Filed on behalf of: Philip Morris Products, S.A.
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`Entered: October 8, 2021
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`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,
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`v.
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`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`_______________________
`Case IPR2020-01602
`Patent 9,901,123
`______________________
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`PETITIONER’S REPLY
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`Entered: October 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`_______________________
`Case IPR2020-01602
`Patent 9,901,123
`______________________
`
`PETITIONER’S REPLY
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`IPR2020-01602 (USP 9,901,123)
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`TABLE OF CONTENTS
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`Petitioner’s Reply
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`Introduction ...................................................................................................... 1
`I.
`Claim Construction .......................................................................................... 2
`II.
`III. Ground 1: Claims 1-2, 5, 7, 9, 11-12, 14-15, 18, 21, and 23-26 are
`Unpatentable Over Hon, Alone or with Brooks and Whittemore ................... 5
`A.
`Claims 1 and 15: “the mixture … can be wicked into contact
`with the electrical resistance heater and volatilized” ............................ 5
`1.
`The Board Correctly Found that Hon Teaches This
`Limitation .................................................................................... 5
`The Combination of Hon and Whittemore Teaches This
`Limitation .................................................................................. 12
`Petitioner’s Use of Patent Owner’s Teardown of the
`Ruyan Device Is Proper ............................................................ 19
`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” ...................................... 21
`1.
`The Board Correctly Determined That Hon Discloses
`The Claimed Controller ............................................................ 21
`The Board Correctly Determined That It Would Have
`Been Obvious To Modify Hon With Brooks ............................ 22
`Claims 14 and 24: “the absorbent fibrous material is in contact
`with the electrical resistance heater” ................................................... 23
`Claims 11 and 23: “the cartridge is electrically conductive” .............. 24
`D.
`IV. Patent Owner Makes No Arguments Regarding Grounds 2 or 3 .................. 25
`V.
`Conclusion ..................................................................................................... 26
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`B.
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`C.
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`2.
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`3.
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`2.
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
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` Page(s)
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`CASES
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 18
`Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) .......................................................................... 17
`Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc.,
`246 F.3d 1336 (Fed. Cir. 2001) ............................................................................ 3
`Ethicon LLC v. Intuitive Surgical, Inc.,
`847 F. App’x 901 (Fed. Cir. 2021) ....................................................................... 3
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) ............................................................................ 19
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) ............................................................................ 7
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 3
`PAR Pharm., Inc. v. TWI Pharms, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 23
`Raytheon Co. v. Sony Corp.,
`727 F. App’x 662 (Fed. Cir. 2018) ..................................................................... 17
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) .......................................................................... 14
`Yeda Rsch. & Dev. Co. v. Mylan Pharms. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) .................................................................... 19, 20
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`Petitioner’s Reply
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`Exhibit List
`Description
`Ex.
`1001 U.S. Patent No. 9,901,123 (“the ’123 Patent”)
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`1002 File History for U.S. Patent No. 9,901,123
`1003 Declaration of Stewart Fox in Support of Petition for Inter Partes
`Review of ’123 Patent (“Fox Decl.”)
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`1004 Curriculum Vitae of Stewart Fox
`1005 Chinese Patent No. CN 2719043 (“Hon”) (including certified English
`translation and original Chinese version of the patent document)
`1006 U.S. Patent No. 4,947,874 (“Brooks”)
`1007 U.S. Patent No. 2,057,353 (“Whittemore”)
`1008 European Patent Publication No. EP 0845220 (“Susa”)
`1009 U.S. Patent No. 4,284,089 (“Ray”)
`1010 Chemical and Biological Studies on New Cigarette Prototypes that
`Heat Instead of Burn Tobacco, R. J. Reynolds Tobacco Company
`Monograph (1988) (“RJR monograph”) (excerpts) (markings on
`exhibit appeared in the used copy purchased by counsel)
`1011 U.S. Patent No. 4,793,365 (“Sensabaugh”)
`1012 Letter from Robert B. Swierupski, Director, National Commodity
`Specialist Division, to Mark Weiss, Weiss & Moy, P.C. regarding tariff
`classification ruling (Aug. 22, 2006), https://rulings.cbp.gov/ruling/
`M85579
`1013 Webpages from Beijing SBT Ruyan Technology & Development
`Corp., Sbtry.cn (archived at web.archive.org, 2005-2006, with
`affidavit)
`International Patent Publication No. WO 98/57556 (“Biggs”)
`1014
`1015 Webpages from E-cig.com (archived at web.archive.org, 2006-2007,
`with affidavit)
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`Petitioner’s Reply
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`Description
`Ex.
