Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 1 of 17 PageID# 34055
`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 1 of 17 PagelD# 34055
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 2 of 17 PageID# 34056
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`587
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`APPEARANCES: (Cont.)
`
`For the Defendants:
`
`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
`Email: Dmaiorana@jonesday.com
`
`William Edward Devitt, Esq.
`Jones Day (IL)
`77 West Wacker
`Suite 3500
`Chicago, IL 60601
`312-269-4240
`Email: Wdevitt@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
`
`Court Reporter:
`
`Proceedings reported by machine shorthand, transcript produced
`by computer-aided transcription.
`
`Scott L. Wallace, RDR, CRR
`Official Court Reporter
`
`588
`
` 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
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`591
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`665
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`701
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`704
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`706
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` UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Civil Action
`No. 1:20-cv-00393-LMB/TCB
`
`June 10, 2022
`9:13 a.m.
`
`)))))))))))))
`
`PHILIP MORRIS PRODCUTS S.A.,
`
`
` Counterclaim Plaintiff,
`
` v.
`
`R.J. REYNOLDS VAPOR COMPANY,
`
` Counterclaim Defendant.
`
` VOLUME 3 - MORNING SESSION
`TRANSCRIPT OF JURY TRIAL PROCEEDINGS
`BEFORE THE HONORABLE LEONIE M. BRINKEMA,
`UNITED STATES DISTRICT COURT JUDGE
`
`APPEARANCES:
`
`For the Plaintiffs:
`
`APPEARANCES: (Cont.)
`
`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
`
`586
`
`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
`
`Lawrence Jay Gotts, Esq.
`Latham & Watkins LLP (DC)
`555 11th St NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Lawrence.gotts@lw.com
`
`For the Defendants:
`
`Charles Bennett Molster, III, Esq.
`The Law Offices of Charles B. Molster
`III, PLLC
`2141 Wisconsin Avenue NW , Suite M
`W ashington, DC 20007
`703-346-1505
`Email: Cmolster@m olsterlaw.com
`
`Stephanie Ethel Parker, Esq.
`Jones Day (GA)
`1420 Peachtree Street, NE
`Suite 800
`Atlanta, GA 30309
`404-521-3939
`Email: Sparker@jonesday.com
`
`Scott L. Wallace, RDR, CRR
`Official Court Reporter
`
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`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 3 of 17 PageID# 34057
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`607
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`So what happened is the patent examiner objected saying
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`that Rose disclosed cavity, and in Philip Morris's argument to
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`the Patent Office they defined what defines "non-blind." In
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`this case they're saying that the spaces are open or on the
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`sides, which means these features are non-blind. So basically
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`they're defining what "blind" means, which means a space that
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`has -- that is not open around the side.
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`Furthermore, they followed saying basically what the
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`patent examiner wrote is the opposite of what is claimed, so, in
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`other words, they defined in their own words during the patent
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`Did the patent examiner point to something in the Rose
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`He did, yes. If you remember the picture from Rose it's
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`got sort of these fingers that are inside the cavity, and,
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`again, they argued that because it had open sides, it was
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`application process what "blind" what "blind hole" represents.
`09:34AM 12 Q.
`09:34AM 13
`patent that he contended was a cavity?
`09:34AM 14 A.
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`non-blind.
`09:34AM 18 Q.
`09:34AM 19
`open sides being non-blind more than once to the Patent Office?
`09:35AM 20 A.
`09:35AM 21 Q.
`09:35AM 22
`about blind holes relevant to your opinion here?
`09:35AM 23 A.
`09:35AM 24
`09:35AM 25
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`Did Philip Morris make those arguments about spaces with
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`They did, yes, multiple times.
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`How are Philip Morris's arguments to the Patent Office
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`Well, again, Claim 1 of the claim language has the term
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`"blind hole," so it limits itself to the geometric features of
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`the patent to a blind hole.
