Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 1 of 15 PageID# 34603
`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 1 of 15 PagelD# 34603
`
`EXHIBIT 6
`EXHIBIT 6
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 2 of 15 PageID# 34604
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`587
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`585
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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
`
`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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`734
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`747
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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
`
`1 of 45 sheets
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`Page 585 to 588 of 761
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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 3 of 15 PageID# 34605
`633
`635
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`What label does Claim 1 of the '911 Patent use for the
`
`Claim 1, and you can see the text down at the bottom
`
`where it specifies blind hole, uses the dimension X, and that
`
`dimension X is shown in Figures 3 and 4 of the patent. And
`
`again, that's for the claim limitation of the
`
`Now, again, assuming that the annular groove in the
`
`Solo G2 could be a blind hole as Dr. Abraham contends, how would
`
`10:07AM 1 Q.
`10:07AM 2
`largest cross-sectional dimension?
`10:07AM 3 A.
`10:07AM 4
`10:07AM 5
`10:07AM 6
`10:08AM 7
`0.5-to-1 millimeter range.
`10:08AM 8 Q.
`10:08AM 9
`10:08AM 10
`you measure the largest cross-sectional dimension of that space?
`10:08AM 11 A.
`10:08AM 12
`10:08AM 13
`10:08AM 14
`10:08AM 15
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`10:08AM 17
`basically the diameter of that annular groove.
`10:08AM 18 Q.
`10:08AM 19
`10:08AM 20
`10:08AM 21
`the largest cross-sectional dimension?
`10:08AM 22 A.
`10:08AM 23
`10:09AM 24
`cross-sectional dimension.
`10:09AM 25 Q.
`
`So you can see on the left-hand view, it's the same view
`
`in red, that's the dimension that Dr. Abraham is proposing is
`
`the largest cross-sectional dimension. On the right-hand side
`
`would be in green, would be the proper dimension to measure.
`
`That's the largest cross-sectional dimension of the annular
`
`groove, and that largest cross-sectional dimension would be
`
`Now, let's talk some about the actual measurements of
`
`what Dr. Abraham alleges is the blind hole in the Solo G2. Did
`
`Dr. Abraham measure what you just explained is in your opinion
`
`He only measured the one on the left, the red. He did
`
`not measure what I would call the largest dimension, largest
`
`And how did you measure the largest cross-sectional
`
`Solo -- the Vuse Solo G2 does not meet the blind hole limitation
`
`nor does it meet the dimensional limitation. Again, Claim 1 is
`
`the independent claim, right, and Claim 11 and 13 are dependent
`
`claims, so they require all of those requirements of Claim 1 and
`
`then they add in some additional requirements, but because the
`
`Vuse Solo does not meet those claim limitations of Claim 1, it
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`10:10AM 1
`10:10AM 2
`10:10AM 3
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`10:10AM 5
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`cannot infringe Claim 11 and Claim 13.
`10:10AM 8 Q.
`10:10AM 9
`10:10AM 10
`10:10AM 11
`10:10AM 12
`10:10AM 13
`regarding the invalidity of the '911 Patent?
`10:10AM 14 A.
`10:10AM 15 Q.
`10:10AM 16 A.
`10:11AM 17
`10:11AM 18
`10:11AM 19
`10:11AM 20
`10:11AM 21
`10:11AM 22
`10:11AM 23
`based upon the viewpoint of a POSA.
`10:11AM 24 Q.
`10:11AM 25
`
`All right. So we've been talking this morning so far
`
`about your noninfringement opinions. I'm going to change gears
`
`a little bit and talk about invalidity. I think the jury has
`
`heard a little bit about invalidity in Your Honor's initial
`
`instructions in this case. Did you arrive at an opinion
`
`Yes, I did.
`
`If what was your opinion?
`
`So the '911 Patent is invalid based upon the prior art
`
`that I reviewed and also the prior art as reviewed by a POSA.
`
`Remember we talked in the beginning sort of what a POSA --
`
`patents are written for POSAs, with POSAs in mind, so the POSA
`
`would have these given requirements, and so when we analyze
`
`prior art to determine invalidity based on obviousness, for
`
`example, then we have to read those patents and analyze them
`
`What did you review as part of your evaluation of the
`
`invalidity of the '911 Patent?