`1016 Complainants RAI Strategic Holdings, Inc., R.J. Reynolds Vapor
`Company, and R.J. Reynolds Tobacco Company’s Revised
`Infringement Claim Chart for U.S. Patent No. 9,901,123 from ITC Inv.
`No. 337-TA-1199 (Ex. 42)
`1017 RESERVED
`1018 Barbara Demick, A High-Tech Approach to Getting a Nicotine Fix,
`L.A. Times (Apr. 25, 2009), https://www.latimes.com/archives/la-xpm-
`2009-apr-25-fg-china-cigarettes25-story.html
`1019 Philip Morris U.S.A. interoffice correspondence from R.H. Mofitt to K.
`Torrence regarding operational analysis of SBT Ruyan Atomizing
`Nicotine Inhaler (Sept. 27, 2004),
`https://www.industrydocuments.ucsf.edu/docs/fnpb0219
`1020 Philip Morris U.S.A. interoffice correspondence from R.H. Moffitt to
`K. Torrence regarding operational analysis of SBT Ruyan Atomizing
`Nicotine Inhaler (Sept. 27, 2004) (original)
`1021 Petition for Inter Partes Review of U.S. Patent No. 8,365,742 Pursuant
`to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, R.J. Reynolds Vapor Co.
`v. Fontem Holdings 1 B.V., IPR2016-01268 (July 2, 2016) (“RJRV
`Pet.”)
`1022 Final Written Decision, R.J. Reynolds Vapor Co. v. Fontem Holdings 1
`B.V., IPR2016-01268, Paper 63 (Dec. 19, 2017) (“RJRV FWD”)
`1023 Kevin Hatch, et al., Preliminary Evaluation of a Commercially
`Available Electric Aerosol Inhaler from China (Sept. 14, 2006) (“RJR
`Teardown”), available at https://www.industrydocuments.ucsf.edu/
`docs/nyvy0228
`1024 Email exchange among Carolyn Carpenter, John Robinson et al.
`regarding electric cigarette, available at
`https:/www.industrydocuments.ucsf.edu/docs/nsxy0228
`1025 Hon Lik, I Was Sure That the Electronic Cigarette Would be
`Welcomed with Open Arms, Sciences et Avenir (Oct. 7, 2013)
`https://www.sciencesetavenir.fr/sante/i-was-sure-that-the-electronic-
`cigarette-would-be-welcomed-with-open-arms_26020 (updated Oct.
`18, 2013)
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`Description
`Ex.
`1026 U.S. Patent No. 7,117,867 (“Cox”)
`1027 U.S. Patent No. 4,735,217 (“Gerth”)
`1028 European Patent Publication No. EP 1,618,803 (“Hon-803”)
`1029 U.S. Patent No. 5,388,574 (“Ingebrethsen”)
`1030 U.S. Patent No. 6,095,153 (“Kessler”)
`1031 U.S. Patent No. 4,449,541 (“Mays”)
`1032 U.S. Patent No. 8,950,587 (“Thomson”)
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`1033 George Wypych, Handbook of Polymers (2d ed. 2016)
`1034 Written Opinion of the International Searching Authority in
`International Application No. PCT/US2007/081461
`1035 U.S. Patent No. 1,968,509 (“Tiffany”)
`1036 U.S. Patent No. 5,692,525 (“Counts”)
`1037 Order Granting Defendants’ Unopposed Motion to Invoke the
`Statutory Stay of Plaintiffs’ Claims Relating to U.S. Patent Nos.
