Patent Owner Sur-Reply
`IPR2020-01602
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner
`
`Patent No. 9,901,123
`
`
`
`
`Case IPR2020-01602
`
`PATENT OWNER SUR-REPLY
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`
`
`
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`

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`
`Patent Owner Sur-Reply
`IPR2020-01602
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................. iii
`LIST OF PATENT OWNER EXHIBITS ................................................................. v
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`CLAIM CONSTRUCTION ........................................................................... 3
`III. HON, BROOKS, AND WHITTEMORE DO NOT RENDER
`CLAIMS 1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, AND 23-26 OBVIOUS
`(GROUND 1) .................................................................................................. 5
`A.
`Claims 1 and 15: “the mixture … can be wicked into contact
`with the electrical resistance heater and volatilized” ........................... 5
`1.
`Hon Does Not Disclose That “the mixture … can be
`wicked into contact with the electrical resistance heater
`and volatilized” .......................................................................... 5
`a)
`Hon Does Not Disclose That Its Liquid Mixture
`Comes Into Contact With Its Heating Element ............... 5
`Hon’s Liquid Mixture Is Not Transferred To Hon’s
`Heating Element By Wicking .......................................... 8
`A POSA Would Not Have Combined Hon With
`Whittemore ............................................................................... 10
`a)
`The Prior Proceedings Do Not Help Petitioner’s
`Case Here ....................................................................... 10
`The Board Correctly Determined That Petitioner
`Has Not Established Why A POSA Would Have
`Attempted To Modify Hon With Whittemore ............... 12
`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” ..................................... 16
`1.
`Hon Does Not Disclose The Claimed Controller .................... 16
`2.
`Petitioner Has Not Demonstrated That It Would Have
`Been Obvious To Modify Hon With Brooks ........................... 18
`Petitioner Cannot Show That A Number Of Dependent Claims
`Would Have Been Obvious For Additional Reasons ......................... 19
`
`C.
`
`b)
`
`b)
`
`2.
`
`B.
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`

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`TABLE OF CONTENTS
`(continued)
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Page
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`Claims 11 and 23: “wherein the cartridge is electrically
`conductive” .............................................................................. 19
`Claims 14 and 24: “wherein the absorbent fibrous
`material is in contact with the electrical resistance heater” ..... 21
`IV. GROUND 2 (CLAIMS 3, 4, 13, 16, 17) AND GROUND 3 (CLAIMS
`6, 19) ............................................................................................................. 21
`CONCLUSION ............................................................................................. 22
`
`1.
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`2.
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`V.
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`ii
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`TABLE OF AUTHORITIES
`
`Patent Owner Sur-Reply
`IPR2020-01602
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`Page
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`
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`CASES
`
`Denso Corp. v. Beacon Navigation GmbH,
`IPR2013-00027, Paper 16 (PTAB June 24, 2013) ............................................... 7
`
`Dippin’ Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007) ............................................................................ 4
`
`Gracenote, Inc. v. Iceberg Indus., LLC,
`IPR2013-00551, Paper 6 (PTAB Feb. 28, 2014) .................................................. 7
`
`In re Hughes,
`345 F.2d 184 (CCPA 1965) .................................................................................. 6
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) .............................................................................. 7
`
`In re Varma,
`816 F.3d 1352 (Fed. Cir. 2016) ............................................................................ 4
`
`Intel Corp. v. Qualcomm, Inc.,
`IPR2018-01261, Paper 30 (PTAB Jan. 9, 2020) ................................................ 11
`
`MEHL/Biophile Int’l Corp. v Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ............................................................................ 7
`
`Otsuka Pharm. Co., v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .......................................................................... 13
`
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`IPR2016-01268, Paper 63 (PTAB Dec. 19, 2017) ................................. 10, 11, 12
`
`Raytheon Co. v. Sony Corp.,
`727 F. App’x. 662 (Fed. Cir. 2018) ...................................................................... 4
`
`
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`iii
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`

