Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 1 of 16 PageID# 33804
`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 1 of 16 PagelD# 33804
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 2 of 16 PageID# 33805
`
`3
`
`1
`
`APPEARANCES: (Cont.)
`
`For the Defendants:
`
`Court Reporter:
`
`Michael Shamus Quinlan, Esq.
`Jones Day (OH-NA)
`901 Lakeside Avenue
`Cleveland, OH 44114-1190
`216-586-3939
`Fax: 216-579-0212
`Email: Msquinlan@jonesday.com
`
`Jason Todd Burnette, Esq.
`Jones Day (GA)
`1420 Peachtree Street, NE
`Suite 800
`Atlanta, GA 30309
`404-521-3939
`Email: Jburnette@jonesday.com
`
`David Michael Maiorana, Esq.
`Jones Day (OH)
`901 Lakeside Ave
`Cleveland, OH 44114
`216-586-3939
`Fax: 216-579-0212
`Email: Dmaiorana@jonesday.com
`
`Scott L. Wallace, RDR, RMR, CRR
`Official Court Reporter
`United States District Court
`401 Courthouse Square
`Alexandria, VA 2231-5798
`202-277-3739
`scottwallace.edva@gmail.com
`
`Proceedings reported by machine shorthand, transcript produced
`by computer-aided transcription.
`
`2
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`4
`
` C O N T E N T S
`
`
`
`EXAMINATIONS Page
`
`DIRECT EXAMINATION OF KELLY KODOMA
`BY MR. MAIORANA
`CROSS-EXAMINATION OF KELLY KODAMA
`BY MR. SOBOLSKI
`REDIRECT EXAMINATION OF KELLY KODAMA
`BY MR. MAIORANA
`RECROSS-EXAMINATION OF KELLY KODAMA
`BY MR. SOBOLSKI
`
`DIRECT EXAMINATION OF ERIC HUNT
`BY MS. BAKER
`CROSS-EXAMINATION OF ERIC HUNT
`BY MR. CHANG
`REDIRECT EXAMINATION OF ERIC HUNT
`BY MS. BAKER
`
` EXHIBITS
`
`DESCRIPTION Page
`
`7
`
`81
`
`117
`
`120
`
`122
`
`150
`
`163
`
`01:54PM
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Civil Action
`No. 1:20-cv-00393-LO-TCB
`
`June 10, 2022
`9:13 a.m.
`
`)))))))))))))
`
`ALTRIA CLIENT SERVICES, LLC,
`
` et al.,
`
` Plaintiffs,
`
` v.
`
`RAI STRATEGIC HOLDINGS, INC.,
` et al.,
`
` Defendants.
`
` DAY 2 - MORNING SESSION
`TRANSCRIPT OF JURY TRIAL PROCEEDINGS
`BEFORE THE HONORABLE LEONIE M. BRINKEMA,
`UNITED STATES DISTRICT COURT JUDGE
`
`APPEARANCES:
`
`For the Plaintiffs:
`
`Maximilian Antony Grant, Esq.
`Latham & Watkins LLP (DC)
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Max.grant@lw.com
`
`Clement Joseph Naples, Esq.
`Latham & Watkins, LLP
`885 Third Avenue 25th Floor
`New York, NY 10022
`212-906-1200
`Email: Dement.naples@lw.com
`
`Gregory K. Sobolski, Esq.
`Latham & Watkins, LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`202-637-2267
`Email: Max.grant@lw.com
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`APPEARANCES: (Cont.)
`
`For the Plaintiffs:
`
`For the Defendants:
`
`Thomas W. Yeh, Esq.
`Latham & Watkins LLP (CA)
`355 South Grand Avenue
`Suite 100
`Los Angeles, CA 90071-1560
`213-891-8050
`Email: Thomas.yeh@lw.com
`
`Matthew John Moore, Esq.
`Latham & Watkins LLP (DC)
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Matthew.moore@lw.com
`
`Dale Chang, Esq.
`Latham & Watkins LLP (CA)
`355 South Grand Avenue
`Suite 100
`Los Angeles, CA 90071-1560
`213-891-8050
`Email: Dale.chang@lw.com
`
`Elizabeth Stotland Weiswasser, Esq.
`Weil Gotshal & Manges, LLP (NY-NA)
`767 5th Avenue
`New York, NY 10153
`212-310-8000
`Email: Elizabeth.weiswasser@weil.com
`
`Charles Bennett Molster, III, Esq.
`The Law Offices of Charles B.
`Molster III, PLLC
`2141 Wisconsin Avenue NW, Suite M
`Washington, DC 20007
`703-346-1505
`Email: Cmolster@molsterlaw.com
`
`Stephanie Ethel Parker, Esq.