`9,839,238, 9,901,123, and 9,930,915 Pursuant to 28 U.S.C. § 1659,
`RAI Strategic Holdings, Inc. v. Altria Client Services LLC, No. 1:20-
`cv-00393-LO-TCB (E.D. Va. June 19, 2020), ECF No. 27
`1038 Order No. 8, Certain Laser-driven Light Sources, Subsystems
`Containing Laser-driven Light Sources, and Products Containing
`Same, Inv. No. 337-TA-983 (U.S.I.T.C., Mar. 3, 2016)
`1039 Email from counsel for Altria Client Services LLC et al. to counsel for
`RAI Strategic Holdings, Inc. et al. and U.S.I.T.C. regarding Inv. No.
`337-TA-1199 (Jan. 29, 2021)
`1040 Declaration of Jonathan M. Strang in Response to Patent Owner’s
`Objections to Petitioner’s Exhibits [served, not filed]
`1041 Declaration of Dr. Robert H. Sturges, R.J. Reynolds Vapor Co. v.
`Fontem Holdings 1 B.V., IPR2016-01268, Ex. 1015 (July 1, 2016)
`(“Sturges Decl.”)
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`Description
`Ex.
`1042 Transcript of October 1, 2021 Deposition of Charles E. Clemens
`(“Clemens Dep.”)
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`Petitioner’s Reply
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`I.
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`Introduction
`The Petition established that claims 1-7, 9, 11-19, 21, and 23-26 of the ’123
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`Patent are invalid. Patent Owner’s arguments that the prior art fails to disclose four
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`limitations are flawed.
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`First, Patent Owner’s argument with respect to the “wicked into contact”
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`limitation relies on an erroneous claim construction that excludes liquid that is
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`undisputedly “wicked,” if that liquid is also assisted by other forces, such as airflow.
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`Neither the claim language nor the specification supports that negative limitation,
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`and the Board should reject that construction. Even under Patent Owner’s erroneous
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`narrowing construction, however, the combination of Hon and Whittemore discloses
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`the “wicked into contact” limitation, as Whittemore’s heater/wick arrangement
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`undisputedly teaches liquid being “wicked into contact.”
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`Second, with respect to the “regulating current flow” limitation, Patent Owner
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`argues that turning a heater on and off does not constitute “regulating” current. But
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`Patent Owner’s expert, Mr. Clemens, conceded at his deposition that the ’123 Patent
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`expressly describes turning the heater on and off as a method of regulating current
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`flow. And Mr. Clemens further conceded that Hon teaches precisely that.
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`Third, while it is undisputed that Whittemore’s heater/wick design teaches the
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`“fibrous material is in contact with the electrical resistance heater,” Patent Owner
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`contends that a POSA would not be motivated to combine Whittemore with Hon.
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`Patent Owner’s argument is not credible given that Patent Owner itself, in a previous
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`IPR, argued that a POSA would be motivated to combine Whittemore with Hon, and
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`the Board agreed that this would be a “simple substitution.”
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`Fourth, with respect to the “electrically conductive” limitation, Patent Owner
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`argues that there would be no reason to use conductive, metallic, materials. But, as
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`the Petition explained, a POSA would have preferred metallic materials because they
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`conduct heat better than non-metals and minimize the risk of heat-related damage to
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`device components.
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`II. Claim Construction
`Patent Owner contends that the “plain and ordinary meaning” of “wicked into
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`contact” is “the aerosol-forming material … must be brought into contact with the
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`electrical resistance heater by wicking.” POR 10-11. But Patent Owner indicates
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`that its construction requires not just that the aerosol-forming material be brought
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`into contact with the heater via wicking, but that it do so only via wicking. Id. 11.
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`Indeed, Patent Owner’s expert Mr. Clemens admitted that he understands the term
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`to require that the mixture contact the heater “solely” by wicking, and “excludes”
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`any other methods of liquid transfer, even if performed in addition to wicking.1
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`Clemens Dep. 38:13-17, 41:14-19 (Ex. 1042). According to Patent Owner, the
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`1 All emphases added except where noted.