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`there's some wording about the largest cross-sectional dimension
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`and so that item 4 with the arrows in the Figure 3, that's got
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`the Roman Numeral IV, that is basically a cut through that
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`device, and then Figure 4 is a view that would result from that
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`cut, so if you imagine you have a sausage, and you sort of cut
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`that sausage in half and then Figure 4 is sort of looking at the
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`end of that sausage. Sorry, that's probably not a great
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`analogy.
`09:37AM 9 Q.
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`as shown in Figures 3 and 4?
`09:37AM 11 A.
`09:37AM 12 Q.
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`09:37AM 14
`three dimensions?
`09:37AM 15 A.
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`the patent.
`09:37AM 18 Q.
`09:37AM 19 A.
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`look like in three dimensions.
`09:37AM 24 Q.
`09:37AM 25
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`Did the asserted '911 Patent claims require a blind hole
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`They do, yes.
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`Did you prepare an animation to help the jury understand
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`what a blind hole claimed in the '911 Patent would look like in
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`Yes. I produced some animations to help you sort of
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`visualize what's trying to be represented in Figures 3 and 4 of
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`How did you create this animation?
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`So I took the patent diagram and created three models
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`that represented similar shapes and sizes to the patent figures,
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`and then, in three dimensions, animated these in order to
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`visualize what the holes would look like, the blind holes would
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`Did you do anything to insure that the animations were an
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`accurate representation of the '911 Patent?
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
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`606
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`608
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`And did the arguments Philip Morris made inform you about
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`Well, I already know, understand from industry what a
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`blind hole means, but yes, you can look at Philip Morris's words
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`and they, themselves, have defined what they are presenting to
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`Are there any figures in the '911 Patent showing what a
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`Yes. So there are two figures, which I believe you've
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`seen before, Figures 3 and 4, which represent a design for blind
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`Explain to the jury what we're seeing here in this --
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`So, again, this is showing Figures 3 and 4 from the
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`patent. On the left-hand side you can see items 305 up at the
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`top and 307 down at the bottom, and those are labeled "blind
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`hole."
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`Thank you.
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`And then on the right-hand side in Figure 4, again, items
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`09:35AM 1 Q.
`09:35AM 2
`what a blind hole means?
`09:35AM 3 A.
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`09:35AM 5
`09:35AM 6
`the Patent Office what a blind hole means.
`09:35AM 7 Q.
`09:35AM 8
`blind hole is in the product in the '911 Patent?
`09:35AM 9 A.
`09:35AM 10
`09:35AM 11
`holes.
`09:35AM 12 Q.
`09:35AM 13
`your annotated of Figures 3 and 4.
`09:35AM 14 A.
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`305 and 307 showing blind holes.
`09:36AM 21 Q.
`09:36AM 22
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`is?
`09:36AM 24 A.
`09:36AM 25
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`In Figure 3 there's a dotted line with the Roman
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`Numeral IV next to it. Can you explain to the jury what that
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`Yes. So in the Claim 1 language there's a lot of
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`discussion about how to take the actual dimension, right, so
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`09:37AM 1 A.
`09:37AM 2
`09:37AM 3
`misrepresent what's shown in Figures 3 and Figures 4.
`09:37AM 4 Q.
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`day-to-day work?
`09:37AM 6 A.
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`manufacturability purposes.
`09:38AM 10 Q.
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`animations?
`09:38AM 12 A.
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`collected inside of the blind holes.
`09:38AM 18 Q.
`09:38AM 19
`09:38AM 20
`BY MR. MAIORANA:
`09:38AM 21 Q.
`09:38AM 22 A.
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`Yes, I compared them and overlaid the figure on top of
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`the animation so you can see for yourself that I'm not trying to
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`Mr. Kodama, do you use animations like this in your
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`Yes, of course. We need to present sort of complex
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`concepts sometimes, also for ourselves, in order to analyze
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`products and devices for assembly purposes and for
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`And what are you going to show the jury in these
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`So I'm going to show you, again, sort of the figures
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`overlaid on top of the 3D models, just so you can see how they
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`relate, as well as the different cross-sectional views which
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`means cutting the item in half so you can see inside, and the
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`final animation I'll show you how sort of the condensate is
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`Mr. Kodama, let's look at the first clip, please.
