
`know -- regulating current flow through the
`electrical resistance heater during draw.
` Q Help me understand what you mean by that.
`I think I heard kind of an inflexion in your
`voice, but the words themselves are the same as in
`the claim.
` So help me understand in the
`puff-actuated controller limitation, what aspect
`of it do you dispute in Hon?
` A Well, it's -- I think you kind of
`narrowed it down to during draw. But I think what
`I'm saying is, you know, it's that whole, you
`know, portion of the claim that says, adapted for
`regulating current flow through the electrical
`resistance heater during draw. So it's not just
`during draw, but it's actually regulating current
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`14
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`flow through the resistance heater drawing drew,
`that whole concept.
` Q Okay. Let's turn to Page 51. And let's
`look at Section C1.
` Do you see that?
` A Yes.
` Q You opine on the limitation, The
`cartridge is electrically conductive from Claims
`11 and 23. Correct?
` A Correct.
` Q And is your opinion that you dispute all
`of the words in this limitation are absent from
`the prior art, or is there a subset of the words?
` A No; that -- it's all of the words.
` Q Now let's look at Page 52. Looking at
`Section C2.
` Do you see that?
` A Yes.
` Q You opine on the limitation, "Wherein the
`absorbent fibrous material is in contact with the
`electrical resistant heater."
` Right?
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`15
`
` A That's correct.
` Q And what are the words within this
`limitation that you actually dispute with respect
`to the prior art?
` A Well, I would say all of them.
` Q In your declaration you've opined on the
`four claim limitations from the '123 patent that
`we just discussed. Correct?
` A Correct.
` Q And those four claim limitations are the
`only ones from the '123 patent on which you've
`offered an opinion in this proceeding. Correct?
` A Well, I've offered an opinion on the two
`independent claims, 1 and 15, and then all the
`dependent claims that relate to them, of course.
` Q Sure. And what you mean by that is, to
`the extent that the wicked-into-contact and
`puff-actuated control limitations appear in Claims
`1 and 15, they are also part of the claims that
`depend on them. Correct?
` A That's correct.
` Q But in terms of the actual claim
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`Ex. 1042-015
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`16
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`limitations from the '123 patent claims at issue
`in this proceeding, there are only four that you
`offer an opinion on. Correct?
` A Well, yes, I think that is correct. You
`know, and again, you know, as they relate to the
`dependent claims, correct.
` Q And you understand that the petition in
`this proceeding has three grounds?
` A Yes.
` Q Ground 1 is based on the prior art Hon,
`Brooks, and Whittemore?
` A I believe that's correct.
` Q Ground 2 is based on Hon, Brooks,
`Whittemore, plus Susa?
` A Yes.
` Q Your declaration does not contain any
`opinions about the Susa reference. Correct?
` A Not specifically.
` Q You do not provide an opinion on what the
`Susa reference does or does not teach. Correct?
` A It -- Susa does not really come into play
`with the opinions that I have in the other claims
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`17
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`as --
` Q So I am therefore correct that you do not
`provide an opinion about what the Susa reference
`does or does not teach. Correct?
` A Again, only as it relates to the -- you
`know, the whole claim, that -- that's right.
` Q I'm sorry, I didn't understand your
`answer. As it relates to the whole claim? What
`do you mean by that?
` A Yeah, I mean to the -- to the independent
`claims.
` Q I'm sorry, I'm still not understanding.
`I guess what I'm looking for, as I read your
`declaration, there is no content, there is no
`opinion in which you, Mr. Clemens, put forth an
`opinion on whether the Susa reference does or does
`not teach any aspect of the claim language. I
`just want to confirm I'm reading that correctly.
` A So I did not offer an opinion on the
`specific portion of Susa that doesn't relate, I
`should say, to the independent portion of the --
`of the claims. So it didn't really come into play
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`Transcript of Charles E. Clemens
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`18
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`with my opinions there. So that's correct.
` Q Well, in other words, just to maybe get
`us on a simpler way to say it, in this proceeding
`the judges at the PTAB will not find an opinion
`from you about Susa's teachings one way or the
`other. Right? It's just not in play in your
`declaration?
` A Well, I agree with that to the extent
`when considered, you know, as a whole, with the --
`with the independent portion of the claim. So it
`just -- the specific dependency I did not have an
`opinion on.
` Q You have not offered any opinion about
`Ground 2 that's different from your opinions about
`Ground 1. Correct?
` MR. GAVIN: Objection to form.