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`2
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`Petitioner’s Reply
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`“claim language does not encompass” any other “manners of transfer” that occur in
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`addition to wicking. POR 11. Patent Owner’s proposal is legal error.
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`By excluding all methods of liquid transfer other than (or in addition to)
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`wicking, Patent Owner reads a negative limitation into the claims. Negative
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`limitation claim constructions are generally disfavored, and are only appropriate
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`where they “find support either in ‘the words of the claim’ or through an ‘express
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`disclaimer or independent lexicography.’” Ethicon LLC v. Intuitive Surgical, Inc.,
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`847 F. App’x 901, 907-08 (Fed. Cir. 2021) (quoting Omega Eng’g, Inc. v. Raytek
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`Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)).
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`Here, the plain words of the claim do not support Patent Owner’s broad
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`exclusion. Claims 1 and 15 are “comprising” claims, which “do[] not exclude
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`additional, unrecited elements.”
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` Crystal Semiconductor Corp. v. TriTech
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`Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). The
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`“comprising” language of claims 1 and 15 requires that the liquid be wicked to
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`contact the heater, but does not exclude the use of additional forces (for example,
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`the use of airflow to assist the wicked liquid in reaching the heater, as taught in Hon).
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`Patent Owner does not even contend that any express disclaimer or lexicography
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`exists. Cf. POR 9-12. There is none. Patent Owner’s attempt to limit the term
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`“wicked into contact” to exclude any form of liquid transfer in addition to wicking
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`should be rejected.
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`Petitioner’s Reply
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`Patent Owner’s argument also contradicts the specification of the ’123 Patent.
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`As the Board correctly stated, and Patent Owner agrees, the specification describes
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`embodiments in which the absorbent wicking material does not contact the heater,
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`but the aerosol-forming material is nonetheless wicked into contact with the heater.
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`’123 Patent 21:38-45 (Ex. 1001); see POR 11; Inst. Dec. 25. Thus, “wicked into
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`contact” must allow for additional, assistive, mechanisms of liquid transport to allow
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`the wicked liquid to contact the heater from some distance away.
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`Patent Owner contends that “surface tension” and “cohesive forces” can
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`“bridge [the] gaps” between the wicking material and the heater. POR 31. But
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`“surface tension” and “cohesive forces” are additional methods of liquid transport,
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`beyond wicking. Clemens Dep. 109:16-110:4 (agreeing that surface tension and
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`cohesive forces can exist “independent” of wicking). Indeed, no wicking material
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`is shown in Patent Owner’s explanation of these forces. POR 32; Clemens Dep.
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`106:3-11. Patent Owner and its expert provide no reason for why the term “wicked
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`into contact” would include liquid that is wicked and then assisted to contact the
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`heater by surface tension or cohesive forces, but exclude liquid that is wicked and
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`then assisted to contact the heater by airflow. The plain and ordinary meaning of the
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`claim term allows for any number of additional methods of liquid transport, so long
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`as the liquid is wicked and, as a result, contacts the heater.
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`Petitioner’s Reply
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`III. Ground 1: Claims 1-2, 5, 7, 9, 11-12, 14-15, 18, 21, and 23-26 are
`Unpatentable Over Hon, Alone or with Brooks and Whittemore
`A. Claims 1 and 15: “the mixture … can be wicked into contact with
`the electrical resistance heater and volatilized”
`1.
`The Board Correctly Found that Hon Teaches This
`Limitation
`The Petition established that Hon discloses “the mixture comprising the
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`tobacco extract and the aerosol-forming material can be wicked into contact with the
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`electrical resistance heater.” Pet. 45. The Board correctly found that Hon, alone,
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`teaches that “liquid is wicked into contact with the heater,” utilizing a “wicking
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`material … in close proximity to the heater.” Inst. Dec. 23-25.
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`Hon’s electronic cigarette contains liquid in a bottle having a liquid storing
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`porous body. Pet. 47; Hon 7 (Ex. 1005); Fox Decl. ¶¶151-152 (Ex. 1003). “The
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`liquid storing porous body 28 in the liquid-supplying bottle 11 is in contact with the
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`bulge 36 on the atomizer 9 to realize the solution supply via capillary infiltration,”
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`Hon 7; Fox Decl. ¶¶151-152. The liquid mixture is wicked (i.e., transported by
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`capillary infiltration) from the bottle to the bulge in porous body 27, and is then
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`further wicked around and through the porous body 27 to ejection holes 24.