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`(Videotape played.)
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`What do we see in that clip, Mr. Kodama?
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`So what we saw in that clip was, again, the device cut in
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`half, and then rotated, and then we cut it at the end using
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`section Roman Numeral IV, which corresponds to Figure 4 in the
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`patent, and then finally we overlaid Figure 4 on top of the end
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`06/21/2022 08:45:49 AM
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`615
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`What I'm showing here is on the left-hand side is a
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`photograph of the Vuse Alto. In the middle image is a CAD
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`rendering of the mouthpiece section, the entire mouthpiece
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`section, and on the far right what I've done similar to those
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`original images I showed you is I cut the mouthpiece in half,
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`just so you can see the details inside that we're talking about,
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`which are, in this case, the small rib down at the bottom of the
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`Let's look at the next slide. Does this image show the
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`area in the Alto mouthpiece that Dr. Abraham contends is a blind
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`Yes, it does.
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`Where is that indicated?
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`So that's indicated in the red highlighted area of the
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`surface behind that rib -- in between the rib and the inner wall
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`screen that partially surrounds the mouthpiece hole.
`09:44AM 9 Q.
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`hole?
`09:44AM 12 A.
`09:44AM 13 Q.
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`of the mouthpiece.
`09:44AM 17 Q.
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`required by the '911 Patent claims?
`09:44AM 19 A.
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`any sort of cavity.
`09:44AM 21 Q.
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`as required by the '911 Patent?
`09:45AM 23 A.
`09:45AM 24 Q.
`09:45AM 25
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`Does that space in the Alto mouthpiece form a cavity as
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`No, it does not. It has open sides, so it doesn't form
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`Does that space in the Alto mouthpiece form a blind hole
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`No, it does not form a blind hole either.
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`You were here on Wednesday when Dr. Abraham testified
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`about the doctrine of equivalents, do you remember that?
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`In addition, because of the gasket that's in place there,
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`there's no space to store condensate. This picture and some of
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`Dr. Abraham's images were a little bit deceptive because there's
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`actually another hole component, a plastic component, which I
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`can show you on this cartridge (indicating), that's this sort of
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`clear tank area that's got the liquid in it. That entire
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`component goes inside of the mouthpiece and interfaces with that
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`silicone gasket, seals against that silicone gasket, so there
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`really is no space inside of the air flow channel to store
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`condensate. So as a result, condensate is not collected inside
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`of there, inside of the proposed cavity that's formed by the rib
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`Now, you mentioned there was something colored in orange
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`in one of Dr. Abraham's slides the other day.
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`THE COURT REPORTER: (Reporter requests clarification.)
`
`THE WITNESS: Orange
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`MR. MAIORANA: Orange.
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`inside the Alto mouthpiece.
`09:47AM 13 Q.
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`BY MR. MAIORANA:
`09:47AM 19 Q.
`09:47AM 20
`Dr. Abraham's slides Wednesday? You mentioned that?
`09:47AM 21 A.
`09:47AM 22 Q.
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`that orange thing is?
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`09:47AM 25 Q.
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`There was something colored in orange in one of
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`Yes.
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`And do you recall Her Honor asked a question about what
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`Right.
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`So could you please explain that so we're all clear on
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
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`614
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`616
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`Yes, I do.
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`And you heard Dr. Abraham say that the open-sided spaces
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`in the Alto mouthpiece are equivalent to a cavity? Do you
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`09:45AM 1 A.
`09:45AM 2 Q.
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`remember that?
`09:45AM 5 A.
`09:45AM 6 Q.
`09:45AM 7 A.
`09:45AM 8 Q.
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`I remember that.
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`Do you agree with that opinion?
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`No.
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`Why not?
