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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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`
`NJOY, LLC, and
`NJOY Holdings, INC.,
`Petitioners,
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`v.
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`JUUL Labs, INC.,
`Patent Owner
`________________
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`Case IPR2024-00536
`U.S. Patent No. 11,606,981
`________________
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`DECLARATION OF DR. JOHN COLLINS
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`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
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`JLI Ex. 2001
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`1.
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`I have been retained on behalf of JUUL Labs, Inc. (“Patent Owner”) in
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`connection with the above-captioned inter partes review (IPR). I have been retained
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`to provide my opinions in support of Patent Owner’s Preliminary Response. I am
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`being compensated for my time at the rate of $450 per hour. I have no interest in
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`the outcome of this proceeding.
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`2.
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`In preparing this declaration, I have reviewed and am familiar with the
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`Petition for IPR2024-00536, U.S. Patent No. 11,606,981 (“the ’981 patent”) and its
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`file history, and all other materials cited and discussed in the Petition (including the
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`declaration of Petitioner’s expert James Janet, Ph.D.), and cited and discussed in this
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`Declaration.
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`3.
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`The statements made herein are based upon my own knowledge and
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`opinion. This Declaration represents only the opinions I have formed to date. I may
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`consider additional documents as they become available or other documents that are
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`necessary to form my opinions. I reserve the right to revise, supplement, or amend
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`my opinions based on new information and on my continuing analysis.
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`I.
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`QUALIFICATIONS
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`4.
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`I have been employed since 2008 at the Consortia for Improving
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`Medicine with Innovation and Technology (“CIMIT”) and am currently the Director
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`of Innovation Platforms. CIMIT is a non-profit consortium of Boston’s leading
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`teaching hospitals and universities along with a growing network of national and
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`international affiliates. CIMIT is an operating unit within Massachusetts General
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`Hospital where I have a faculty appointment.
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`5. Much of my responsibility at CIMIT is to facilitate collaboration among
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`scientists, engineers, clinicians, and entrepreneurs to speed the discovery,
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`development, and implementation of medical innovations into practice. I focus on
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`assisting investigators in moving technologies from the lab into products and
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`services that improve patient care. My current focus has been on developing and
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`implementing CIMIT’s CoLab and GAITS platforms in collaboration with CIMIT’s
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`many collaborators.
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`6.
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`By way of example of CIMIT’s work, it was recently responsible for
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`the National Institute of Biomedical Imaging and Bioengineering (NIBIB)
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`sponsored RADx Tech program. The program has committed more than $1.5 Bn to
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`develop and accelerate the commercialization of innovative point of care SARS-
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`CoV-2 (COVID) tests into practice. That program supported more than 100
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`organization and resulted in 55 FDA authorized tests, including the 1st over-the-
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`counter test for home use, and the production of over 7 billion tests1.
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`1 See NIH Website, accessed 2/28/2024: https://www.nibib.nih.gov/covid-19/radx-
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`tech-program
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`7.
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`Also since 2008, I have been the Chief Technology and Innovation
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`Officer for Reed Collins, LLC. At Reed Collins I provide consulting as an expert
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`witness as well as to non-profits and as start-ups. Non-profit clients include EIT
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`Health in Europe, Oxford University in the UK, and Howard University in the US.
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`8.
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`I received a Ph.D. (1988) and M.S. (1982) in mechanical engineering
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`from the Massachusetts Institute of Technology (“MIT”), as well as a B.S. (1980) in
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`mechanical engineering, with a minor in economics, from Rensselaer Polytechnic
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`Institute (“RPI”). At MIT, I worked in the Fluids Lab under the direction of
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`Professors Asher Shapiro and Roger Kamm. My academic work focused on
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`mechanical engineering with a concentration on fluid dynamics and heat/mass
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`transfer, with my Ph.D. and M.S. theses applying these principles to pulmonary
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`dynamics. My M.S. thesis was on high frequency ventilation: at the time a novel
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`way to ventilate babies without over-pressurization of the lung, avoiding damage to
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`the lung during ventilator assist. My Ph.D. thesis was on analytical and numerical
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`modeling of forced exhalation from the lung. The results were a computational
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`model of the lung that allowed for more sophisticated diagnostics based on the
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`results of the simple Forced Expiration Pulmonary Function (“FEPF”) test.
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`9.