`Jones Day (GA)
`1420 Peachtree Street, NE
`Suite 800
`Atlanta, GA 30309
`404-521-3939
`Email: Sparker@jonesday.com
`
`1 of 69 sheets
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`Page 1 to 4 of 177
`
`06/11/2022 11:06:55 AM
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 3 of 16 PageID# 33806
`57
`
`59
`
`How did you decide whether or not any of these claims was
`
`So I reviewed and analyzed the prior art, again,
`
`primarily the patents that existed before the 2000 -- December
`
`2010 date of the '911 Patent, and analyzed their features and
`
`their functions and their claims and compared it to the '911
`
`All right. You mentioned the Han Patent. Let's talk
`
`about that. And, for the record, that's RX 972.
`
`Were you in the courtroom the other day when I talked
`
`Yes. That's correct.
`
`And is the Han Patent one of the pieces of prior art that
`
`It is, yes.
`
`And why is it called the Han Patent?
`
`So the inventor, his last name is Han.
`
`Now, what's on the left side of this demonstrative,
`
`10:17AM 1 Q.
`10:17AM 2
`invalid as obvious?
`10:17AM 3 A.
`10:18AM 4
`10:18AM 5
`10:18AM 6
`10:18AM 7
`claims.
`10:18AM 8 Q.
`10:18AM 9
`10:18AM 10
`10:18AM 11
`with Dr. Abraham about the Han Patent?
`10:18AM 12 A.
`10:18AM 13 Q.
`10:18AM 14
`you looked at?
`10:18AM 15 A.
`10:18AM 16 Q.
`10:18AM 17 A.
`10:18AM 18 Q.
`10:18AM 19
`Mr. Kodama?
`10:18AM 20 A.
`10:18AM 21
`10:18AM 22
`10:18AM 23
`10:18AM 24
`10:18AM 25
`
`MR. MAIORANA: For the record, the Han counterpart is
`
`RX 1363.
`
`THE COURT: All right.
`
`Now, Mr. Kodama, where did the figure in the bottom right
`
`So that's Figure 1 from the Han Patent, and what I've
`
`highlighted in different colors is the different components from
`
`that Figure 1. So you can see item 8 that's highlighted in
`
`orange is the atomizer, item 9 that's highlighted in blue is the
`
`liquid storage, and the item that's in red is the air channel
`
`10:20AM 1
`10:20AM 2
`10:20AM 3
`10:20AM 4
`BY MR. MAIORANA:
`10:20AM 5 Q.
`10:20AM 6
`corner of this demonstrative come from?
`10:20AM 7 A.
`10:20AM 8
`10:20AM 9
`10:20AM 10
`10:20AM 11
`10:20AM 12
`and also the area in the mouthpiece.
`10:20AM 13 Q.
`10:20AM 14 A.
`10:20AM 15 Q.
`10:20AM 16 A.
`10:20AM 17
`10:21AM 18
`10:21AM 19
`activated, gets hot, and it generates aerosol from the liquid.
`10:21AM 20 Q.
`10:21AM 21
`10:21AM 22
`disclose an aerosol-forming chamber?
`10:21AM 23 A.
`10:21AM 24
`10:21AM 25
`
`What's an atomizer?
`
`An atomizer is what creates the aerosol.
`
`How does that work?
`
`Typically there's a heater inside of the atomizer and
`
`then there's some sort of liquid source and capillary material
`
`that provides the liquid to the heater, and the heater is
`
`All right. Let's talk about the claim requirement
`
`labeled A in Claim 1 of the '911 Patent. Does the Han Patent
`
`It does, yes. So on the left-hand side you can see the
`
`Claim 1. Again, it says "aerosol-forming chamber" as
`
`requirement A, and on the right-hand side, those three
`
`So the left side is what you're familiar with -- again,
`
`that's Claim 1 -- and what I've done is I've broken down the
`
`requirements with letters just to make it a little more clear so
`
`you can see letter A, B, C, and D, and I added those to the
`
`claim language. And on the right-hand side you can see just the
`
`title page of the Han Patent.
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`58
`
`60
`
`Please tell the jury generally, what does the Han Patent
`
`So the Han Patent discloses an electronic cigarette and
`
`Now, have you compared the '911 Patent claims to the
`
`Yes, I have.
`
`All right. Let's talk about the introductory language in
`
`Claim 1. Does the Han patent disclose "an aerosol-generating
`
`10:18AM 1 Q.
`10:19AM 2
`disclose?
`10:19AM 3 A.
`10:19AM 4
`also discloses a leakage prevention method.
`10:19AM 5 Q.
`10:19AM 6
`disclosures of the Han Patent?
`10:19AM 7 A.
`10:19AM 8 Q.
`10:19AM 9
`10:19AM 10
`system for heating a liquid aerosol-forming substrate"?
`10:19AM 11 A.
`10:19AM 12
`10:19AM 13
`10:19AM 14
`cigarette." So I've compared those two.
`10:19AM 15 Q.
`10:19AM 16
`international counterpart to the Han U.S. patent?
`10:19AM 17 A.