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`Again, because the sides are open, it does not form a
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`cavity. In addition, there's a whole series of steps that need
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`to be sort of explained for doctrine of equivalents. Basically,
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`the function of the ribs is not to trap condensate. The
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`function is to locate the gasket.
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`In the right-hand view of this image that I'm showing
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`you, again, it's that sort of cut view of the mouthpiece, but,
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`in addition, you can see that purple piece. I believe
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`Dr. Abraham had it shown in orange or some other color, but in
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`this case it's purple. So it's actually a silicone gasket that
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`is positioned inside the mouthpiece. The purpose of those ribs
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`is to properly position that gasket in place, not to retain any
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`sort of condensate.
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`In addition, the condensate is not trapped because the
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`ribs have open sides, right, it doesn't form a cavity. It's
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`just a flat surface with a rib, so the rib performs no function
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`to try and trap condensate.
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`Yes, so I'll explain that in a little more detail. So,
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`again, on this view, on the image you can see -- I actually have
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`colored it purple, and that's a silicone gasket, so the silicone
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`gasket, again, is intended to seal between this clear piece and
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`the mouthpiece, and that seals the air channel. There's a tube
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`that runs along in the inside of this plastic piece, which the
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`vapor goes out, and that's the intention of that gasket. The
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`intention and the purpose of the ribs is to locate that gasket.
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`Now, that diskette is made out of silicone, which is a
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`noncapillary material, so it kind of is actually used for
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`sealing, right? You use it to seal your bathtub, you use it to
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`seal your windows, and this is a similar material, a different
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`type of silicone, but it's the same purpose. Again, it's trying
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`to be used as a gasket for sealing between two parts, not to try
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`Now, how do you know that's the purpose of the silicone
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`09:47AM 1
`what that -- the orange piece in Dr. Abraham's figure was?
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`and trap or store condensate.
`09:48AM 17 Q.
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`gasket in the Alto?
`09:48AM 19 A.
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`of those components are.
`09:48AM 23 Q.
`09:48AM 24 A.
`09:48AM 25
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`So the PMTA, the premarket tobacco application, for the
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`Vuse Alto references the gasket, actually references every
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`component and explains to the FDA what the purpose and function
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`What materials is the gasket made of?
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`So the gasket is made of a PDMS silicone, so it's just a
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`type of silicone that's commonly used in the industry. It's
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`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 5 of 17 PageID# 34059
`617
`619
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`very easy to mold, basically an injection mold of a
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`manufacturer, and it's quite cheap to manufacture as well.
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`It also performs very well as a gasket or as a sealant
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`because of the inherent material properties. It's a little bit
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`spongy, right, so it gives so you can push the two parts
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`together very rightly and create a nice seal between two
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`In your work designing e-cigarettes, have you had
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`Yes. Liquid and, as I said, condensate gets everywhere
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`in these devices, so there's always applications needed for
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`gasketing and for sealing. Sometimes we use glue, but typically
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`we'll try and use silicone seals like this because they're much
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`And did you hear on Wednesday Dr. Abraham called that
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`components using that silicone gasket.
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`occasion to work with gaskets in these types of products?
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`more easy to manufacture and much more easy to produce.
`09:49AM 15 Q.
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`silicone gasket a capillary material?
`09:49AM 17 A.
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`Yes, I did.
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`Do you agree with that?
`
`No.
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`Why not?
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`As I mentioned, silicone is sort of the opposite of a
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`capillary material, right, it's actually impermeable, meaning
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`liquid does not get stored in it. Its sole purpose is actually
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`to resist liquid, and that's the purpose of the silicone gasket
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`in this case.
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`dimensions, so it needs to be the largest dimension of the
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`cavity that's taken there.
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`In addition, it has a very specific range, right, it
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`needs to be 0.5 or 1 millimeter or between 0.5 and 1 millimeter,
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`Do you see where the claim refers to the largest
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`Yes.