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`Spectrum Int’l, Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998) ............................................................................ 4
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) .......................................................................... 11
`
`Univ. of Strathclyde v. Clear-Vu Lighting LLC,
`No. 2020-2243, 2021 WL 5114660 (Fed. Cir. Nov. 4, 2021) ............................ 13
`
`VMR Prods. LLC v. Fontem Holdings 1 B.V.,
`IPR2015-00859, Paper 9 (PTAB Sept. 16, 2015) ............................................... 10
`
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`iv
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Ex. 2003
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`LIST OF PATENT OWNER EXHIBITS
`Ex. 2001 Complaint from ITC Investigation No. 337-TA-1199
`Ex. 2002
`ITC Procedural Schedule in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. June 11,
`2020)
`Excerpt of Respondents’ Pre-Hearing Brief in Certain Tobacco
`Heating Articles and Components Thereof, ITC Inv. No. 337-TA-
`1199 (U.S.I.T.C. Dec. 11, 2020)
`Ex. 2004 U.S. Patent Application Publication No. 2007/0267031
`Ex. 2005
`Excerpts of Respondents’ Joint Disclosure of Final Contentions in
`Response to Individual Interrogatory No. 12 (Final Invalidity
`Contentions) in Certain Tobacco Heating Articles and Components
`Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. Sept. 18, 2020)
`
`
`Ex. 2006 Order Denying Respondents’ Motion for Leave to Amend Their
`Response to the Complaint in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (U.S.I.T.C. Oct. 22,
`2020)
`
`
`Ex. 2007
`
`
`Ex. 2008
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`Ex. 2009
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`Excerpts of Deposition Transcript of Stewart M. Fox in Certain
`Tobacco Heating Articles and Components Thereof, ITC Inv. No.
`337-TA-1199 (U.S.I.T.C. Nov. 6, 2020)
`
`Excerpts of Ruyan Product Internal R&D Assessment (March 2007)
`
`Excerpts of Commission Staff Attorney’s Pre-Hearing Brief in Certain
`Tobacco Heating Articles and Components Thereof, ITC Inv. No.
`337-TA-1199 (U.S.I.T.C. Jan. 4, 2021)
`
`
`Ex. 2010 Declaration of Charles E. Clemens
`
`Ex. 2011
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`Ex. 2012 University of California San Francisco – Tobacco Industry Record of
`Ex. 1023
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`Transcript of June 25, 2021 Deposition of Stewart Fox
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`
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`v
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`Ex. 2013 University of California San Francisco – Tobacco Industry Record of
`Ex. 1019
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Ex. 2014 PDF of https://ucfilament.com/materials/nichrome/ related to
`nichrome alloys
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`
`Ex. 2015
`
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`Ex. 2016
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`
`
`
`
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`PDF of https://www.birkmfg.com/blog/why-use-platinum-in-rtd-
`temperature-sensors/ related to platinum
`
`ITC Inv. No. 337-TA-1199 Commission Opinion dated September 29,
`2021 (Public Version)
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`vi
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`

`

`INTRODUCTION
`Petitioner spends the vast majority of its Reply on the “wicked into contact
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`Patent Owner Sur-Reply
`IPR2020-01602
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`I.
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`with the electrical resistance heater” limitation in claims 1 and 15. (See Reply (Paper
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`23) at 2-19.) The reason for this is simple – Petitioner’s positions on this limitation
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`have significant holes that it is desperately attempting to fix. But the flaws are fatal,
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`and claims 1 and 15 are valid.
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`
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`To begin, Hon does not describe that its liquid is “wicked into contact” with
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`its heating element. In fact, Petitioner concedes that, if Hon’s liquid contacts the
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`heating element, the liquid does so only because of the “high-speed airflow” that
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`“ejects” droplets into the atomization cavity where Hon’s heating element resides.
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`Petitioner thus admits that wicking does not cause Hon’s liquid to contact the heating
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`element. Petitioner’s argument that Hon nevertheless discloses this limitation is
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`based entirely on its claim construction position that “wicked into contact” includes
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`any wicking within the device, so long as the liquid eventually contacts the heater.