`10:19AM 18
`10:19AM 19
`10:20AM 20
`U.S. patent.
`10:20AM 21 Q.
`10:20AM 22
`those are from the Chinese counterpart?
`10:20AM 23 A.
`10:20AM 24
`10:20AM 25
`
`Right. So that's the preamble for the Claim 1, and on
`
`the right-hand side you can see -- excuse me, you can see the
`
`words that I've highlighted that said "aerosol electronic
`
`Now, we talked about this Han U.S. patent. Is there an
`
`There is. There's a Chinese version of the patent. We
`
`used images from the Chinese patent because they were of much
`
`better quality, but they're the same images as what's in the Han
`
`So the pictures of the Han device we see in the slides,
`
`They're from the Chinese counterpart, yes, but they're
`
`the same as what's shown in the U.S. patent. They're just much
`
`better quality.
`
`components that I pointed out to you before, the atomizer liquid
`
`storage and air channel, those formulate an aerosol-forming
`
`10:21AM 1
`10:21AM 2
`10:21AM 3
`chamber, which I've sort of surrounded in a red box.
`10:21AM 4 Q.
`10:21AM 5
`10:21AM 6
`all the requirements in 1-B?
`10:21AM 7 A.
`10:21AM 8 Q.
`10:21AM 9 A.
`10:21AM 10
`10:21AM 11
`10:22AM 12
`10:22AM 13
`10:22AM 14
`discussing and disclosing a way to capture condensate.
`10:22AM 15 Q.
`10:22AM 16
`that's claimed in the '911 Patent?
`10:22AM 17 A.
`10:22AM 18 Q.
`10:22AM 19 A.
`10:22AM 20
`10:22AM 21
`10:22AM 22
`10:22AM 23
`10:22AM 24
`designed to capture the condensate.
`10:22AM 25 Q.
`
`Let's talk about the claim requirement you've labeled as
`
`B in Claim 1 of the '911 Patent. Does the Han Patent disclose
`
`It does, yes.
`
`What do we see on the right-hand side of this slide?
`
`So, again, on the left-hand side I've highlighted claim
`
`B, and on the right-hand side is the Han Patent. You can see
`
`from the patent specification it talks about fine drips which
`
`are then condensed into bigger drips and then those drips will
`
`fall into the cavity, so, again, they're -- the Han Patent is
`
`Does the Han Patent disclose the leakage prevention means
`
`Yes, it does.
`
`What structure forms the cavity in the Han Patent?
`
`So there's a cavity that's around the mouth hole that's
`
`in the mouthpiece, and I've highlighted that in this Figure 1.
`
`You can see in yellow. So, again, it's very similar to what we
`
`saw in Figure 6 of the '911 Patent, but there's a cavity there
`
`that's surrounding the mouthpiece air hole, and that's what's
`
`Is Hahn's cavity configured to prevent or reduce leakage
`
`15 of 69 sheets
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`Page 57 to 60 of 177
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`06/11/2022 11:06:55 AM
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 4 of 16 PageID# 33807
`61
`
`63
`
`of liquid aerosol condensate from the aerosol-generating
`
`Yes, it is. That cavity is designed to capture the
`
`Does Hahn's cavity collect liquid condensate formed from
`
`It does, yes. The language, they're talking about the
`
`smaller drips forming the larger drips, condensing into larger
`
`What's aerosol-forming substrate?
`
`Aerosol-forming substrate is just e-liquid, basically, so
`
`10:22AM 1
`10:22AM 2
`systems?
`10:22AM 3 A.
`10:22AM 4
`condensate.
`10:22AM 5 Q.
`10:23AM 6
`the aerosol-forming substrate?
`10:23AM 7 A.
`10:23AM 8
`10:23AM 9
`drips, and being captured in the cavity.
`10:23AM 10 Q.
`10:23AM 11 A.
`10:23AM 12
`the liquid that's being vaporized.
`10:23AM 13 Q.
`10:23AM 14
`10:23AM 15
`discloses a cavity, right?
`10:23AM 16 A.
`10:23AM 17 Q.
`10:23AM 18
`an annular groove can be a blind hole, right?
`10:23AM 19 A.
`10:23AM 20 Q.
`10:23AM 21 A.
`10:23AM 22 Q.
`10:23AM 23
`10:23AM 24
`invalidity opinions?
`10:23AM 25 A.
`
`All right. Let's look at limitation C in Claim 1 of the
`
`'911 Patent, Claim 1. Now, you testified earlier that Han
`
`That's correct.
`
`And you understand that Philip Morris's position is that
`
`I understand that is, yes.
`
`Do you agree with that?
`
`I do not.
`
`But if the '911 Patent claims cover an annular groove,
`
`like Philip Morris contends, how would that affect your
`
`So, again, the Han Patent reveals an annual groove, or
`
`Yes.
`
`So, if you were to use those eyeballs on your slide,
`
`So the eyeballs would be sort of where the B1 letter is,
`
`What does that indicate?