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`What does the word "largest" mean in the context of the
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`So when we take a cross-section of any sort of
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`complicated device, you'll see there's obviously many
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`dimensions, right, but what the claim -- what the patent is
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`claiming is you must take the largest dimension. So you can't
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`just take any dimension, you have to take the largest dimension
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`09:51AM 1
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`09:51AM 3
`09:51AM 4
`09:51AM 5
`and that's what the claim language depicts.
`09:51AM 6 Q.
`09:51AM 7
`cross-sectional dimension?
`09:51AM 8 A.
`09:51AM 9 Q.
`09:51AM 10
`'911 Patent, Claim 1?
`09:51AM 11 A.
`09:51AM 12
`09:51AM 13
`09:51AM 14
`09:51AM 15
`09:51AM 16
`that represents the cavity.
`09:51AM 17 Q.
`09:51AM 18
`dimension." Do you see that?
`09:51AM 19 A.
`09:51AM 20 Q.
`09:51AM 21
`cross-sectional dimensions?
`09:51AM 22 A.
`09:52AM 23
`09:52AM 24
`09:52AM 25
`
`Now, the claim says "a largest cross-sectional
`
`I do, yes.
`
`Can a particular cross-section have two largest
`
`I don't belive so. "Largest" is basically defining the
`
`largest, right, so I'm not sure why the wording says "a
`
`largest," but to a POSA and to a person in industry, "largest"
`
`would mean the largest dimension that represents the cavity.
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`618
`
`620
`
`Again, as I mentioned, silicone you use for sealing
`
`bathtubs, sealing windows. It's designed, based on its
`
`material, to try and resist moisture, absorbing moisture, or any
`
`Would a person of skill in the e-cigarette field consider
`
`the Alto silicone gasket to be a capillary material as described
`
`No, they would not.
`
`Please summarize your opinion regarding the '911 Patent
`
`So as I've shown you on the previous slide, the Vuse Alto
`
`does not represent, does not contain a blind hole or any sort of
`
`Now, the jury has heard a lot about this size requirement
`
`Right.
`
`Can you point out that requirement in the '911 Patent
`
`09:49AM 1
`09:50AM 2
`09:50AM 3
`09:50AM 4
`sort of liquid.
`09:50AM 5 Q.
`09:50AM 6
`09:50AM 7
`in the '911 Patent?
`09:50AM 8 A.
`09:50AM 9 Q.
`09:50AM 10
`blind hole requirement in the Vuse Alto product.
`09:50AM 11 A.
`09:50AM 12
`09:50AM 13
`cavity at all.
`09:50AM 14 Q.
`09:50AM 15
`in the '911 Patent claims; is that right?
`09:50AM 16 A.
`09:50AM 17 Q.
`09:50AM 18
`Claim 1?
`09:50AM 19 A.
`09:50AM 20
`09:50AM 21
`09:50AM 22
`09:51AM 23
`09:51AM 24
`09:51AM 25
`
`So we'll go back to, again, Claim 1.
`
`Thank you for zooming in.
`
`At the bottom you can see I highlighted, again, the
`
`specific language that's used to measure the blind cavity or the
`
`blind hole. In this case it's the largest cross-sectional
`
`dimension. Again, remember I'm talking about the sausage and
`
`cut the sausage in half and look at the end and measure those
`
`Does the '911 Patent discuss the advantages of that
`
`It does. In the specification for the patent, meaning
`
`the description of the patent, it talks about how they came up
`
`What advantages does the specification talk about?
`
`So the specification mentions that the
`
`0.5-to-1 millimeter range for the blind hole is large enough to
`
`store enough condensate to make it useful, but small enough to
`
`retain or keep the liquid or condensate from leaking out due to
`
`Now, I'm going to ask you about the prosecution history
`
`again. Was there any discussion of this dimensional requirement
`
`There was, yes.
`
`What did Philip Morris say to the Patent Office about the
`
`09:52AM 1 Q.
`09:52AM 2
`specific claimed dimensional range?