` A I'm not sure, but I -- I don't believe
`so.
` Q Okay. And you have not offered any
`opinion about Ground 3 that is different from your
`opinions about Ground 1?
` MR. GAVIN: Objection. Form.
`
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`Transcript of Charles E. Clemens
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`19
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` A Again, I -- I'm not entirely sure. I
`could look at my declaration and just confirm
`that, if you'd like me.
` Q Yes, please. Of course, Mr. Clemens, all
`day long, if you need to confirm anything, please
`feel free to do so. And again, to clarify my
`question, I -- it's essentially that you don't
`think Ground 3 invalidates the claims. And the
`reason is the same as Ground 1. That's all I'm
`simply trying to confirm.
` But please take a look, and let me know
`when you have it.
` A Okay. Mr. Sobolski, if you could just
`repeat your question again.
` Q You have not offered any opinions about
`Ground 3 that are different from your opinions
`about Ground 1?
` A I believe that's correct.
` Q You have not offered any opinions about
`Ground 2 that are different from your opinions
`about Ground 1?
` A Correct. I believe that's true.
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`Ex. 1042-019
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`20
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` Q Did you review your declaration in
`preparation for your deposition today?
` A Yes, I did.
` Q Do you stand by it, or did you identify
`anything that needed correction?
` A No, I -- I don't believe I saw any
`corrections.
` Q So before we turn to some of the prior
`art references, Mr. Clemens, I want to ask you
`just a couple clarifications about things in your
`declaration.
` Is that okay?
` A Absolutely.
` Q Please look at Paragraph 71. Take a
`moment to review it. Let me know when you have,
`sir.
` A Okay, I've reviewed it.
` Q You wrote at Paragraph 71 of your
`declaration that, quote, As Hon explains that the
`transporting of the liquid from supply bottle 11
`to bulk 36 is via, quote, capillary infiltration,
`close quote, parentheses, i.e., wicking,
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`21
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`parentheses.
` Do you see that?
` A I do.
` Q Capillary infiltration in quotes is from
`the Hon reference. Correct?
` A That's correct.
` Q You added the parenthetical, "i.e.,
`wicking."
` Correct?
` A Yes, that's correct.
` Q You added the parenthetical "i.e.,
`wicking" in order to explain that capillary action
`and wicking are the same thing.
` Is that right?
` A A capillary -- capillary infiltration or
`capillary action is another way of saying wicking,
`yes. Correct.
` Q Capillary infiltration is another way --
`strike that. Do you mind if I ask the question
`again?
` A Go ahead.
` Q Wicking is another way of saying
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`Ex. 1042-021
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`22
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`capillary infiltration in this art. Correct?
` A Yes. A person of skill in the art would
`understand these -- these terms to be similar.
` Q A person of ordinary skill in the art
`would understand that wicking and capillary
`infiltration are interchangeable?
` A Yes.
` Q Okay. Let's turn to the Whittemore
`reference, sir, which I'm sure you know well.
`It's Exhibit 1007.
` (Philip Morris Exhibit 1007, previously
`marked, not attached.)
` MR. SOBOLSKI: Exhibit 1007 is U.S.
`Patent 2,057,353 to Whittemore, issued on October
`13, 1936.
` Q Do you recognize Exhibit 1007,
`Mr. Clemens?
` A Yes, I do.
` Q You reviewed the Whittemore reference for
`this proceeding and for this deposition?
` A Yes, I did.
` Q Whittemore describes a vaporizing unit.
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`Ex. 1042-022
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`23
`
` Correct?
` A Correct.
` Q Whittemore's vaporizing unit has a
`heating element or filament.
` A Is that a question?
` Q Yes, sir. Thank you. Do you want me to
`ask it again? Let me ask it again. Okay?
` A Oh, go ahead.
` Q Whittemore's vaporizing unit has a
`heating element or filament.
` A I -- yes, I see it.
` Q Whittemore's heating element or filament
`is an electrical resistance heater.
` A That is correct.
` Q Whittemore's vaporizing unit also has a
`wick.
` A That's correct.
` Q Whittemore's wick is an absorbent wicking
`material.
` A That is also correct.
` Q Whittemore's vaporizing unit has a
`vaporizing vessel that holds a liquid medicament.
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`Ex. 1042-023
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`24
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` A Yes, that's right.
` Q Whittemore describes using a liquid
`medicament in the device.
` A That's also correct.
` Q Whittemore's wick transports the liquid
`by capillary action.
` A Yes, that is correct.