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`Petitioner’s argument renders the words “wicked into contact” meaningless and
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`should be rejected. Moreover, Petitioner has failed to establish that Hon’s liquid
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`even contacts the heating element at all. Hon says nothing of this, and Petitioner
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`relies solely on speculation and the unsupported ipse dixit of its expert.
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`
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`Petitioner’s backup position – its proposed combination to modify Hon by
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`replacing Hon’s entire atomizer with the wire-wrapped wick of Whittemore – fares
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`1
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`Patent Owner Sur-Reply
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`no better. The Board already found in the Institution Decision that a POSA would
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`not have modified Hon in view of Whittemore because Petitioner failed to
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`“sufficiently establish[] why a POSA would have attempted to modify Hon’s device
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`by looking to Whittemore.” (Paper 9 at 26.) The Board did not just disagree with
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`Petitioner’s position; the Board said there was no objective evidence supporting it.
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`Nothing in the Reply – where new evidence and arguments cannot be introduced –
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`can salvage this deficiency in Petitioner’s proposed Hon-Whittemore combination.
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`
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`Petitioner’s failure to show that the “wicked into contact with the electrical
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`resistance heater” limitation would have been obvious is sufficient for RAI to prevail
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`in this IPR. In addition, as RAI has explained, a second limitation in claims 1 and
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`15, the controller “regulating current flow … during draw” limitation, would also
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`not have been obvious in view of Hon or the proposed Hon-Brooks combination.
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`
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`Finally, RAI has shown that a number of dependent claims are patentable for
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`additional reasons. Petitioner’s Reply misses the mark on dependent claims 11, 14,
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`23, and 24, and the Reply fails to even address dependent claims 6 and 19,
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`erroneously suggesting that RAI did not separately argue these claims. (Reply at 25;
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`but see Patent Owner Response (“POR”) (Paper 16) at 59-61.)
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`
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`The Board should confirm the patentability of claims 1-7, 9, 11-19, 21, and
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`23-26 of the ’123 patent.
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`2
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`II. CLAIM CONSTRUCTION
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`Petitioner’s claim construction argument attempts to read the phrase “wicked
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`Patent Owner Sur-Reply
`IPR2020-01602
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`into contact with the electrical resistance heater” out of claims 1 and 15. Contrary to
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`Petitioner’s assertions, this claim language does not mean “the liquid is wicked and,
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`as a result, contacts the heater.” (Reply at 4.) And, unlike the broader description in
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`the specification, the claim does not recite that the aerosol-forming material is
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`“wicked or otherwise transferred into contact” with the heater. (See Ex. 1001 at
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`21:38-45; POR at 10-11.) The plain meaning of the “wicked into contact” claim
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`language is that the mixture is brought into contact with the electrical resistance
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`heater by wicking. (POR at 9-12; Ex. 2010 at ¶¶ 43-47.) Mr. Clemens’s deposition
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`testimony is consistent with both his declaration and the plain meaning of the claim
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`language. (See Ex. 1042 at 38:1-41:19; Ex. 2010 at ¶¶ 43-47.)
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`
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`Petitioner accuses RAI of reading a negative limitation into the claim, but this
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`has no merit. The words “wicked into contact” dictate that the mixture must be
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`brought into contact with the heater by wicking, not by high-speed airflow (as in
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`Hon) or some other means of liquid transport. In effect, Petitioner argues that so
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`long as wicking moves the mixture at any point or location in a smoking article, the
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`manner in which the liquid is actually brought into contact with the heater does not
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`matter. (See Reply at 2-4.) This cannot be correct because it ignores that the claim
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`explicitly requires that the mixture be “wicked into contact” with the heater.
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`3
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`Patent Owner Sur-Reply
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`Petitioner also attempts to broaden the scope of the claim language by pointing
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`
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`to the “comprising” transitional phrase in the preamble of claims 1 and 15. (Reply
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`at 3; Ex. 1001 at 32:50-51, 33:41-42.) But as the Federal Circuit has repeatedly
`
`stated, “‘[c]omprising’ is not a weasel word with which to abrogate claim
`
`limitations.” Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir.