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`I now have over 40 years of product design, development, and
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`consulting experience covering a wide range of industries and products. Over that
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`time, I have had a consistent focus on medical devices and related technologies,
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`which includes my particular expertise in design, fluid mechanics and heat/mass
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`transfer. In addition to doing engineering work, my responsibilities have included
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`assembling and managing teams to develop new consumer, industrial and medical
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`products.
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`10.
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`I also have experience as an innovator and inventor. I am a named
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`inventor on more than twenty U.S. patents, with foreign counterparts in addition, on
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`new products and manufacturing processes. My CV is attached as Exhibit 2002 and
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`contains a list of my US Patents and all the publications that I have authored in the
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`last 10 years.
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`11. Prior to my time at CIMIT and Reed Collins LLC in 2008, I held
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`various leadership positions at technology and product development companies.
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`From 1982-1986, I worked at Booz, Allen & Hamilton, where I developed a number
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`of consumer and industrial products. After taking time to return to MIT and
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`complete my Ph.D., I was then employed by Arthur D. Little (“ADL”) until 1988. I
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`then joined ADL as a design engineer and helped form its medical products business.
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`I progressed to being responsible for the Technology and Innovation (“T&I”)
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`Directorate, with more than 250 staff as Sr Vice President until 2002.
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`12. From 2002-2008, I worked in close collaboration with CEO and owner,
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`Dr. Kenan Sahin, to form TIAX LLC from the resources of the ADL T&I
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`Directorate. TIAX is and was a privately held technology transformation
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`organization
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`focused on
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`advancing
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`and developing
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`technologies
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`for
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`commercialization in several core technology areas, including clean energy and
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`materials, health and wellness, appliances and HVAC systems, and enhanced
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`security. During my tenure at TIAX, part of which I served as president, the World
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`Economic Forum recognized TIAX as a Technology Pioneer in 2002 and as a New
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`Champion in 2007.
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`13. My experiences cover a broad technology base across a diverse set of
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`industries, including in the areas of medical devices, energy, consumer products,
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`emission technology for automobiles, and alternative smoking products.
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`14. By way of example, while at ADL, I worked with an operating unit
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`within Philip Morris USA (“PM USA”) called Chrysalis Technologies, Inc.
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`(“Chrysalis”) on an alternative smoking product that was battery-powered and puff-
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`activated. Also, while at ADL, and then continuing that work at TIAX, I continued
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`that work with Chrysalis on several related projects. These projects built off of and
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`utilized the prior capillary aerosol generator research and development at PM USA
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`and Chrysalis (the results of which are reflected in patents such as U.S. Pat. No.
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`5,743,251 to Howell et al.; U.S. Pat. No. 6,501,052 to Cox et al.; and U.S. Pat. No.
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`6,491,233 to Nichols) and applied it to efforts to atomize very low flow rates of
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`liquid fuel for efficient combustion. One application was for a low-power, fuel based
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`electric power generator (U.S. Pat. App. No. 2006/0093977 to Pellizzari I), and
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`another was for a clean emission “coldstart” fuel injector for automobiles (U.S. Pat.
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`No. 7,059,307 to Pellizzari II).
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`15. By way of further examples of products that I have worked on, I worked
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`with Baxter Healthcare to develop a blood/fluid warmer based on the analytical
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`optimization of the thermal performance of “conventional” resistance heating
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`technology; Bausch & Lomb to develop a microsurgical fluid delivery system that
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`allowed the surgeon to control the flow or pressure of irrigation fluid; and Johnson
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`& Johnson to develop Trocars and clip appliers for minimally invasive surgery.
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`16.
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`I have also performed services in numerous patent disputes as an
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`independent technical expert and consultant and as an expert witness. I have
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`consulted as an expert in matters involving the design of a variety of medical devices.
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`See Exhibit 2002 for a list of matters in which I have offered expert opinions or
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`testified in court in the last 4 years as well as all prior e-cigarette cases in which I
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`testified or offered expert opinions. In total, I have worked on, testified or offered
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`expert opinions in eight other e-cigarette matters.
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`II. LEGAL UNDERSTANDING
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`A. The Person of Ordinary Skill in the Art
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`17.
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`I understand that a person of ordinary skill in the relevant art at the time
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`of the invention (also referred to herein as “ordinary artisan”) is presumed to be
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`aware of all pertinent art, thinks along conventional wisdom in the art, and is a person
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`of ordinary creativity—not an automaton.