`09:52AM 3 A.
`09:52AM 4
`09:52AM 5
`with the 0.5 to 1 millimeter dimensions.
`09:52AM 6 Q.
`09:52AM 7 A.
`09:52AM 8
`09:52AM 9
`09:52AM 10
`09:52AM 11
`capillary forces.
`09:52AM 12 Q.
`09:52AM 13
`09:52AM 14
`during the '911 prosecution?
`09:52AM 15 A.
`09:52AM 16 Q.
`09:52AM 17
`dimensional requirement?
`09:53AM 18 A.
`09:53AM 19
`09:53AM 20
`09:53AM 21
`09:53AM 22
`09:53AM 23
`09:53AM 24
`09:53AM 25
`
`So Philip Morris, you can see on the screen here, I've
`
`shown on the left-hand side, it's a snippet from the patent file
`
`history, and what they said was originally they had the word
`
`"preferably," and so it means any dimension but preferably
`
`between 0.5 and 1 millimeter. And what the Patent Office came
`
`back with is, they forced Philip Morris to be more specific, so
`
`they basically removed the word "preferably," meaning the
`
`definition and the requirement of the patent where the dimension
`
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`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 6 of 17 PageID# 34060
`621
`623
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`Did Philip Morris make any other changes during the file
`
`09:53AM 1
`needs to be between 0.5 and 1 millimeter, not preferably.
`09:53AM 2 Q.
`09:53AM 3
`history related to the dimensional requirement?
`09:53AM 4 A.
`09:53AM 5
`09:53AM 6
`09:53AM 7
`09:53AM 8
`09:53AM 9
`dimension.
`09:53AM 10 Q.
`09:53AM 11 A.
`09:54AM 12
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`09:54AM 17
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`09:54AM 25
`
`They did as we were discussing earlier about the word
`
`"largest," they had to add some more definition and make the
`
`claims more narrow by adding the word "largest," and on the
`
`right-hand side you can see a word they've added, as underlined
`
`and highlighted, the word "largest" to the cross-sectional
`
`What's the significance of the words that are underlined?
`
`So the underlined words are words and phrases that the
`
`applicant had to add for the sort of next revision during their
`
`discussions with the patent examiner. Again, they're trying to
`
`convince the Patent Office to grant them this patent, right, so
`
`they're getting feedback from the patent examiner on what
`
`changes that need to be made, things that are vague, things that
`
`are not clear, things that are disclosed by the prior art, so
`
`there's all these revisions and a changes that they're making,
`
`so I've highlighted these two changes as it relates to the
`
`dimension or the size on the blind groove, again, with regards
`
`to removing the word "preferably," right, so it narrowed down
`
`the claim to be between 0.5 and 1 millimeter, and the addition
`
`of the word "largest," which again specifies not just any
`
`dimension inside the cross-section; it needs to be the largest
`
`dimension that defines that blind hole or blind cavity.
`
`that rib in that space. Also I had the 3D CAD data for this
`
`Now, we have on the screen a demonstrative that the jury
`
`saw the other day when I was cross-examining Dr. Abraham, and
`
`I was, yes.
`
`And is Dimension A, is that the dimension that
`
`Yes, it is, and I believe it was something like .9900 --
`
`THE COURT REPORTER: (Reporter requests clarification.)
`
`THE WITNESS: Oh, sorry, I didn't speak very clearly. I
`
`said it was something like .990 something or other.
`
`So just barely under the maximum of the claimed range in
`
`Barely underneath the 1 millimeter claim requirement,
`
`09:55AM 1
`09:55AM 2
`part, and measured the dimension of the space.
`09:56AM 3 Q.
`09:56AM 4
`09:56AM 5
`you were here for that?
`09:56AM 6 A.
`09:56AM 7 Q.
`09:56AM 8
`Dr. Abraham contends is the largest cross-sectional dimensions?
`09:56AM 9 A.