`
`1998); Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007). The use
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`of “comprising” “does not render each limitation or phrase within the claim open-
`
`ended.” In re Varma, 816 F.3d 1352, 1362 (Fed. Cir. 2016). And the word
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`“comprising” “does not remove the limitations that are present.” Raytheon Co. v.
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`Sony Corp., 727 F. App’x. 662, 672 (Fed. Cir. 2018) (citations omitted). Petitioner’s
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`interpretation seeks to do just that – remove the “wicked into contact” limitation
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`from the claim – and should be rejected.
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`
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`Finally, Petitioner attempts to broaden the claim language by turning again to
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`the ’123 patent’s disclosure of an embodiment where the wicking material and the
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`heater do not contact one another. (See Reply at 4; see also POR at 9-12, 30-33.)
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`This remains a red herring – the positioning of the wick and the heater (whether in
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`contact or in proximity) does not alter the scope or meaning of the separate
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`requirement in claims 1 and 15 that the liquid mixture be “wicked into contact” with
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`the heater. Moreover, Mr. Clemens’s testimony is straightforward. Surface tension
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`4
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`Patent Owner Sur-Reply
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`is part of the mechanism of wicking, not an “additional, assistive, mechanism[] of
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`liquid transport” as Petitioner argues. (Reply at 4; see Ex. 1042 at 107:5-112:1.)
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`III. HON, BROOKS, AND WHITTEMORE DO NOT RENDER CLAIMS 1,
`2, 5, 7, 9, 11, 12, 14, 15, 18, 21, AND 23-26 OBVIOUS (GROUND 1)
`A. Claims 1 and 15: “the mixture … can be wicked into contact with
`the electrical resistance heater and volatilized”
`1. Hon Does Not Disclose That “the mixture … can be wicked
`into contact with the electrical resistance heater and
`volatilized”
`a) Hon Does Not Disclose That Its Liquid Mixture Comes
`Into Contact With Its Heating Element
`Petitioner’s case here suffers from a failure of proof. (See POR at 21-27.)
`
`Petitioner barely addressed this portion of the limitation in the Petition, simply
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`stating that Hon’s “wicked liquid mixture contacts the heating element” and citing
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`to one paragraph of its expert’s “explanation” of Hon. (See Petition at 48 (citing Fox
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`Decl. (Ex. 1003) at ¶ 153).) Mr. Fox, however, offered no explanation other than to
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`quote snippets of Hon regarding the ejection of droplets into the atomization cavity
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`and then imply that Hon states that those droplets contact Hon’s heating element.
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`5
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`Patent Owner Sur-Reply
`IPR2020-01602
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`(Ex. 1003 at ¶ 153.) But Hon does not explicitly disclose that its liquid contacts its
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`heating element, and both experts agree. (Ex. 1005 at 7; Ex. 2010 at ¶¶ 67, 70; Ex.
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`2011 at 94:22-95:8; Ex. 1042 at 74:6-10; see also POR at 22-26.) As the Federal
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`Circuit’s predecessor held long ago, “a reference in any event is good only for that
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`which it clearly and definitely discloses.” In re Hughes, 345 F.2d 184, 188 (CCPA
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`1965).
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`
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`In Reply, Petitioner tries to re-characterize Mr. Fox’s declaration, stating “As
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`Mr. Fox explained, a POSA would understand from this disclosure that the liquid
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`is ejected from the holes directly opposite the heater and ‘contacts’ the heating
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`element. Fox Decl. ¶153.” (Reply at 8 (emphasis added).) But that is not what
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`Mr. Fox’s declaration said, and Mr. Fox did not explain why “a POSA would
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`understand” anything. (See Ex. 1003 at ¶ 153.) His declaration testimony is just
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`ipse dixit. Petitioner’s and Mr. Fox’s speculation aside, there is no dispute here that
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`Hon says nothing about liquid contacting the heating element.