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`634
`
`636
`
`So, again, I had the mouthpiece that was cut in half, I
`
`was able to measure inside of that annular groove. In addition,
`
`I had the 3D CAD files to confirm those measurements, and that
`
`And is the measurement of 4 millimeters within the
`
`required dimensional range of .5 millimeters to 1 millimeter in
`
`No. Again, it's almost four times larger than the
`
`Please summarize your opinion regarding whether the Vuse
`
`So the Vuse Solo 2, again, it does not have a blind hole,
`
`it has an annular groove, so it doesn't meet that claim
`
`limitation.
`
`In addition, if we take and measure the largest
`
`dimension, largest cross-examinational dimension, it does not
`
`fall within the range of 0.5 and 1 millimeter. In fact, it's
`
`almost -- it's four times larger than the maximum dimension
`
`10:09AM 1
`dimension?
`10:09AM 2 A.
`10:09AM 3
`10:09AM 4
`10:09AM 5
`measurement was 4 millimeters.
`10:09AM 6 Q.
`10:09AM 7
`10:09AM 8
`the '911 Patent claims?
`10:09AM 9 A.
`10:09AM 10
`maximum claim of 0.5 and 1 millimeter.
`10:09AM 11 Q.
`10:09AM 12
`Solo GT infringes Claim 1 of the '911 Patent.
`10:09AM 13 A.
`10:09AM 14
`10:09AM 15
`10:09AM 16
`10:09AM 17
`10:09AM 18
`10:09AM 19
`10:09AM 20
`allowed.
`10:09AM 21 Q.
`10:10AM 22
`Claims 11 and 13 of the '911 Patent?
`10:10AM 23 A.
`10:10AM 24 Q.
`10:10AM 25 A.
`
`Did you also consider whether the Vuse Solo G2 infringes
`
`I did, yes, similarly to the Alto.
`
`And what was your opinion with respect to those claims?
`
`So you can see on screen again. As I mentioned, the
`
`So I viewed the '911 Patent, of course, but also the
`
`prior art, as well as the file history and the prior art that's
`
`listed in the file history. So prior art is basically, you
`
`know, any patent or any information, really, that existed and
`
`was known before the application date of the '911 Patent. The
`
`application date of the '911 Patent was December of 2010, so any
`
`patent that was issued or applied for before that and/or any
`
`other marketing materials or, you know, Websites, even
`
`newspapers -- other people may not read newspapers anymore, but
`
`in 2010 certainly they were published -- much more widely
`
`publicized, and even products, so if you can prove that the
`
`product existed from 2010, before the patent was applied for,
`
`and had the same features or technology, then that would
`
`invalidate the patent due to obviousness.
`
`Primarily, what I'll show you today, though, is there are
`
`going to be patents that are -- the information that's more
`
`easily to rely upon just because the dates are more easy to
`
`10:11AM 1 A.
`10:11AM 2
`10:11AM 3
`10:11AM 4
`10:11AM 5
`10:11AM 6
`10:11AM 7
`10:12AM 8
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`10:12AM 12
`10:12AM 13
`10:12AM 14
`10:12AM 15
`10:12AM 16
`10:12AM 17
`10:12AM 18
`verify.
`10:12AM 19 Q.
`10:12AM 20
`to talk about today are prior art to the '911 Patent?
`10:12AM 21 A.
`10:12AM 22 Q.
`10:12AM 23
`10:12AM 24
`the art that we talked about earlier?
`10:12AM 25 A.
`
`Does Dr. Abraham dispute that the references you're going
`
`No, I don't believe so.
`
`In forming your opinions about invalidity, did you
`
`consider that from the view of a person having ordinary skill in
`
`Yes. Again, as I mentioned, the patents are written, you
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`06/21/2022 08:45:49 AM
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 4 of 15 PageID# 34606
`645
`647
`
`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
`
`646
`
`648
`
`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
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`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
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`dimensional range for the cavity or the blind hole of 0.5 to
`
`06/21/2022 08:45:49 AM
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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 5 of 15 PageID# 34607
`649
`651
`
`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
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
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`650
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`652
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`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
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`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
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`inside what's called the second passageway in the patent and
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`that's a cavity. So it discloses an absorbant pad or capillary
`
`What's the purpose of the capillary material in Murphy's
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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 6 of 15 PageID# 34608
`669
`671
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`I did not vape on the G2. That's correct.
`
`And at the time of your deposition, sir, you also had not
`
`That's correct.
`
`So that means at the time of your deposition you'd never
`
`That's correct.