`09:56AM 10
`09:56AM 11
`09:56AM 12
`09:56AM 13
`BY MR. MAIORANA:
`09:56AM 14 Q.
`09:56AM 15
`the '911 Patent for this dimension, right?
`09:56AM 16 A.
`09:56AM 17
`yes.
`09:56AM 18 Q.
`09:56AM 19
`09:56AM 20
`the Alto mouthpiece?
`09:56AM 21 A.
`09:56AM 22
`09:56AM 23
`09:56AM 24
`09:56AM 25
`
`Why is A not the largest cross-sectional dimension in the
`
`space that a Dr. Abraham contends is a cavity or a blind hole in
`
`Well, you can see here the red highlight is what were
`
`shown before. I've added the A, which is where Dr. Abraham took
`
`his measurement, but there are other cross-sectional dimensions,
`
`which are definitely larger and certainly would qualify it more
`
`closely to the claim requirement of "largest," right?
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`622
`
`624
`
`So are the underlined words that we are seeing on this
`
`Yes, so the underlined words are words that Philip Morris
`
`Let's discuss the dimensional limitation with respect to
`
`the Vuse Alto product. Now, you have explained to the jury your
`
`That's correct.
`
`And -- or blind holes, right?
`
`Blind holes either, no.
`
`And you understand Dr. Abraham contends that that red
`
`I believe he contends it's a cavity and a blind hole,
`
`All right. Do you agree with those opinions?
`
`I do not.
`
`For the purposes of my next few questions I want you to
`
`assume that those spaces in the Alto mouthpiece could be a
`
`Okay.
`
`Did you take any measurements of that space that
`
`Dr. Abraham alleges is a cavity or blind hole in the Alto
`
`09:54AM 1 Q.
`09:54AM 2
`slide, are those Philip Morris's own words?
`09:54AM 3 A.
`09:54AM 4
`added to the application during the process.
`09:54AM 5 Q.
`09:55AM 6
`09:55AM 7
`opinion that the Alto ribs don't form cavities, right?
`09:55AM 8 A.
`09:55AM 9 Q.
`09:55AM 10 A.
`09:55AM 11 Q.
`09:55AM 12
`space that we saw on the mouthpiece is a blind hole, right?
`09:55AM 13 A.
`09:55AM 14
`yes.
`09:55AM 15 Q.
`09:55AM 16 A.
`09:55AM 17 Q.
`09:55AM 18
`09:55AM 19
`cavity or a blind hole. Do you understand?
`09:55AM 20 A.
`09:55AM 21 Q.
`09:55AM 22
`09:55AM 23
`mouthpiece?
`09:55AM 24 A.
`09:55AM 25
`
`I did, yes. And as I showed you before, I cut the
`
`mouthpiece in half, and I was able to measure the dimensions of
`
`So, for example, we took the Dimension B. That would
`
`also be a dimension of the supposed cavity or blind hole that's
`
`in the Alto, and clearly B is larger than A, so there really is
`
`no rational reason why one would choose A over B as it meets the
`
`You were here in the courtroom when I was asking
`
`Dr. Abraham if he agreed that B is also a cross-sectional
`
`Yes, I was here.
`
`And he said that he disagreed with me. Do you remember
`
`09:57AM 1
`09:57AM 2
`09:57AM 3
`09:57AM 4
`09:57AM 5
`claim language for the patent.
`09:57AM 6 Q.
`09:57AM 7
`09:57AM 8
`dimension in accordance with '911 Claim 1, right?
`09:57AM 9 A.
`09:57AM 10 Q.
`09:57AM 11
`that?
`09:57AM 12 A.
`09:57AM 13 Q.
`09:57AM 14 A.
`09:57AM 15 Q.
`09:57AM 16 A.
`09:57AM 17
`09:57AM 18
`09:57AM 19
`09:57AM 20
`09:57AM 21
`cross-section.
`09:57AM 22 Q.
`09:57AM 23
`09:58AM 24
`that right?
`09:58AM 25 A.