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`Given Hon’s complete lack of any express disclosure that its liquid contacts
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`the heating element, Petitioner’s argument appears instead to be based on
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`inherency. But Petitioner does not show that Hon inherently discloses that its
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`liquid mixture contacts its heating element. (See generally Petition (no mention of
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`inherency); Ex. 1003 (same).) To establish that a claim element is inherent in
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`the prior art, it must be shown that the missing descriptive matter was
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`6
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`

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`necessarily present in that art. MEHL/Biophile Int’l Corp. v Milgraum, 192 F.3d
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`Patent Owner Sur-Reply
`IPR2020-01602
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`1362, 1365-66 (Fed. Cir. 1999). Yet Petitioner and Mr. Fox made no attempt
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`to establish that Hon’s liquid mixture necessarily contacts Hon’s heating element.
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`See, e.g., Denso Corp. v. Beacon Navigation GmbH, IPR2013-00027, Paper 16
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`at 6, 8-10 (PTAB June 24, 2013) (denying request for rehearing of decision to deny
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`institution because “Petitioner made no argument in the Petition regarding
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`inherency”); Gracenote, Inc. v. Iceberg Indus., LLC, IPR2013-00551, Paper 6 at
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`31-32 (PTAB Feb. 28, 2014) (unexplained citations to reference are insufficient
`
`to demonstrate inherency). Moreover, inherency “may not be established by
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`probabilities or possibilities. The mere fact that a certain thing may result from a
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`given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745
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`(Fed. Cir. 1999).
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`RAI’s expert Mr. Clemens acknowledges, of course, that it is possible that
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`Hon’s liquid could contact the heating element. (Ex. 1042 at 73:10-74:10, 78:12-
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`79:11.) Mr. Clemens also made clear, though, that it is not a foregone conclusion
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`given both (i) what Hon describes about the construction of Hon’s atomization
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`cavity and (ii) details concerning temperature and pressure that Hon does not
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`disclose. (See id.; Ex. 2010 at ¶ 70.) Petitioner faults RAI for not proving that Hon
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`functions “without any liquid contacting the heating element.” (Reply at 9.) But
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`it is not RAI’s burden to prove the negative. It is Petitioner’s burden to show that
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`7
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`Hon expressly or inherently discloses that its liquid mixture contacts its heating
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`Patent Owner Sur-Reply
`IPR2020-01602
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`element, as claimed, and Petitioner has not done so.
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`
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`For this reason alone, Petitioner has not met its burden to show that claims 1
`
`and 15 are unpatentable in view of Hon.
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`b) Hon’s Liquid Mixture Is Not Transferred To Hon’s
`Heating Element By Wicking
`Even assuming arguendo that Hon’s liquid mixture contacts Hon’s heating
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`element, Hon’s liquid is not “wicked into contact with the electrical resistance
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`heater,” as required by claims 1 and 15. (See POR at 27-33; Ex. 2010 at ¶¶ 71-81.)
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`Petitioner’s only reply is to point back to its overbroad construction of “wicked into
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`contact,” and note that Hon wicks its liquid from the supply bottle to porous body
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`27. (See Reply at 10-11.) Petitioner’s construction of “wicked into contact” is
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`wrong, for the reasons discussed above. (See § II supra; see also POR at 9-12.)
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`In addition, Petitioner has no rebuttal to Mr. Clemens’s testimony that Hon’s
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`liquid would not enter the atomization cavity (where Hon’s heating element is)
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`absent the high-speed airflow that Hon describes. (See Ex. 2010 at ¶¶ 71-72; Reply
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`at 10-11.) In other words, the wicking into porous body 27 that Hon describes is not
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`even what causes the liquid to enter Hon’s atomization cavity. Hon’s statement
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`about how its liquid enters the atomization cavity is unequivocal: “The solution in
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`the porous body 27 is driven by the high-speed airflow of the ejection hole and
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`8
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`Patent Owner Sur-Reply
`IPR2020-01602
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`ejected in the form of droplets into the atomization cavity 10.” (Ex. 1005 at 7
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`(emphasis added); see also Ex. 1003 at ¶ 75.) This transport mechanism is not
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`wicking, or even wicking plus a gentle breeze or other “assistive mechanism.” The
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`liquid is “driven” by “high-speed airflow” and droplets are “ejected.” (Ex. 1005 at
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`7.) This is not wicking.