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`18.
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`I have been asked to consider the level of ordinary skill in the field that
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`someone would have had at the time the claimed invention was made. In deciding
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`the level of ordinary skill, I considered the following:
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`• the levels of education and experience of persons working in the
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`field;
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`• the types of problems encountered in the field; and
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`• the sophistication of the technology.
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`19. A person of ordinary skill in the art relevant to the ’981 patent at the
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`time of the invention would have a B.S. in mechanical engineering, electrical
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`engineering, or an equivalent degree, and either at least two years of experience
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`designing electro-mechanical consumer products or an advanced degree in
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`mechanical engineering, electrical engineering, or an equivalent field. More
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`education can substitute for practical experience and vice versa.
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`20.
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`I have reviewed the declaration of Dr. Janet, including his opinions
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`regarding the Person of Ordinary Skill in the Art. Dr. Janet provides a similar
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`definition of a POSITA: “at least a B.S. degree in Mechanical Engineering,
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`Electrical Engineering, Industrial Design, Product Design, or similar field, with at
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`least two years of industry experience in one of those fields, and such POSA would
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`have been familiar with electrically powered vaporizing articles, their components
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`or the underlying technologies.” Ex. 1005 ¶ 29.
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`21. My opinions set forth in this Declaration would be the same under
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`either my or Dr. Janet’s proposal.
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`22.
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`I am well-qualified to determine the level of ordinary skill in the art and
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`am personally familiar with the technology of the ’981 patent. I was a person of at
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`least ordinary skill in the art at the time of the priority date of the ’981 patent
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`regardless of which definition used. Regardless, if I do not explicitly state that my
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`statements below are based on this timeframe, all of my statements are to be
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`understood as an ordinary artisan would have understood something as of the priority
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`date of the ’981 patent.
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`B.
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`Legal Principles
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`23.
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`I am not a lawyer and will not provide any legal opinions. Though I
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`am not a lawyer, I have been advised that certain legal standards are to be applied
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`by technical experts in forming opinions regarding the meaning and validity of
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`patent claims.
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`1.
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`Obviousness
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`24.
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`I understand that to obtain a patent, a claimed invention must have, as
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`of the priority date, been nonobvious in view of prior art in the field. I understand
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`that an invention is obvious when the differences between the subject matter sought
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`to be patented and the prior art are such that the subject matter as a whole would
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`have been obvious at the time the invention was made to a person having ordinary
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`skill in the art.
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`25.
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`I understand that to prove that prior art, or a combination of prior art,
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`renders a patent obvious, it is necessary to: (1) identify the particular references that
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`singly, or in combination, make the patent obvious; (2) specifically identify which
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`elements of the patent claim appear in each of the asserted references; and (3) explain
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`how the prior art references could have been combined to create the inventions
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`claimed in the asserted claim. I further understand that the party advocating
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`obviousness has the burden to show both a motivation to combine the prior art
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`references, as well as a reasonable expectation of success in achieving the
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`combination.
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`26.
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`I understand that a patent composed of several elements is not proved
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`obvious merely by demonstrating that each of its elements was, independently,
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`known in the prior art, and that obviousness cannot be based on the hindsight
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`combination of components selectively culled from the prior art to fit the parameters
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`of the patented invention.
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`27.
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`I also understand that a reference may be said to teach away when a
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`person of ordinary skill, upon reading the reference, would be discouraged from
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`following the path set out in the reference, or would be led in a direction divergent
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`from the path that was taken by the applicant. Even if a reference is not found to
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`teach away, I understand its statements regarding preferences are relevant to a
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`finding regarding whether a skilled artisan would be motivated to combine that
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`reference with another reference.
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`2. My Understanding of Claim Construction Law
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`28.
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`I have been informed that patent claims are construed from the
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`viewpoint of a person of a ordinary artisan and that patent claims generally should
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`be understood consistent with their ordinary and customary meaning at the time of
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`the invention. A review of the patent claim language, the patent specification, and
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`its prosecution history are also necessary to determine the proper meaning and scope
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`of the term at issue.
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`29.