`
`That was just trying to indicate that the blind holes are
`
`not visible, meaning the closed end would not be visible on the
`
`If Hahn's cavity is considered a blind hole as Philip
`
`Morris contends, does that blind hole have a longitudinal
`
`direction extending between the open end and the closed end that
`
`It does, yes, so the longitudinal direction would travel
`
`from the open end to the closed end, so basically on the screen
`
`Now, let's look at claim limitation D in Claim 1. Does
`
`Han disclose all the requirements of limitation D of Claim 1 of
`
`10:24AM 1
`eyeballs looking at the ends of devices?
`10:24AM 2 A.
`10:24AM 3 Q.
`10:25AM 4
`where would they be pointing?
`10:25AM 5 A.
`10:25AM 6
`and they'd be pointing to the left.
`10:25AM 7 Q.
`10:25AM 8 A.
`10:25AM 9
`10:25AM 10
`right-hand side of the mouthpiece.
`10:25AM 11 Q.
`10:25AM 12
`10:25AM 13
`10:25AM 14
`you just identified?
`10:25AM 15 A.
`10:25AM 16
`10:25AM 17
`it would be along the axis from the left to the right.
`10:25AM 18 Q.
`10:25AM 19
`10:25AM 20
`the '911 Patent?
`10:25AM 21 A.
`10:25AM 22
`requirement for the size of the blind hole.
`10:25AM 23 Q.
`10:26AM 24
`hole that is in the mouthpiece?
`10:26AM 25 A.
`
`It doesn't. Han does not have any dimensional
`
`So Han doesn't say anything about the size of the blind
`
`It doesn't have any specific dimensions for that blind
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`62
`
`64
`
`cavity, but if we make the assumption that Philip Morris's
`
`contention that the blind hole is the same as annular groove,
`
`you can see that in Figure 1 on the Han Patent it reveals also a
`
`blind hole, which would meet the limitation of -- it would tie
`
`If Hahn's cavity that we see on the screen here is
`
`considered a blind hole, as Philip Morris contends, does that
`
`It does, yes. On the left-hand side of Figure 1 would be
`
`And if Hahn's cavity is considered a blind hole, as
`
`10:23AM 1
`10:23AM 2
`10:23AM 3
`10:24AM 4
`10:24AM 5
`in with the limitation requirement highlighted in C there.
`10:24AM 6 Q.
`10:24AM 7
`10:24AM 8
`blind hole have an open end as required by the claim?
`10:24AM 9 A.
`10:24AM 10
`the open end of the cavity, or blind hole.
`10:24AM 11 Q.
`10:24AM 12
`Philip Morris contends, does that blind hole have a closed end
`10:24AM 13
`that's required by the claim?
`10:24AM 14 A.
`10:24AM 15
`be the closed end of the blind hole.
`10:24AM 16 Q.
`10:24AM 17
`couple of eyes looking at the --
`10:24AM 18 A.
`10:24AM 19 Q.
`10:24AM 20 A.
`10:24AM 21 Q.
`10:24AM 22 A.
`10:24AM 23 Q.
`10:24AM 24
`so let me ask that again.
`10:24AM 25
`
`It does. So on the right-hand side of that image would
`
`Now, you remember Dr. Abraham had some slides with a
`
`Oh, right.
`
`-- at the ends of device?
`
`Yes.
`
`Don't talk when I'm talking --
`
`Sorry.
`
`-- because the court reporter will throw something at me,
`
`Do you remember Dr. Abraham had some slides with some
`
`Now, you mentioned earlier that you had designed
`
`Yes.
`
`During your work designing e-cigarettes, have you ever
`
`Blind cavities, annular grooves, blind holes, yes.
`
`Have you had experience in determining how you might size
`
`10:26AM 1
`hole.
`10:26AM 2 Q.
`10:26AM 3
`e-cigarettes, right?
`10:26AM 4 A.
`10:26AM 5 Q.
`10:26AM 6
`worked on designing blind holes in those devices?
`10:26AM 7 A.
`10:26AM 8 Q.
`10:26AM 9
`some of those parts of an e-cigarette in your work?
`10:26AM 10 A.
`10:26AM 11
`10:26AM 12
`10:26AM 13
`10:26AM 14
`10:26AM 15
`10:26AM 16
`10:26AM 17
`10:26AM 18
`10:26AM 19
`10:26AM 20
`10:27AM 21
`10:27AM 22
`10:27AM 23
`10:27AM 24
`10:27AM 25
`
`Sure. So when you start with -- if you -- remember we
`
`have to look at this from the state of the art in 2010, right,
`
`so the products that were on the market were typically called
`
`cigalikes, right? They were trying to sort of simulate or look
`
`like cigarettes, so they had a similar diameter and a similar
`
`look. A lot of times the mouthpiece would be sort of the brown
`
`color that's on the filter of a cigarette and the white portion
`
`would be the battery.