` Q Capillary action means transporting the
`liquid by wicking.
` A Yes, that's fair.
` Q Please take a look at Whittemore. I'm
`looking at Column 2, Line 1 to 3. The part that
`says, "A portion of said wick is always in
`contact."
` Let me know when you have it.
` A Okay. Column 2, which line?
` Q Right at the top. One, two, three.
` A Okay.
` Q Do you see it?
` A Yes. Do you mind if I read?
` Q Of course. Just let me know when you've
`had a chance.
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`Ex. 1042-024
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`25
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` A Do you mind if I read -- I would like to
`see the bottom of Column 1.
` Q Anything you like, sir. Just ask for it,
`we'll show it to you, and when you're done just
`let me know.
` A Okay.
` Okay. Move back up to the top.
` Okay, yes, I've read it through. Thanks.
` Q In Whittemore, a portion of the wick is
`always in contact or approximate contact with the
`heating element.
` A That's correct.
` Q Let's take a look at Whittemore, Column
`2, Lines 5 through 7. I'm going to ask you a
`question there. Let me know when you have it.
` A Okay. Go ahead.
` Q In Whittemore the liquid will be
`vaporized by heat from the filament.
` A That is correct.
` Q Whittemore discloses wicking the liquid
`into contact with an electrical resistance heater.
` A That is what the -- yeah, the
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`Ex. 1042-025
`
`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`26
`
`specification indicates.
` Q And looking again at the top of Column 2
`in Whittemore. Let me know when you have that.
` A Go ahead.
` Q Whittemore discloses wicking the liquid
`into contact with the electrical resistance heater
`by placing the wick in contact with the heater.
` A That -- yeah, that is what it is
`indicating.
` Q Whittemore discloses also wicking the
`liquid into contact with the electrical resistance
`heater by placing the wick in proximity with the
`heater.
` MR. GAVIN: Objection to form.
` A Well, it doesn't specifically use that
`term, but it does say "approximate contact."
` Q So Whittemore also discloses wicking the
`liquid into contact with the electrical resistance
`heater by placing the wick in proximity with the
`heater.
` MR. GAVIN: Objection to form.
` A Well, I mean, so -- I mean, what I'm
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`Ex. 1042-026
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`27
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`reading here is the wick is always in contact.
` Q That's part of the disclosure at Column
`2, Line 2, of Whittemore. Correct?
` A Yes.
` Q Now, Whittemore also says that sometimes
`the wick is in approximate contact with the
`heating element. Right?
` A Yes.
` Q And that just means that the wick is in
`proximity with the heater in Whittemore sometimes.
` MR. GAVIN: Objection to form.
` A I would say that it could mean that, yes.
` Q So Whittemore also discloses wicking the
`liquid into contact with the heater by placing the
`wick in proximity to the heater.
` A Yes. And, of course, in such a way that
`this -- this wicking or capillary action can
`occur.
` Q Do you mind if I ask you some questions
`about figures in Whittemore?
` A Absolutely.
` Q Let's start with Figure 2. Let me know
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`Ex. 1042-027
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`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`28
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`when you've had a chance to look at it.
` A Okay. Yep, I see it.
` Q Figure 2 of Whittemore depicts a wick in
`contact with the heater. Right?
` A Yes.
` Q Figure 3 of Whittemore depicts a wick in
`contact with the heater.
` A Yes, that's correct.
` Q Whittemore closes a vaporizing unit with
`wicking material in contact with the heater.
` Correct?
` A Yes, that is correct.
` Q Whittemore was issued and published by
`1935. Correct?
` A I believe that's correct.
` Q So it's fair to say that it's been known
`since at least 1935 in the art to create a
`vaporizing unit by placing a wick into contact
`with an electrical resistance heater.
` A I would say that that is correct. In --
`in the idea that, you know, wicking liquid into
`contact with a -- with, you know, the heater,
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`Ex. 1042-028
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`29
`
`is -- you know, is understood in this time frame,
`correct.
` Q Okay. Thank you, sir. I'm going to,
`still in the area of wicked into contact, I'm
`going to ask you a couple more
`claim-construction-related questions.
` Is that okay?
` A It's your time.
` Q Let's go back to your exhibit at
`Paragraph 43. I'm sorry, let's go back to your
`declaration, Exhibit 2010, at Paragraph 43. And
`let me know when you've had a moment to review it.
` A Paragraph 43. Right?
` Q Yes, sir.
` Do you see it?
` A I'm reading it now.