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`I have further been informed that in the specification and prosecution
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`history the patentee may define a claim term in a way that differs from the ordinary
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`and customary meaning. I understand that during prosecution of the patent before
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`the U.S. Patent and Trademark Office, the Applicant may make representations or
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`provide definitions of terms that may affect the scope of the patent claims. In
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`particular, the Applicant may, during the course of prosecution, limit the scope of
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`the claims to overcome prior art and/or disavow claim coverage by making clear and
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`unambiguous statements to that effect.
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`30.
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`I have been informed that a ordinary artisan may, among other things,
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`consider dictionaries, publications, other patents, and treatises (i.e., “extrinsic
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`evidence”). I understand that extrinsic evidence may generally not be relied on if it
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`contradicts the meaning of claim language provided by the intrinsic evidence, such
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`as express definitions given for terms in the specification.
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`3.
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`Secondary Considerations of Non-Obviousness
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`31.
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`I understand that one of the factual inquiries when determining the
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`obviousness of a patent is to consider objective evidence related to the issue of
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`obviousness, sometimes called “secondary considerations of non-obviousness” or
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`“objective indicia of non-obviousness.” I understand that such evidence can often
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`be probative of the issues of obviousness.
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`32.
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`I understand that examples of objective evidence include (1)
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`commercial success, (2) copying, (3) industry praise, (4) skepticism, (5) long-felt
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`but unsolved need, and (6) failure of others.
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`33.
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`I understand that there must be a nexus between the patented invention
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`and the evidence of secondary considerations. I further understand that there is a
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`presumption of such a nexus if the claims of the patent are coextensive with a product
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`or products that are the subject of the secondary considerations evidence. I further
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`understand that in order for a claim to be coextensive with a product, one must look
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`at the claims at the whole and not just the new claimed feature. In addition, the
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`claimed invention should not be merely a subcomponent of the products sold but
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`should encompass the entire apparatus.
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`III. OVERVIEW OF THE ’981 PATENT
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`34. The ’981 patent, titled “Vaporizer,” is directed to rechargeable
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`vaporizers or electronic cigarettes that consist of two primary components: a “battery
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`portion” and a “cartomizer.” ’981 patent (Ex. 1001) at Abstract, 2:42-49, 6:22-27.
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`The battery portion comprises an outer shell that forms “a battery segment and a
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`cartomizer receiving segment,” where the cartomizer receiving segment defines a
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`“chamber” for receiving the cartomizer body. Id. at 1:49-56, 2:8-13. The cartomizer
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`body includes several key elements: a volume for storing a vaporizable substance, a
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`wicking element, a heating element, a mouthpiece, and cartomizer electrical
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`contacts. These electrical contacts direct current to the heating element when the
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`cartomizer body is received by the chamber defined by the cartomizer receiving
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`segment. Id. at 2:13-38, 9:61-63. The vaporized fluid may mix with air to form an
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`aerosol as it travels from the heater through an inhalation tube to the user. Id. at
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`10:3-8.
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`35. The ’981 patent describes its invention as advancing the art of
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`electronic cigarettes and vaporizers by including charging contacts at the end of the
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`battery portion rather than within the chamber defined by the cartomizer receiving
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`segment. This allows the device to “be operated in its typical fashion during the
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`recharging of the battery.” Id. at 14:62-15:9.
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`36. Figure 1 shows important features of the ’981 patent:
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`Id. at Figs. 1, 1A-C. A battery portion 100 and a cartomizer 200 connect together to
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`comprise the complete vaporizer device. Id. at 5:63-65. The battery portion contains
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`a battery housing segment 102 at a distal end (relative to the user), and a cartomizer
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`receiving segment 104 at a proximal end. Id. at 5:65-6:2. An outer shell 106 is
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`commonly shared by the battery housing segment and the cartomizer receiving
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`segment. Id. at 6:2-11.
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`37. An internal reservoir defined by the body of the cartomizer holds a
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`vaporizable liquid. Id. at 9:49-51. The body includes a heating element and wick.
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`Id. at 9:61-63. The wick delivers the vaporizable fluid to the heating element, and
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`the heating element then vaporizes the fluid. Id. at 10:3-20.
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`38. Figure 8 depicts charging contacts 160 located at the bottom:
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`Id. at Fig. 8; 12:59-65. Locating the contacts here allows the battery to charge while
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`the device is operated. Id. at 14:62-15:8.
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`IV. OVERVIEW OF THE CITED PRIOR ART
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`1.