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Reply
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`Hon 6, Fig. 6 (annotated); Fox Decl. ¶152. When the user draws on the cigarette,
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`the wicked “solution in the porous body 27 is driven by the high-speed airflow …
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`and ejected in the form of droplets into the atomization cavity 10,” where it contacts
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`“heating element 26” and is volatilized. Hon 7; Fox Decl. ¶153. Patent Owner’s
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`arguments that Hon does not disclose this limitation are wrong.
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`First, Patent Owner argues that “the Board appears to have preliminarily
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`agreed with Petitioner’s position that if the absorbent fibrous/wicking material is
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`positioned in proximity to the heater, then this necessarily means that the liquid is
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`‘wicked into contact’ with the heater.” POR 9-10. That is incorrect. Petitioner did
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`not argue, and the Board did not accept, that mere proximity to the heater satisfies
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`the “wicked into contact” limitation. Petitioner explained unequivocally that “the
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`wicked liquid mixture contacts the heating element.” Pet. 48. The Board similarly
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`Petitioner’s Reply
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`concluded that Hon discloses “liquid is wicked into contact with the heater through
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`ejection hole 24 when air is drawn through the smoking article.” Inst. Dec. 24. The
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`Petition references the “proximity” limitation of dependent claim 25 only to make
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`clear that claims 1 and 15 “do[] not require the wick itself to contact the heater.”
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`Pet. 46. All Parties and the Board now appear to agree. POR 20 (“agree[ing] with
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`the Board”).
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`Second, Patent Owner argues that “Hon does not state that the liquid
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`‘contacts’ heating element 26.” Id. 23-25. Patent Owner is incorrect. A reference
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`“need not satisfy an ipsissimis verbis [in the identical words] test” in order to disclose
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`a limitation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). That controls here.
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`Hon discloses that liquid contacts the heater. Liquid is wicked out of Hon’s
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`“liquid-supplying bottle 11 … via capillary infiltration.” Hon 7; Pet. 47. Hon’s
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`wicked liquid travels, with the assistance of airflow, from the absorbent
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`fibrous/wicking material (porous body 27, shown in pink), through the ejection holes
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`(annotated in yellow), where it is “ejected in the form of droplets into the atomization
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`cavity 10,” and “atomized under the effect of the heating element 26” (red).
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`Petitioner’s Reply
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`Hon 6-7, Fig. 6 (annotated); Fox Decl. ¶152. As Mr. Fox explained, a POSA would
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`understand from this disclosure that the liquid is ejected from the holes directly
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`opposite the heater and “contacts” the heating element. Fox Decl. ¶153.
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`Patent Owner’s contention that “[d]uring his deposition, Mr. Fox conceded
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`that Hon does not describe that the liquid contacts the heater,” POR 25, is flatly false.
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`To the contrary, Mr. Fox repeatedly explained that Hon teaches that liquid contacts
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`the heater:
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`Q.: In your declaration, you don’t cite any evidence that the liquid
`actually contacts the heating in liquid form, correct?
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`A.: In my declaration, I said, in the context of the ’123 patent, Hon does
`teach that the liquid is wicked onto the heater, which --into contact
`with the heater, and a person ordinary skill in the art would understand
`that it reaches the heater in liquid form.
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`Petitioner’s Reply
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`Fox Dep. 95:19-96:3; see also id. 83:19-84:3 (liquid “will form an aerosol … after
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`it contacts the heating element”), 84:12-20 (“a POSA would understand that the
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`liquid … strikes the heater, where it is vaporized”), 94:17-21 (“a POSA will
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`understand that the liquid is ejected out of the holes directly onto the heating
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`element”).