`
`And also they had similar diameters, as I mentioned.
`
`Typical diameters for a cigarette are anywhere from 7, 8, 9
`
`millimeters in diameter, so if we take that as a starting point,
`
`the outer diameter being, let's say, 7 millimeters, and then we
`
`have to add in all these walls, right, the outer walls, two
`
`outer walls, the two inner walls that form the mouth hole, the
`
`actual mouth hole, it would be obvious to end up with a
`
`dimensional range for the cavity or the blind hole of 0.5 to
`
`06/11/2022 11:06:55 AM
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`Page 61 to 64 of 177
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`16 of 69 sheets
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 5 of 16 PageID# 33808
`65
`
`67
`
`Now, before the '911 Patent, was there a patent that
`
`There was, yes, there was a Shimizu patent.
`
`And what does the --
`
`MR. MAIORANA: For the record, that's RX 1224.
`
`10:27AM 1
`1 millimeter.
`10:27AM 2 Q.
`10:27AM 3
`disclosed a preferred size for a smokeless cigarette?
`10:27AM 4 A.
`10:27AM 5 Q.
`10:27AM 6
`10:27AM 7
`BY MR. MAIORANA:
`10:27AM 8 Q.
`10:27AM 9 A.
`10:27AM 10
`10:27AM 11
`10:27AM 12
`10:27AM 13
`be -- to look like an actual cigarette.
`10:28AM 14 Q.
`10:28AM 15
`invalidity of Claim 1?
`10:28AM 16 A.
`10:28AM 17
`10:28AM 18
`10:28AM 19
`10:28AM 20
`2010, December.
`10:28AM 21 Q.
`10:28AM 22
`10:28AM 23
`respect to validity?
`10:28AM 24 A.
`10:28AM 25 Q.
`
`What does Shimizu disclose?
`
`Shimizu discloses a preferable outer diameter for the
`
`device of 7 to 15 millimeters, and the reason why Shimizu
`
`mentions that to make the device more portable and also to make
`
`the device sort of replace cigarettes, meaning to look like or
`
`Please summarize for the jury your opinion regarding
`
`So the '911 Patent is invalid. It would have been
`
`obvious to a person of skill in the art or a person in industry
`
`that the prior art existed that would make each one of these
`
`claim requirements obvious at the time of the filing date of
`
`Now, we talked about -- so far on invalidity, we've
`
`talked about Claim. Did you look at the dependent claims with
`
`Yes, I did.
`
`All right. Let's look at dependent Claim 11. What
`
`that's revolved. There's also, more specifically, something
`
`called a torus, which is really what a doughnut would be shaped
`
`Does Dr. Abraham contend that the Vuse Solo product has a
`
`He does, yes.
`
`And what part of the mouthpiece is he talking about?
`
`So the annual groove that's in the mouthpiece he contends
`
`10:29AM 1
`10:29AM 2
`10:30AM 3
`like, meaning that's a round cross-section that's been revolved.
`10:30AM 4 Q.
`10:30AM 5
`toroidal shape?
`10:30AM 6 A.
`10:30AM 7 Q.
`10:30AM 8 A.
`10:30AM 9
`is a toroidal shape.
`10:30AM 10 Q.
`10:30AM 11
`10:30AM 12
`does the Han Patent disclose that?
`10:30AM 13 A.
`10:30AM 14
`10:30AM 15
`10:30AM 16
`10:30AM 17
`10:30AM 18
`would be interpreted to be a cavity.
`10:30AM 19 Q.
`10:31AM 20
`skill in the art?
`10:31AM 21 A.
`10:31AM 22 Q.
`10:31AM 23
`10:31AM 24
`Claim 1?
`10:31AM 25 A.
`
`So if you assume for purposes of your analysis that the
`
`annular groove in the Solo G2 product could be a toroidal shape,
`
`Yes, it does. So you can see the shape of the cavity
`
`shown on the right-hand side that's highlighted in yellow on
`
`Figure 1. That is -- in other figures for Han it shows the
`
`device as being round, so, again, this cavity would be similar
`
`to what's shown in Figures 5 and 6 in the '911 Patent, and that
`
`Would Claim 13 have been obvious to a person of ordinary
`
`It would, yes.
`
`Let's talk about dependent Claim 2. What additional
`
`requirement does dependent Claim 2 of the '911 Patent add to
`
`So dependent Claim 2 adds the requirement of having a
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`66
`
`68
`
`additional requirement does dependent Claim 11 add to
`
`So, again, as we talked about, these are all the
`
`dependent claims, right, so they require all of the requirements
`
`of Claim 1 and then they add on additional feature or
`
`technology. For Claim 11, it's adding in the requirement of
`
`Does Han disclose an electric heater?
`
`It does. Han is an electric cigarette, and the atomizer
`
`has an electric heater inside of it. Han calls it an electric
`
`heating rod, which I've highlighted over on the right-hand side,
`
`Would Claim 11 have been obvious to a person of ordinary
`
`Yes, it would have.