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`Petitioner, in fact, uses this very description in Hon in its Reply to insist that
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`this high-speed airflow/ejection action causes liquid to hit Hon’s heating element.
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`(See Reply at 6-9.) But Petitioner’s arguments regarding why it believes Hon’s
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`liquid contacts Hon’s heating element prove RAI’s point here – the liquid in Hon is
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`driven into the atomization cavity by the high-speed airflow/ejection action, a
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`fundamentally different transport mechanism that is not wicking. Petitioner cannot
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`have it both ways. Petitioner cannot argue that Hon’s high-speed airflow/ejection
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`action is what causes Hon’s liquid to contact the heating element, while at the same
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`time asserting that Hon’s liquid is “wicked into contact” with the heater.
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`For the above reasons, Petitioner has not shown that Hon describes or suggests
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`that “during draw, the mixture comprising the tobacco extract and the aerosol-
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`forming material can be wicked into contact with the electrical resistance heater …,”
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`as recited in independent claims 1 and 15.
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`9
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`Patent Owner Sur-Reply
`IPR2020-01602
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`2.
`A POSA Would Not Have Combined Hon With Whittemore
`After evaluating the Petition and Mr. Fox’s testimony, the Board found that
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`“we are not persuaded that Petitioner sufficiently establishes why a POSA would
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`have attempted to modify Hon’s device by looking to Whittemore.” (Paper 9 at 26.)
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`Nothing Petitioner states in its Reply changes this. (See Reply at 12-19.) Petitioner
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`leads off by claiming that both RAI and the Board have already agreed that a POSA
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`would have modified Hon with Whittemore as Petitioner proposes, but that is false.
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`Petitioner then turns back to its already-failed arguments on alleged motivations to
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`combine and the “Ruyan” device, but those arguments do not fare any better with
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`age. Patent Owner respectfully submits that the Board should reach the same
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`conclusion in the Final Written Decision as it did in the Institution Decision –
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`Petitioner has not “establish[ed] why a POSA would have attempted to modify
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`Hon’s device by looking to Whittemore.” (Paper 9 at 26; see id. at 25-28.)
`
`a)
`
`The Prior Proceedings Do Not Help Petitioner’s Case
`Here
`The Board has now held on three separate occasions that a POSA would not
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`have modified Hon to use the wire-wrapped wick configuration described in
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`Whittemore. See Paper 9 at 25-28; VMR Prods. LLC v. Fontem Holdings 1 B.V.,
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`IPR2015-00859, Paper 9 at 22-25 (PTAB Sept. 16, 2015); R.J. Reynolds Vapor Co.
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`v. Fontem Holdings 1 B.V., IPR2016-01268, Paper 63 at 15-19 (PTAB Dec. 19, 2017)
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`(the “1268 Decision”) (Ex. 1022). Petitioner nevertheless asks the Board to ignore
`10
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`Patent Owner Sur-Reply
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`the actual findings in those proceedings, and common sense, by arguing that RAI is
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`somehow bound by the testimony (i) of a different expert, (ii) given five years ago,
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`(iii) that the Board disagreed with and rejected, (iv) on a patent not at issue in this
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`IPR. (See Reply at 12-14.) Petitioner’s position has no merit, and there is no
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`authority that supports it.
`
`Petitioner cites Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267 (Fed. Cir.
`
`2017), to support its attack on Mr. Clemens’s credibility, but that case is inapposite.
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`In Ultratec, the “sworn inconsistent testimony” at issue was “recent sworn testimony
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`of the same expert addressing the same patents, references, and limitations at issue
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`in the IPRs.” Id. at 1272-73. Here, the expert is different, the patent at issue is
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`different, the limitations at issue are different, and the prior testimony of the other
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`person was five years earlier. (Compare Ex. 2010 with Ex. 1041.) Moreover, the
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`Board explicitly disagreed with the testimony of the earlier witness in IPR2016-
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`01268. See the 1268 Decision (Ex. 1022). Mr. Clemens’s credibility is not
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`undermined by this earlier testimony from someone else that the Board rejected. See
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`also Intel Corp. v. Qualcomm, Inc., IPR2018-01261, Paper 30 at 25-26 (PTAB Jan.