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`Liu783
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`39. U.S. Patent Publication No. 2014/0150783A1 (Ex. 1010) (“Liu783”) is
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`entitled “Electronic Cigarette Having a Connector for Magnetic Connection,” and
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`was filed as a PCT Application on December 5, 2012. Liu783 discloses an electronic
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`cigarette with a removable connector threaded into the device and a cartridge
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`magnetically attached to the connector. I understand that Liu783 is listed as a cited
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`reference on the face of the ’981 patent and therefore was already considered by the
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`patent office in issuing the ’981 patent.
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`40. Liu783 teaches that that electronic cigarettes at the time were typically
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`comprised of “a sucking rod and a power rod . . . connected together by threads,”
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`where the threads served as a “connecting means for realizing the connection of the
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`atomizing means” of the sucking rod “and the power rod.” Liu783 at [0002]. The
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`threads used in those devices were typically integrally formed and inseparable from
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`the sucking rod, which required replacement of the threads when the liquid smoke
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`contained in the sucking rod was depleted. Id. (“Since the sucking rod is an
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`inseparable entirety, it is required to replace the whole sucking rod when the liquid
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`smokie is used out, which results in relatively high manufacture and use cost of the
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`sucking rod.”).
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`41. To “facilitate the installation, detachment, and replacement” of the
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`sucking rod of its electronic cigarette, Liu783 describes “an electronic cigarette
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`having a connector for magnetic connection,” where “the connector has its one end
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`magnetically connected with the atomizer, and its other end detachably connected
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`with the power rod.” Id. at [0003]-[0004]. Figures 5, 7, and 8 respectively depict
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`the sucking rod (left), connector (middle), and power rod (right) as separate
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`components that are affixed together to form Liu783’s electronic cigarette:
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`Id. at Figs. 5, 7, 8.
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`42. Liu783’s three-piece device provides three main technical advantages:
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`(1) the atomizer and the connector are separate components that are “independently
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`manufactured;” (2) “it is only required to replace the atomizer instead of the
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`connector” when the atomizer is depleted, which saves on manufacturing and use
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`costs; and (3) “assembly and detachment of the atomizer and the connector becomes
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`very convenient.” Id. at [0019].
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`43. Liu783 explains that a combination of poles and seats are used to ensure
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`a robust connection between the sucking rod and the connector:
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`Id. at [0042]; Fig. 3. One set of electrical contacts is spring-loaded, and another set
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`includes a circumferential contact between the outer wall of the sucking rod and
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`interior wall of the connector. Id. at [0042] (“[T]he side wall of the first seat 51 and
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`the inner wall of the connecting casing 921 circumferentially contact with each other
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`to realize conduction therebetween, to thereby achieve corresponding conduction of
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`inner circuits of the atomizer 91 and the connector 92.”).
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`2.
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`Liu438
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`44. U.S. Patent Publication No. 2013/0319438 (Ex. 1013) (“Liu438”) is
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`entitled “Electronic Cigarette and Its Sucking Rod,” and was filed as a PCT
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`Application on June 5, 2012. Liu 438 discloses an electronic cigarette with a
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`connecting module affixed to a sucking rod that threads into a device.
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`45. Liu438 describes a sucking rod with a sucking cylinder “formed by
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`cutting a transparent or translucent elongated tube,” and a “liquid smoke
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`compartment” used for storing liquid located completely outside of an outer
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`decorative sleeve formed by the connecting module. Liu438 at [0045]-[0046].
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`Liu438 does not disclose magnets for removing the sucking cylinder from the
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`connecting module. The connecting module is part of the sucking rod 90 that threads
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`into the power rod 91:
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`JLI Ex. 2001, Page 18
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`Id. at [0043]; Fig. 13.
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`46. The connecting module in Liu438 is significantly different from
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`Liu783’s connector 92. Liu438’s connecting module provides threads for the
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`sucking rod, but is not designed to be removed from the sucking rod during regular
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`use.
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`3.
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`Tucker
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`47. U.S. Patent Publication No. 2013/0192623 (Ex. 1034) (“Tucker”) is
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`entitled “Electronic Cigarette,” was filed on January 31, 2013, and was published on
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`August 1, 2013. Tucker discloses an electronic cigarette with a window provided
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`on the cartomizer portion of the device.