`
`Let's talk about dependent Claim 13. What additional
`
`10:28AM 1
`10:28AM 2
`independent Claim 1?
`10:28AM 3 A.
`10:28AM 4
`10:28AM 5
`10:28AM 6
`10:28AM 7
`electric heater.
`10:29AM 8 Q.
`10:29AM 9 A.
`10:29AM 10
`10:29AM 11
`10:29AM 12
`but it's the same thing, yeah, as an electric heater.
`10:29AM 13 Q.
`10:29AM 14
`skill in the art?
`10:29AM 15 A.
`10:29AM 16 Q.
`10:29AM 17
`requirement does dependent Claim 13 add to independent Claim 1?
`10:29AM 18 A.
`10:29AM 19
`being a toroidal shape.
`10:29AM 20 Q.
`10:29AM 21 A.
`10:29AM 22
`10:29AM 23
`10:29AM 24
`10:29AM 25
`
`So dependent Claim 13, adds the requirement of the cavity
`
`What's toroidal shape?
`
`So we talked about annual groove, and maybe I should back
`
`up and explain a little bit what that means and relate that to
`
`toroidal. So "annular groove" basically means sort of a ring
`
`shape, right, so a shape that's round or revolved around an
`
`axis, and "toroidal" is similar, it's the same sort of shape
`
`capillary material. Remember we talked about capillary action,
`
`and capillary materials, and in this case it's saying to add a
`
`capillary material, which means a material that would be sort of
`
`spongelike, a material that would actually absorb material
`
`10:31AM 1
`10:31AM 2
`10:31AM 3
`10:31AM 4
`10:31AM 5
`inside the cavity.
`10:31AM 6 Q.
`10:31AM 7
`his cavity?
`10:31AM 8 A.
`10:31AM 9 Q.
`10:31AM 10
`used capillary materials in a cavity of an e-cigarette?
`10:31AM 11 A.
`10:31AM 12
`10:31AM 13
`10:31AM 14
`10:31AM 15
`10:31AM 16
`BY MR. MAIORANA:
`10:31AM 17 Q.
`10:31AM 18 A.
`10:31AM 19
`10:32AM 20
`10:32AM 21
`10:32AM 22
`10:32AM 23
`10:32AM 24
`material inside of the cavity.
`10:32AM 25 Q.
`
`Does Han disclose anything about capillary material in in
`
`It does not.
`
`Did you see any patents prior to the '911 Patent that
`
`Yes, there's an aerosol-generating system patent from
`
`Murphy that shows an absorbant material that's inside the
`
`cavity.
`
`MR. MAIORANA: And for the record, Murphy is RX 1422.
`
`THE COURT: All right.
`
`And what technology does in Murphy disclose, Mr. Kodama?
`
`So it's an aerosol-generating system, and the image I
`
`show you on the right-hand side has some wording from the
`
`specification, so there's an absorbant pad, which I highlighted
`
`in yellow, which would be a capillary material, and that's
`
`inside what's called the second passageway in the patent and
`
`that's a cavity. So it discloses an absorbant pad or capillary
`
`What's the purpose of the capillary material in Murphy's
`
`17 of 69 sheets
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`Page 65 to 68 of 177
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`06/11/2022 11:06:55 AM
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 6 of 16 PageID# 33809
`69
`
`71
`
`So the purpose of the capillary material -- again, it's
`
`Condensate?
`
`Condensate, yes.
`
`And explain again what condensate is?
`
`Again, condensate is the suspended air particles from the
`
`aerosol that gather into larger and larger drops as it hits
`
`And what does the Murphy patent say the capillary
`
`So it mentions a cellulose acetate. This was a fairly
`
`common material used for -- it's actually used in cigarette
`
`filters, so it would a material that would be very common to
`
`Does the '911 Patent specification say anything about
`
`It does. It also mentions the one material example being
`
`10:32AM 1
`device?
`10:32AM 2 A.
`10:32AM 3
`like a sponge -- is to capture and trap condensate.
`10:32AM 4 Q.
`10:32AM 5 A.
`10:32AM 6 Q.
`10:32AM 7 A.
`10:32AM 8
`10:32AM 9
`colder surface.
`10:32AM 10 Q.
`10:32AM 11
`material may be made of?
`10:32AM 12 A.
`10:32AM 13
`10:32AM 14
`10:32AM 15
`designers or engineers of electronic cigarettes and cigarettes.
`10:32AM 16 Q.
`10:33AM 17
`what materials could be used for the capillary?
`10:33AM 18 A.
`10:33AM 19
`cellulose acetate, similar to Murphy.
`10:33AM 20 Q.
`10:33AM 21
`10:33AM 22
`Hahn's electronic cigarette?
`10:33AM 23 A.