` Okay, I've read it.
` Q You have offered an opinion on the
`construction of the term "wicked into contact."
` Correct?
` A Well, it -- you know, it's the plain
`meaning that I would give as somebody of skilled
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`Ex. 1042-029
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`30
`
`in the art would understand it in this time frame.
` Q And you have not offered an opinion on
`the construction or plain meaning of any other
`claim terms from the '123 patent in this
`proceeding. Correct?
` A I believe that's true.
` Q Your opinion is that the plain meaning of
`"wicked into contact" is that, quote, "the
`mixture, i.e., the liquid, must be brought into
`contact with the electrical resistance heater by
`wicking."
` A That is -- yes, that's what I -- what I
`have opined on in my declaration.
` Q And how did you arrive at the opinion
`that that reflects the plain meaning of "wicked
`into contact"?
` A Well, again, it's, you know, in the
`context of the specification and the claims, this
`is -- this is what I believe that a person of
`skill in the art would interpret these terms to
`mean.
` Q Have you ever personally used the term
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`Ex. 1042-030
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`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`31
`
`"wicked into contact" in a professional
`engineering capacity?
` A Oh, yes, many times.
` Q And have you always used it consistent
`with the plain meaning on which you've opined at
`Paragraph 43 and 44?
` A Yes, that is true.
` Q There is no publication of yours or
`presentation of yours or work product of yours
`that uses the term "wicked into contact" in any
`different sense than the meaning you've provided
`in Paragraph 43?
` A That is correct.
` Q Let's look at the '123 patent. It's
`Exhibit 1001.
` (Philip Morris Exhibit 1001, previously
`marked, not attached.)
` Q Exhibit 1001 is U.S. Patent 9,901,123.
` Do you recognize the '123 patent,
`Mr. Clemens?
` A Yes, I do.
` Q Let's go to Column 21, Lines 40 to 45.
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`Ex. 1042-031
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`
`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`32
`
`I'm going to ask you some questions there. And if
`you want, you might also want to keep side by side
`Paragraph 44 and 45 of your declaration, sir. Of
`course, look at whatever you like, but the
`inspiration for my question came from Paragraph
`45.
` A Okay.
` Q So let me know when you have all that,
`and once you've read Column 21, Line 40 to 45, and
`I'll ask my question.
` A Okay, I've read Paragraph 45. And if you
`could just repeat the section of the patent that
`you would like me to read.
` Q Column 21, Line 40 to 45.
` A Okay, I've read it. Thanks.
` Q The '123 patent specification refers to
`wicking liquid into contact. Correct?
` A Correct.
` Q The '123 patent specification also refers
`to other methods of transferring liquid into
`contact with the heater. Correct?
` A Correct.
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`Ex. 1042-032
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`
`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
`
`33
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` Q What are some of the other methods of
`transferring liquid into contact with the heater?
` A Well, the -- the specification is just
`indicating otherwise transferred, so as to make
`the contact with the resistance element, or
`contacting an area that would be close -- in close
`proximity. So not actually touching, but in close
`proximity.
` Q Just to get clarity, we agree that the
`'123 patent specification refers to methods of
`transferring the liquid into contact with the
`heater other than wicking. Correct?
` A In the section that you're pointing me
`to, the specification is indicating "or otherwise
`transferred." It doesn't specifically state a
`particular means; it's just indicating that there
`would be other -- other ways, otherwise
`transferred.
` Q The '123 patent specification refers to
`wicking as one method of getting the liquid into
`contact with the heater and also states that there
`are additional methods of doing so, without
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`Ex. 1042-033
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`Transcript of Charles E. Clemens
`Conducted on October 1, 2021
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`34
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`expressly identifying particular ones.
` Is that right?
` A So, yes, it's -- it refers to wicking
`specifically into contact with the resistance
`heater. And then it goes on to say that, or there
`are other ways of transferring it. And then it
`goes on to talk about not in contact, but actually
`to an area that's -- that's close proximity.
` Q You read the '123 patent from the
`perspective of one of ordinary skill in this art.
` Correct?
` A At the time of the invention, correct.
` Q At the time of the invention of the '123
`patent, a person of ordinary skill in the art
`understood that there were methods of transferring
`liquid into contact with the heater that include
`wicking as well as other methods. Right?
` A Of course, yes.
` Q What were some of the other methods, in
`addition to wicking, that a person of ordinary
`skill in the art at the time of the '123 patent
`understood could be used to transfer the liquid
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