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`9, 2020) (noting that Ultratec was inapposite where allegedly conflicting testimony
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`was from different experts).
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Next, Petitioner again tries to persuade the Board that its earlier 1268 Decision
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`somehow supports Petitioner’s position in this IPR. (Reply at 14-15.) The Board
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`already addressed the 1268 Decision in its Institution Decision (at 27-28), stating:
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`We find that Whittemore’s wire-wrapped wick has little relation to the
`atomizer disclosed in Hon and that Petitioner has not shown sufficiently
`how or why Petitioner’s proposed substitution would improve Hon’s
`electronic atomization cigarette.
`(Paper 9 at 28.) Judge Kokoski was the lead author of both the 1268 Decision and
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`the Institution Decision in this IPR. (See Ex. 1022 at 1; Paper 9 at 1.) And yet,
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`incredibly, Petitioner tries to convince Her Honor that she misunderstood her own
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`opinion in the 1268 Decision that she authored. (See Reply at 14-15.) Petitioner
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`also misses the point. Even assuming arguendo that the proposed combination
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`would have been a simple substitution as Petitioner asserts, Petitioner “has not
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`shown sufficiently how or why Petitioner’s proposed substitution would improve
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`Hon’s electronic atomization cigarette.” (Paper 9 at 28 (emphasis added).) Nothing
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`in the 1268 Decision provides evidence showing that Petitioner’s proposed
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`substitution would have improved Hon’s device.
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`b)
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`The Board Correctly Determined That Petitioner Has
`Not Established Why A POSA Would Have Attempted
`To Modify Hon With Whittemore
`As the Board concluded in the Institution Decision, a POSA would not have
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`
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`been motivated to modify Hon to include the heater/wick design of Whittemore.
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`Patent Owner Sur-Reply
`IPR2020-01602
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`(See Paper 9 at 26-28; see also POR at 33-44; Ex. 2010 at ¶¶ 82-96.) Among other
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`things, the Board held:
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` “The Petition does not adequately explain, however, why a POSA
`would have made further modifications to Hon’s device by replacing
`Hon’s atomizer with Whittemore’s wick and heater.” (Paper 9 at 27.)
` “[N]either Petitioner nor Mr. Fox provide objective evidence to support
`the assertion that Whittemore’s wick and heater is ‘simpler and cheaper’
`than Hon’s atomizer, or that using Whittemore’s wick and heater in
`Hon would have reduced design and manufacturing costs, increased
`reliability, or increased the expectation of success.” (Id. (emphasis
`added).)
`Petitioner’s Reply cannot salvage what its Petition clearly failed to do.
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`
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`Petitioner argues that it provided objective evidence that a POSA would have
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`been motivated to improve Hon’s atomizer in its Petition, pointing first to the ’123
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`patent itself. (See Reply at 16.) This is classic hindsight, and the fact that
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`Petitioner’s Reply leads with this demonstrates the weakness of its position. The
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`law also precludes following Petitioner down this road. As the Federal Circuit has
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`held, “[t]he inventor’s own path itself never leads to a conclusion of obviousness;
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`that is hindsight. What matters is the path that the person of ordinary skill in the art
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`would have followed, as evidenced by the pertinent prior art.” Otsuka Pharm. Co.,
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`v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012); see also Univ. of Strathclyde
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`
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`13
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`Patent Owner Sur-Reply
`IPR2020-01602
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`v. Clear-Vu Lighting LLC, No. 2020-2243, 2021 WL 5114660, at *8 (Fed. Cir. Nov.
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`4, 2021) (quoting Otsuka Pharm., 678 F.3d at 1296).