`10:33AM 24
`10:33AM 25
`
`Would a person of ordinary skill in the art have been
`
`motivated to add Murphy's capillary material to the cavity in
`
`Yes, Han has some liquid prevention method, right,
`
`leakage prevention, but the addition of an absorbant material or
`
`capillary material would provide additional storage or
`
`And was the Xia patent prior to the filing of the '911
`
`It was.
`
`THE COURT REPORTER: (Reporter requests clarification.)
`
`Was the Xia patent prior to the filing of the '911
`
`Yes, it was.
`
`Please explain to the jury what we're looking at on the
`
`10:34AM 1
`prevention.
`10:34AM 2 Q.
`10:34AM 3
`patent?
`10:34AM 4 A.
`10:34AM 5
`10:34AM 6
`BY MR. MAIORANA:
`10:34AM 7 Q.
`10:34AM 8
`Patent?
`10:34AM 9 A.
`10:34AM 10 Q.
`10:35AM 11
`right-hand side of this demonstrative.
`10:35AM 12 A.
`10:35AM 13
`10:35AM 14
`10:35AM 15
`10:35AM 16
`10:35AM 17
`10:35AM 18
`10:35AM 19
`10:35AM 20
`10:35AM 21
`10:35AM 22
`10:35AM 23
`10:35AM 24
`10:35AM 25
`
`On the right-hand side again you can see it cut through
`
`the device for Xia, and it's got multiple cavities, so there's
`
`two different items, one that's similar to what you've seen in
`
`the other figures or Figure 911 [sic], which is the liquid
`
`blocking cover, right -- you can see those yellow cavities that
`
`are highlighted there -- but to the left and the bottom of that
`
`you can see item 15 --
`
`I'm sorry, can you zoom out just a little bit?
`
`-- where it's the liquid blocking groove. So it's an
`
`additional feature that's designed for leakage prevention.
`
`On a related note, I've actually used something very
`
`similar to this on some of my e-cigarette designs. We call it a
`
`tortuous path, where you're trying to make the aerosol go on a
`
`very complicated path so that you don't have leakage and you can
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`70
`
`72
`
`Would there have been a reasonable expectation of success
`
`Yes, adding absorbant materials or capillary materials is
`
`common in industry. When I was designing e-cigarettes, we often
`
`looked at multiple ways to try and prevent leakage because it is
`
`a big problem, so we would look at capillary materials as well
`
`All right. Let's talk about the last asserted claim from
`
`the patents, dependent Claim 12. What additional requirements
`
`So the additional requirement of Claim 12 is that there
`
`Does Han disclose two cavities?
`
`It does not. It only has one cavity.
`
`And do you see any patents prior to the '911 Patent that
`
`10:33AM 1
`prevention of leakage.
`10:33AM 2 Q.
`10:33AM 3
`in using Murphy's capillary material in Hahn's e-cigarette?
`10:33AM 4 A.
`10:33AM 5
`10:33AM 6
`10:33AM 7
`10:33AM 8
`as things like cavities, annular grooves, et cetera.
`10:33AM 9 Q.
`10:34AM 10
`10:34AM 11
`does dependent Claim 12 as to independent Claim 1?
`10:34AM 12 A.
`10:34AM 13
`are two cavities.
`10:34AM 14 Q.
`10:34AM 15 A.
`10:34AM 16 Q.
`10:34AM 17
`used two cavities in an e-cigarette device?
`10:34AM 18 A.
`10:34AM 19
`10:34AM 20
`leakage.
`10:34AM 21 Q.
`10:34AM 22
`cigarette?
`10:34AM 23 A.
`10:34AM 24 Q.
`10:34AM 25 A.
`
`Yes, there's an e-cigarette patent from Xia, that's
`
`X-I-A, and that shows multiple cavities to try to prevent
`
`And I think I asked you this, but is Xia an electronic
`
`Xia is an electronic cigarette, yes.
`
`Does Xia disclose a cavity for leakage prevention?
`
`It does. It reveals multiple cavities for leakage
`
`And what's that dark arrow on the right-hand figure from
`
`So the dark arrow that's sort of zigzagging, that's the
`
`air flow, so the air would flow all around the inside of the
`
`enclosure and it would go through item 15 and then it would go
`
`Would it have been obvious to a person of ordinary skill
`
`Yes. So as I mentioned, we actually added these kind of
`
`features when I was designing e-cigarettes, multiple ways to try
`
`10:35AM 1
`control aerosol.
`10:35AM 2 Q.
`10:35AM 3
`Xia, what does that represent?
`10:35AM 4 A.
`10:36AM 5
`10:36AM 6
`10:36AM 7
`through the mouthpiece when the device is sucked on.
`10:36AM 8 Q.
`10:36AM 9
`in the art to use Xia's multiple cavities in Hahn's e-cigarette?
`10:36AM 10 A.
`10:36AM 11
`10:36AM 12
`and prevent leakage.
`10:36AM 13 Q.