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`48. Tucker’s electronic cigarette comprises a “replaceable cartridge”
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`coupled to a “reusable fixture” bound together by a “threaded connection 205” or by
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`a “snug-fit, detent, clamp, and/or clasp”:
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`
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`Tucker at [0033], Fig. 1.
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`49. Tucker’s electronic cigarette includes a liquid supply which “comprises
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`a liquid material and optionally a liquid storage medium 21 operable to store the
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`liquid material therein.” Id. at [0034]. This configuration allows the “wick 28” to
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`access liquid material in the liquid storage medium from a central location of the
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`liquid reservoir. Id. at [0035] (“A wick 28 is in communication with the liquid
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`material in the liquid supply reservoir 22 and in communication with the heater 14
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`such that the wick 28 disposes liquid material in proximate relation to the heater
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`14.”).
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`JLI Ex. 2001, Page 20
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`PUBLIC VERSION
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`4.
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`Thorens788
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`50. WO 2011/160788 A1 (Ex. 1004) (“Thorens788”) is entitled “An
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`improved Aerosol Generator and Liquid Storage Portion for Use with the Aerosol
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`Generator” and was filed on June 15, 2011. I understand that Thorens788 is listed
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`as a cited reference on the face of the ’981 patent and therefore was already
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`considered by the patent office in issuing the ’981 patent.
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`51. Thorens788 relates to a liquid storage portion for use with an aerosol
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`generator. Thorens788 at 1:5-6. Thorens788 discloses that one perceived
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`disadvantage of previous smoking utensils was that there was no way to determine
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`that the liquid fed into the container was suitable for use with the device. Id. at 1:13-
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`16. The object of Thorens788’s invention was to overcome this disadvantage, with
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`various mechanisms to distinguish one type of liquid storage portion (e.g., a
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`container) from another. Id. Thorens788 is focused on identifying the liquid storage
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`portion of a vaporizer and discloses no embodiments that have a mouthpiece.
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`52. Thorens788’s device has a size comparable to a conventional cigarette.
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`Id. at 11:8-10. The liquid storage portion of Thorens788’s device is opaque, which
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`limits degradation of the liquid by light. Id. at 7:26-27.
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`53. As shown below in the schematic of Figure 1, Thorens788’s device has
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`programmable electric circuitry 109:
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`JLI Ex. 2001, Page 21
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`PUBLIC VERSION
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`
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`Id. at Fig. 1; 12:10-12.
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`54. Thorens788’s Figure 7 depicts the electrical connectors 211, 213, 215
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`(which are connected to the conductive elements 201, 203, 205) to allow electrical
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`signals to pass between the processor 309, which may be mounted in circuitry 109,
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`and liquid storage portion 113:
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`JLI Ex. 2001, Page 22
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`PUBLIC VERSION
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`
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`Id. at Fig. 7; 13:19-29.
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`55. The components enclosed by the dashed line in Figure 7 are located in
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`a liquid storage portion 113. Id. The components located outside the dashed line
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`enclosure are located in the aerosol generating portion 100. Id. As a result, the
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`components within the dashed line enclosure may be replaced each time a liquid
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`storage portion 113 is removed from the aerosol generating portion 100 and replaced
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`with a new liquid storage portion 113.
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`5.
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`Thorens231
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`56. U.S. Patent No. 8,794,231 (Ex. 1002) (“Thorens231”) is entitled
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`“Electrically Heated Smoking System Having a Liquid Storage Portion” and was
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`filed on April 29, 2009. I understand that Thorens231 is listed as a cited reference
`
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`JLI Ex. 2001, Page 23
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`PUBLIC VERSION
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`on the face of the ’981 patent and therefore was already considered by the patent
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`office in issuing the ’981 patent.
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`57. Thorens231 teaches an electrically heated smoking system comprising
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`a shell and a replaceable mouthpiece. Id. at 1:51-52. Figs 1 to 3 of Thorens231 are
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`reproduced below with Figs 1 and 2 positioned such that their relative axial position
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`is as shown in Fig. 3. Figure 1 shows the shell 101 of an electrically heated smoking
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`system. Figure 2 shows the mouthpiece 201 of an electrically heated smoking
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`system. Figure 3 shows the electrically heated smoking system when the
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`mouthpiece is inserted into the shell:
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`Id. at Figs. 1-3; see also id. at 6:23-29.