`
`I do.
`
`Do you agree with him?
`
`I do not.
`
`Why not?
`
`Well, B is clearly in the same plane as A, right, it's
`
`taken in the same cross-section, so it is a dimension, a
`
`cross-sectional dimension just like A is, and it's obviously
`
`larger than A, so something like B would be a much more wise
`
`choice to choose for the largest dimension that's in the
`
`Now, you mentioned that you did some measurements on this
`
`space that Dr. Abraham contends is a cavity or blind hole; is
`
`Yes. I measured the physical part, which I cut in half
`
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`Case 1:20-cv-00393-LMB-TCB Document 1376-1 Filed 06/29/22 Page 7 of 17 PageID# 34061
`625
`627
`
`so as we looked at and as I showed you, because the Vuse Alto
`
`does not infringe Claim 1, it cannot infringe the dependent
`
`Now, Mr. Kodama, we looked at Figures 3 and 4 a few
`
`minutes ago. Are you familiar with Figures 5 and 6 of the '911
`
`What measurement did you obtain?
`
`So the measurement of the width of the rib is 2.82
`
`Is 2.82 millimeters larger than 1 millimeter?
`
`It is, yes.
`
`Is the --
`
`It's almost three times larger than the 1.O millimeter.
`
`Is the measurement of 2.8 millimeters within the required
`
`No. It's well outside the range. As I mentioned, it's
`
`Does Dr. Abraham argue doctrine of equivalents with
`
`09:58AM 1
`as well as the 3D CAD file.
`09:58AM 2 Q.
`09:58AM 3 A.
`09:58AM 4
`millimeters.
`09:58AM 5 Q.
`09:58AM 6 A.
`09:58AM 7 Q.
`09:58AM 8 A.
`09:58AM 9 Q.
`09:58AM 10
`dimensional range in the '911 Patent?
`09:58AM 11 A.
`09:58AM 12
`almost three times larger than the 1 millimeter limitation.
`09:58AM 13 Q.
`09:58AM 14
`respect to this limitation?
`09:58AM 15 A.
`09:58AM 16
`09:58AM 17
`09:58AM 18
`requirement.
`09:58AM 19 Q.
`09:58AM 20
`equivalent to 1.5 millimeter?
`09:58AM 21 A.
`09:59AM 22
`09:59AM 23
`09:59AM 24
`dimensions and certainly larger than the dimension that he took.
`09:59AM 25 Q.
`
`I don't believe he does. I think we were talking purely
`
`about the cavity in the space, the blind hole requirement, as
`
`relates to doctrine of equivalents, not the dimensional
`
`Does he give an opinion that 2.82 millimeters is
`
`No, because he contends that that dimension is not a
`
`cross-sectional dimension, which I think I showed you in the
`
`previous slide it is definitely one of the cross-sectional
`
`Please summarize your opinion regarding why the Vuse Alto
`
`10:00AM 1
`10:00AM 2
`10:00AM 3
`claims, 2, 11, and 12.
`10:00AM 4 Q.
`10:00AM 5
`10:00AM 6
`Patent?
`10:00AM 7 A.
`10:00AM 8 Q.
`10:00AM 9 A.
`10:00AM 10
`design of the embodiment which is an annular groove.
`10:00AM 11 Q.
`10:00AM 12 A.
`10:01AM 13 Q.
`10:01AM 14 A.
`10:01AM 15 Q.
`10:01AM 16
`don't cover all the embodiments disclosed in the patent?
`10:01AM 17 A.
`10:01AM 18
`10:01AM 19
`10:01AM 20
`whether a product infringes that patent or not.
`10:01AM 21 Q.
`10:01AM 22 A.
`10:01AM 23
`groove.
`10:01AM 24 Q.
`10:01AM 25
`
`I am, yes.
`
`What do those figures show?
`
`So Figures 5 and 6 on the patent show an alternative
`
`Now, you said earlier you have some of your own patents?
`
`Yes, over 30 patents.