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`Third, Patent Owner provides no credible explanation for how Hon’s liquid
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`mixture could undisputedly be “ejected in the form of droplets” out of “ejection
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`hole[s] … directly opposite to the heating element,” and then “atomized under the
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`effect of the heating element,” as Hon describes, without any liquid contacting the
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`heating element. Hon 6-7. Patent Owner and Mr. Clemens assert that Hon’s
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`atomization chamber could reach temperatures so high that any liquid “would
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`instead vaporize as soon as it enters the cavity.”2 POR 26; Clemens Decl. ¶70 (Ex.
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`2010). That theory is inconsistent with Hon’s disclosure.
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`As Hon explains, after its liquid is “atomized under the effect of the heating
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`element,” “droplets of large diameters are attached to the wall” inside the
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`2 Notably, Mr. Clemens did not affirmatively claim that liquid does not contact
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`Hon’s heater. He agreed it was “possible” that Hon’s liquid does in fact contact the
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`heater, but argued that Hon “doesn’t say one way or the other.” Clemens Dep. 74:6-
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`10, 79:15-80:2.
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`Petitioner’s Reply
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`atomization chamber “and are re-absorbed by the porous body 27.” Hon 7. Mr.
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`Clemens admitted that this passages indicates that “liquids can form and persist
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`inside the atomization chamber in Hon.” Clemens Dep. 92:21-93:16. Mr. Clemens’
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`admission contradicts Patent Owner’s Response. Such liquid formation would be
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`impossible if, as Patent Owner contends, the heat of the atomization chamber
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`instantly vaporized all liquid.
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`Even if Hon was silent (it is not) as to whether the liquid contacts the heater
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`or is entirely vaporized, a POSA would understand Hon discloses the former. As
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`Mr. Fox explained, Patent Owner’s vaporization theory “would rely on radiation and
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`convection heating, neither of which are particularly efficient ways of … conducting
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`heat.” Fox Dep. 95:9-18. Instead, a “person of ordinary skill in the art would know
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`that the best way -- the only way, really, to heat the liquid would be by conduction,
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`and that would mean that the liquid would have to contact the heating element.” Id.
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`Anything else “would make the device incredibly inefficient.” Id.
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`Fourth, Patent Owner wrongly contends that, even if Hon’s liquid contacts
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`its heating element, “Hon’s liquid is not wicked into contact with the electrical
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`resistance heater.” POR 27. According to Patent Owner, because the wicked
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`liquid’s path from the supply bottle to the heating element is assisted by airflow, it
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`is “transported by ‘high-speed airflow of the ejection hole,’ not wicking.” Id. 27-
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`28. Patent Owner’s argument rests on a legally erroneous definition of “wicked into
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`Petitioner’s Reply
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`contact” that improperly excludes any methods of liquid transport in addition to
`
`wicking. As described in Section II above, claims 1 and 15 are open-ended
`
`“comprising” claims, and neither the claim language nor the specification of the ’123
`
`Patent excludes the use of other liquid transportation methods (such as airflow or
`
`gravity) in addition to wicking.
`
`Hon discloses the “wicked into contact” limitation under its the plain and
`
`ordinary meaning. It is undisputed that Hon’s liquid is transported out of the bottle
`
`and into the porous body of the atomizer via “capillary infiltration,” a term which is
`
`“interchangeable” with “wicking.” Clemens Dep. 22:4-7, 66:12-67:15; see Pet. 47
`
`(citing Hon 7; Fox Decl. ¶¶151-152). As Hon describes, the wicked liquid “in the
`
`porous body 27 is driven by the high-speed airflow of the ejection hole and ejected
`
`in the form of droplets into the atomization cavity 10,” where it is “atomized” by
`
`“heating element 26.” Hon 7; Fox Decl. ¶153. Thus, as the Board correctly
`
`concluded, “Hon teaches wicking material (porous body 27) in close proximity to
`
`the heater (heating element 26), wherein liquid is wicked into contact with the heater
`
`through ejection hole 24 when air is drawn through the smoking article.” Inst. Dec.
`
`24. That is, the forces responsible for propelling the liquid from the supply bottle
`
`into contact with the heater include both wicking and airflow. Patent Owner’s
`
`attempt to discount this teaching because it relies on airflow in addition to wicking
`
`ignores the plain and ordinary meaning of “wicked into contact.”