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`JLI Ex. 2001, Page 24
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`PUBLIC VERSION
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`58. The shell 101 includes a battery 103, electric circuitry 105 and puff
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`detection system 107, a puff indicator 109, electrical connections 111, electrical
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`contacts 113, air inlets 115, and a lock mechanism 117. Id. at 6:34-40.
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`59. The mouthpiece 201 includes a liquid storage portion (cartridge 203)
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`containing liquid 205, a capillary wick 207, a heating coil 209, an air outlet 211 and
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`an aerosol forming chamber 213. Id. at 6:44-47. The distal end 207a of the capillary
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`wick 207 extends into the cartridge 203 and the proximal end 207b is surrounded by
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`the heating coil 209. Id. at 6:47-50. The mouthpiece also includes a cap 215 to
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`protect the proximal end capillary wick 207 and an insulation ring 217. Id. at 6:50-
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`53.
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`60. Like Thorens788, Thorens231 teaches a liquid storage portion that is
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`opaque, thereby limiting degradation of the liquid by light. Id. at 4:64-65.
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`61. The shell 101 and mouthpiece 201 are releasably locked together as
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`shown in Figure 3 by a lock mechanism 117. Id. at 6:57-58. When locked, the
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`heating coil 209 is in contact with the electrical contacts 113 in the shell. Id. at 6:58-
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`60.
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`62. Thorens231 teaches that when a user draws on the mouthpiece through
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`the air outlet 211, ambient air is drawn through air inlets 115 in the shell. Id. at 6:63-
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`65. The puff detection system 107 detects the puff and signals the controls to supply
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`a pulse of electricity to the heating coil and switches on the puff indicator 109. Id.
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`JLI Ex. 2001, Page 25
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`PUBLIC VERSION
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`at 6:65-67. The liquid in the second end 207b of the wick 207 is then vaporized by
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`the heating coil 209 to create a supersaturated vapor. Id. at 7:2-4. The vapor is
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`mixed with and is carried in the air flow from the air inlets 115 towards the aerosol
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`forming chamber 213. Id. at 7:7-9. In the aerosol forming chamber 213, the vapor
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`cools and condenses to form an inhalable aerosol, which is carried towards the outlet
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`211 and into the mouth of a user. Id. at 7:9-12. At the same time, the liquid being
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`vaporized is replaced by further liquid moving towards the second end 207b of wick
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`by capillary action. Id. at 6:62-7:12.
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`63. Thorens231 does not describe the specifics of the airflow path of the
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`assembled device. Instead, Thorens231 briefly notes that in one embodiment
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`ambient air is drawn through air inlets 115 of the shell and passes around the
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`cartridge 203 before reaching the proximal end 207b of the wick and the heating coil
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`209. Id. at 7:41-43. It also briefly describes an alternative embodiment in which the
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`cartridge is positioned downstream of the end 207b of the wick (now the distal end)
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`and the heating coil such that ambient air will be drawn through the air inlets 115
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`and then mix with vapor and pass around the cartridge on the way to the air outlet.
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`Id. at 7:43-49.
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`V. CLAIM CONSTRUCTION
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`64.
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`I understand that Dr. Janet and Petitioner have, for the purposes of this
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`IPR, construed the claim term “wicking element” as “any material through which
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`
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`JLI Ex. 2001, Page 26
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`PUBLIC VERSION
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`liquid may be drawn via capillary action.” Ex. 1005 ¶ 85. I agree with this claim
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`construction and have applied it in my analysis.
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`65.
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`I understand that Dr. Janet and Petitioner have, for the purposes of this
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`IPR, construed the claim term “heating element” as “conductive material shaped into
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`a wire, coil, or flat ribbon that generates heat in response to current.” Ex. 1005 ¶ 86.
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`I agree with this claim construction and have applied it in my analysis.
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`66.
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`I understand that Dr. Janet and Petitioner have, for the purposes of this
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`IPR, construed the claim term “window” as “opening or slit [on or proximate to] /
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`[in] the shell through which the cartomizer is viewed.” Ex. 1005 ¶ 87. I agree with
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`this claim construction and have applied it in my analysis.
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`67.
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`I understand that Dr. Janet and Petitioner implicitly suggest a claim
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`construction of “a battery portion having an outer shell and a
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