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`
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`Petitioner’s assertions here also lack merit. The ’123 patent’s statement that
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`“[s]election of the power source and resistance heating elements can be a matter of
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`design choice, and will be readily apparent to one skilled in the art of design and
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`manufacture of electrical resistance heating systems” does not suggest any reason
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`why a POSA would have sought to modify Hon’s device by replacing its atomizer
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`with Whittemore’s wire-wrapped wick. (Ex. 1001 at 29:47-50; see also Ex. 2016 at
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`2016-0035-38 (ITC analyzing validity of different claims in the ’123 patent and
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`rejecting Petitioner’s similar “design choice” argument concerning heater limitation
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`that attempted to rely on the same statements in the ’123 patent specification).)
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`The remainder of Petitioner’s argument does not rely on prior art, but instead
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`on purported
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`shortcomings of
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`the “Ruyan device” and Petitioner’s
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`mischaracterizations of statements in an RJR teardown report about a “Ruyan
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`device.” (See Reply at 16-20.) As previously explained by RAI, Petitioner and
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`Mr. Fox’s reliance on “Ruyan” and the teardown report are both improper and
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`deficient. (See POR at 37-44.) For example, as previously noted, Petitioner’s expert
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`could not identify any evidence that the RJR teardown report would have been
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`available to a POSA as of the October 2006 priority date of the ’123 patent. (See
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`POR at 39-41, 38 n.1, 40 n.2; Ex. 2011 at 41:7-65:3.) In short, Petitioner’s
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`14
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`Patent Owner Sur-Reply
`IPR2020-01602
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`arguments in support of its proposed modification of Hon’s device rely on items that
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`Petitioner cannot show were even available to a POSA at the relevant time.
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`Moreover, even viewed in their best light, those arguments do not identify any
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`deficiency in Hon’s device or any reason a POSA would have sought to improve
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`Hon’s device, much less why a POSA would have done so with Whittemore. And
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`even if the Ruyan device could somehow be considered reflective of the Hon device,
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`the authors of the RJR teardown report actually praised the device—they did not
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`identify any deficiencies with it and actually found it to be an improvement over
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`previous technology. (See POR at 41-43.)
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`
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`Petitioner again points to cost as a factor, relying on Mr. Clemens’s
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`acknowledgement that a wire and a string (in Whittemore) are “low cost.” (See
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`Reply at 17.) But Mr. Clemens also testified that the wire and ceramic walls of
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`Hon’s atomization cavity are easy to fabricate and not expensive, and furthermore
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`that Hon’s device is also a simple configuration. (See Ex. 1042 at 116:13-122:4.)
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`Petitioner’s “simpler and cheaper” argument lacks evidence and does not hold water.
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`
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`Because Petitioner cannot show “that using Whittemore’s wick and heater in
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`Hon would have reduced design and manufacturing costs, increased reliability, or
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`increased the expectation of success” (Paper 9 at 27), Petitioner resorts to citing
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`cases in support of the notion that a “less efficient or less desirable” combination or
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`“disadvantages” of a given course of action does not preclude obviousness. (See
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`
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`15
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`Patent Owner Sur-Reply
`IPR2020-01602
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`Reply at 17-18.) But those legal principles cannot substitute for missing evidence,
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`which is Petitioner’s primary problem here. There is no objective evidence in the
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`record that modifying Hon’s device as proposed would have increased reliability or
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`the expectation of success, or even reduced costs in a meaningful way.
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`
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`For the above reasons, the Board should confirm in the Final Written Decision
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`its finding that Petitioner failed to “establish[] why a POSA would have attempted
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`to modify Hon’s device by looking to Whittemore.” (Paper 9 at 26.)
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`B. 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”
`1. Hon Does Not Disclose The Claimed Controller
`The parties do not dispute that all Hon describes is actuating current to its
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`
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`heating element after draw begins and no longer providing current to its heating
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`element after draw is over. (See Reply at 21.) Petitioner, however, is incorrect that
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`the ’123 patent defines “regulating current flow … during draw” as simply turning
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`current to the heater on and then off after draw is over as disclosed in Hon. (See
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`Reply at 21 (citing Ex. 1001 at 21:48-56