`
`11
`
`
`
`IPR2020-01602 (USP 9,901,123)
`
`
`
`Petitioner’s Reply
`
`2.
`
`The Combination of Hon and Whittemore Teaches This
`Limitation
`Even under Patent Owner’s incorrect construction of “wicked into contact,”
`
`the combination of Hon and Whittemore teaches this limitation. As the Petition
`
`explained, it would have been obvious to replace Hon’s atomizer with a simple
`
`heater/wick design as taught by Whittemore. Pet. 50-53. Patent Owner does not
`
`dispute that Whittemore teaches this limitation, but argues that a POSA would not
`
`have combined Hon with Whittemore. Clemens Dep. 26:5-9; POR 33-36. That
`
`argument fails, not only because a POSA would, in fact, consider it obvious to
`
`combine Hon with Whittemore, but because Patent Owner has already represented
`
`to the Board that a POSA would do so.
`
`a.
`
`Patent Owner Has Already Agreed It Would Have Been
`Obvious to Combine Hon with Whittemore
`Having previously represented to the Board that it would have been obvious
`
`to combine Hon with Whittemore’s wick/heating wire, Patent Owner cannot now
`
`credibly argue the opposite. In R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`
`IPR2016-01268, Patent Owner (acting as petitioner) argued that:
`
`[T]he PHOSITA would have been highly motivated to substitute the
`wick/heating wire configuration of Whittemore for the heating wire of
`Hon ’043 to achieve the predicted result of more efficient heating,
`lower heating temperatures, and improved battery life.
`
`12
`
`
`
`IPR2020-01602 (USP 9,901,123)
`
`
`
`Petitioner’s Reply
`
`RJRV Pet. 19 (Ex. 1021). For support, Patent Owner introduced an expert
`
`declaration confirming that “the configuration disclosed in Whittemore (i.e., a
`
`heating wire wound on a porous wick) is thermally more efficient,” “run[s] at lower
`
`temperatures,” and requires “less energy” compared to “the configuration of Hon.”
`
`Id.; Sturges Decl. ¶¶54-62 (Ex. 1041).
`
`The same Patent Owner now asks the Board to accept the opposite conclusion,
`
`namely that “Hon’s heater is more efficient, and thus works better and with less
`
`power consumption, than the heater in Whittemore’s wick/heater design,” and
`
`therefore “a POSA would not have combined Hon with Whittemore.” POR 33-36.
`
`That should be dispositive. The below chart exemplifies Patent Owner’s
`
`contradictions.
`
`IPR2016-01268
`“simple thermodynamics would have
`motivated
`the
`[POSA]
`to modify
`Hon ’043 as taught by Whittemore”
`RJRV Pet. 7.
`“Whittemore’s wick/heating wire
`configuration
`is more
`thermally
`efficient than the configuration of Hon.”
`RJRV Pet. 8.
`
`This Proceeding
`“[A] POSA would not have been
`motivated to modify Hon to include the
`heater/wick design of Whittemore.”
`POR 34.
`“Hon’s heater is more efficient, and thus
`works better and with less power
`consumption,
`than
`the heater
`in
`Whittemore’s wick/heater design.”
`POR 36.
`
`As the Federal Circuit has noted, “a reasonable fact finder would consider the
`
`inconsistencies” in sworn testimony, and inconsistent testimony is “the exact type
`
`13
`
`
`
`IPR2020-01602 (USP 9,901,123)
`
`
`
`Petitioner’s Reply
`
`of evidence the Board routinely relies upon to determine credibility.” Ultratec, Inc.
`
`v. CaptionCall, LLC, 872 F.3d 1267, 1272-73 (Fed. Cir. 2017). Patent Owner’s and
`
`Mr. Clemens’ arguments that (i) a POSA would not combine Hon with Whittemore,
`
`or (ii) Hon’s heater is more efficient than Whittemore’s, are not credible in light of
`
`Patent Owner’s previous representations to the Board.