`10:36AM 14
`to Hahn's device that only has one cavity?
`10:36AM 15 A.
`10:36AM 16
`have more leakage prevention means.
`10:36AM 17 Q.
`10:36AM 18
`in using Xia's multiple cavities in Hahn's e-cigarette?
`10:36AM 19 A.
`10:36AM 20
`10:36AM 21
`of the image would be common place in industry.
`10:36AM 22 Q.
`10:37AM 23
`the '911 Patent.
`10:37AM 24 A.
`10:37AM 25
`
`Would there be any benefits to adding multiple cavities
`
`Yes, so the more cavities you have, potentially you would
`
`Would there have been a reasonable expectation of success
`
`Yes, you can see the right-hand side of Xia looks very
`
`similar to Han, and so adding the cavities on the left-hand side
`
`Please summarize your opinion regarding the invalidity of
`
`So as I mentioned, patent Claims 11 and 13 would be
`
`obvious based upon prior art Han and Shimizu, as well as POSA
`
`06/11/2022 11:06:55 AM
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`Page 69 to 72 of 177
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`18 of 69 sheets
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1352-1 Filed 06/14/22 Page 7 of 16 PageID# 33810
`73
`
`75
`
`skill at the time of the application for the '911 Patent, as
`
`well as someone with experience in the industry.
`
`Patent Claim 2 would also be obvious based upon the prior
`
`art Han, Shimizu, and Murphy. And also, patent Claim 12 would
`
`10:39AM 1
`10:39AM 2
`10:39AM 3
`10:39AM 4
`10:39AM 5
`10:40AM 6
`10:40AM 7
`10:40AM 8
`10:40AM 9
`10:40AM 10
`10:40AM 11
`10:40AM 12
`10:40AM 13
`10:40AM 14
`10:40AM 15
`10:40AM 16
`10:40AM 17
`10:40AM 18
`10:40AM 19
`10:40AM 20
`10:40AM 21
`10:40AM 22
`10:40AM 23
`10:40AM 24
`10:41AM 25
`
`argument, Your Honor. It wasn't raised with us.
`
`MR. GRANT: It's right from the order. So here's the
`
`issue, Your Honor. As you know, Judge O'Grady ruled the question
`
`of whether disputed structures meet the limitations is an issue
`
`to be decided by the jury, but as you can see, I've highlighted
`
`two sentences in the Court's motion in limine ruling on page 23,
`
`and I believe those are law of the case.
`
`One says, "The Court finds that the criticism of the '975
`
`Patent has not led to any -- to the disavowal of any blind hole
`
`that spans spaces or cavities," and the second one says, "The
`
`discussion of this patent," which is the Rose Patent, "during the
`
`prosecution history was mere criticism and did not expressly
`
`disclaim the subject matter of the blind hole -- of a blind hole
`
`that contains additional spaces and cavities."
`
`So what I would propose, Your Honor, is we simply ask
`
`Mr. Kodama, "do you agree," read the statement. If he doesn't
`
`agree, I believe we're entitled to impeach him with the order
`
`because I believe these are law of the case.
`
`THE COURT: Well, I don't think you can impeach somebody
`
`with the law of the case. You impeach by saying that he has said
`
`something inconsistent in the past.
`
`MR. GRANT: Yes.
`
`THE COURT: All right.
`
`MR. GRANT: But I guess the question is: Do you agree
`
`that the '975 Patent hasn't led to any disavowal of any blind
`
`10:37AM 1
`10:37AM 2
`10:37AM 3
`10:37AM 4
`10:37AM 5
`have been obvious based upon Han, Shimizu and Xia.
`10:37AM 6 Q.
`10:37AM 7
`the jury regarding the '911 Patent?
`10:37AM 8 A.
`10:37AM 9
`10:37AM 10
`10:37AM 11
`10:37AM 12
`10:37AM 13
`10:37AM 14
`10:37AM 15
`10:38AM 16
`10:38AM 17
`10:38AM 18
`10:38AM 19
`10:38AM 20
`10:38AM 21
`10:38AM 22
`10:38AM 23
`10:38AM 24
`10:38AM 25
`
`Mr. Kodama, could you please summarize your opinions for
`
`The '911 Patent is invalid based upon obviousness as I
`
`showed you, based upon the prior art and interpreting and
`
`analyzing that prior art from the viewpoint of a POSA as of
`
`December 2010.
`
`In addition, the Vuse Alto and Solo G2 do not infringe
`
`the claim limitations of the '911 Patent.
`
`MR. MAIORANA: Your Honor, I tender the witness.
`
`THE COURT: All right. Cross-examination?
`
`MR. GRANT: Your Honor, very briefly there's an
`
`evidentiary issue I think we should take up before cross and we
`
`can do that at the break as long is the cross is continuing or
`
`maybe perhaps it makes sense to do it now.
`
`THE COURT: Well, I told the jury they would get two
`
`breaks this morning, so this probably is a log