`
`b.
`
`The Board Has Previously Concluded It Would Have Been
`Obvious to Combine Hon with Whittemore
`Petitioner submits that the Board should conclude, as it held previously, that
`
`“a simple substitution … would be to remove the entire atomizer in Hon ’043 and
`
`replace it with Whittemore’s wire-wrapped wick dipped directly into liquid-supply
`
`bottle 11.” RJRV FWD 17 (Ex. 1022). That is the same modification proposed by
`
`Petitioner here: “replac[ing] Hon’s complicated atomizer with a simple heater/wick
`
`design as taught by Whittemore (Ex. 1007), thus wicking the liquid directly to the
`
`heater.” Pet. 50.
`
`Petitioner respectfully disagrees with the Board’s suggestion that a POSA
`
`would not combine Hon and Whittemore because “Whittemore’s wire-wrapped
`
`wick has little relation to the atomizer disclosed in Hon.” Inst. Dec. 28. The “little
`
`relation” language in the prior proceeding was used in support of, not contrary to,
`
`the Board’s conclusion that it would have been “a simple substitution” to combine
`
`Hon’s atomizer with Whittemore’s wire-wrapped wick. RJRV FWD 17. In the
`
`context of that proceeding, “little relation” was a relative term, describing the
`
`14
`
`
`
`IPR2020-01602 (USP 9,901,123)
`
`
`
`Petitioner’s Reply
`
`replacement of Hon’s atomizer with Whittemore’s heater/wick, as compared to a
`
`more structurally similar proposal (keeping Hon’s atomizer but inserting an
`
`additional wick) which was rightly rejected as “redundant.” Id. 17-18. But the
`
`factual records in both cases show that, regardless of structural similarity, Hon’s
`
`atomizer and Whittemore’s heater/wick serve the same function. Both were known
`
`ways of “wick[ing] the liquid so that it may be aerosolized by a heater.” Fox Decl.
`
`¶157l see also Clemens Decl. ¶89 (noting that Whittemore’s “wick/heater” and
`
`Hon’s “atomization cavity” are both “heating mechanisms” that volatize liquids).
`
`Petitioner respectfully submits that the Board, as it did previously, should
`
`conclude that replacing Hon’s atomizer with Whittemore’s wire-wrapped wick
`
`would have been “a simple substitution,” regardless of whether the two structures
`
`are structurally similar.
`
`c.
`
`A POSA Would Have Been Motivated to Combine Hon with
`Whittemore’s Heater/Wick
`Separate and apart from the prior proceeding, the record here confirms that a
`
`POSA would have been motivated to modify Hon’s device by replacing its atomizer
`
`with the heater/wick taught by Whittemore. Pet. 50-53. Patent Owner argues that
`
`(1) Petitioner did not provide evidence that this combination would have improved
`
`performance; (2) Hon teaches a different configuration that could have achieved the
`
`same result; and (3) Whittemore’s heater/wick may not be compatible with Hon.
`
`POR 34-36. Each of these arguments fails.
`
`15
`
`
`
`IPR2020-01602 (USP 9,901,123)
`
`
`
`Petitioner’s Reply
`
`First, the Petition does provide objective evidence that a POSA would have
`
`been motivated to improve Hon’s atomizer. The ’123 Patent itself admits that the
`
`selection of an appropriate heating element “will be readily apparently to one skilled
`
`in the art of design and manufacture of electrical resistance heating systems.” ’123
`
`Patent 29:32-50. It further admits that “[r]epresentative smoking articles … can be
`
`provided” using the “exemplary components” of prior art electronic cigarettes from
`
`Ruyan SBT Technology and Development Co. Pet. 5-8. The inventor of the Ruyan
`
`device, Mr. Hon, is the lead inventor of the Hon reference. Id. 5.
`
`Before the filing of the ’123 Patent’s priority application, its inventors tore
`
`down and analyzed Ruyan devices. RJR Teardown (Ex. 1023). Those devices were
`
`“an actual implementation of Hon[’s] design” and “the same as Hon … in relevant
`
`respects.” Fox Decl. ¶¶13
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