`
`Okay. And as of the time of your deposition, you also
`
`That's correct.
`
`And at the time of your deposition you also hadn't
`
`11:05AM 1 A.
`11:05AM 2 Q.
`11:05AM 3
`activated the vaporization of the Alto, right?
`11:05AM 4 A.
`11:05AM 5 Q.
`11:05AM 6
`turned on the Alto, right?
`11:05AM 7 A.
`11:05AM 8 Q.
`11:05AM 9
`had not performed any liquid wastage testing on the G2, correct?
`11:05AM 10 A.
`11:05AM 11 Q.
`11:05AM 12
`performed any liquid wastage testing on the Alto, right?
`11:05AM 13 A.
`11:05AM 14 Q.
`11:05AM 15
`11:05AM 16
`infringement of the Solo G2 and Alto on the '911 Patent, right?
`11:05AM 17 A.
`11:05AM 18 Q.
`11:05AM 19
`11:05AM 20
`replicated any of the testing performed by Dr. Abraham, correct?
`11:06AM 21 A.
`11:06AM 22 Q.
`11:06AM 23
`11:06AM 24
`11:06AM 25
`
`Yes.
`
`Now, you told the jury you were here the other day when
`
`Philip Morris's expert, Dr. Abraham, testified about
`
`Yes, I was.
`
`And just to be clear, at the time of your deposition,
`
`sir, you had spent 600 hours on the case, but you had not
`
`I did not replicate his testing, yes.
`
`And by the time of your deposition, you had worked for
`
`600 hours on the case, but you also hadn't performed any of your
`
`own testing to refute any of the testing performed by
`
`Dr. Abraham, correct?
`
`11:07AM 1
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`BY MR. SOBOLSKI:
`11:07AM 9 Q.
`11:07AM 10
`11:07AM 11
`correct?
`11:07AM 12 A.
`11:07AM 13
`products.
`11:07AM 14 Q.
`11:07AM 15
`11:07AM 16
`that okay?
`11:07AM 17 A.
`11:07AM 18 Q.
`11:07AM 19
`mouthpiece, right?
`11:07AM 20 A.
`11:07AM 21 Q.
`11:07AM 22
`called a raised lip, right?
`11:07AM 23 A.
`11:07AM 24 Q.
`11:08AM 25
`
`MR. MAIORANA: Objection, Your Honor. You've heard now
`
`three times on the hours of --
`
`THE COURT: Yes, we've heard it enough. Get that out of
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`your questions, please.
`
`MR. SOBOLSKI: Absolutely, Your Honor. May I ask the
`
`question?
`
`THE COURT: Yes, without the 600 hours.
`
`At the time of your deposition, you were not even asked
`
`to do any functional testing of any of the Reynolds devices,
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`I did not do any functional testing on the Reynolds
`
`So then let's turn to your opinions about infringement.
`
`Let's start with the shape of the Reynolds Solo G2 device, is
`
`Okay.
`
`Very good. Now, we agree the Solo G2 includes a
`
`Yes.
`
`And the Solo G2 mouthpiece includes a design feature
`
`Yes.
`
`And you agree that the raised lip in the Solo G2 is
`
`designed to minimize leakage out of the device, right?
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
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`670
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`672
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`I did not perform testing on the Solo G2 and the Alto.
`
`Do you think that the '911 Patent requires specific
`
`Requires specific functions? As relates to what topic
`
`Well, you had a demonstrative --
`
`There are several different requirements to it --
`
`THE COURT: Wait, wait. One at a time.
`
`11:06AM 1 A.
`11:06AM 2 Q.
`11:06AM 3
`functions?
`11:06AM 4 A.
`11:06AM 5
`are you talking about?
`11:06AM 6 Q.
`11:06AM 7 A.
`11:06AM 8
`11:06AM 9
`BY MR. SOBOLSKI:
`11:06AM 10 Q.
`11:06AM 11 A.
`11:06AM 12
`11:06AM 13
`you're asking me about.
`11:06AM 14 Q.
`11:06AM 15
`11:06AM 16
`recall that?
`11:06AM 17 A.
`11:06AM 18 Q.
`11:06AM 19
`demonstrative, right?
`11:06AM 20 A.
`11:07AM 21 Q.
`11:07AM 22
`11:07AM 23
`11:07AM 24
`11:07AM 25
`
`I'm sorry, sir. I thought you were finished. Please.
`
`I'm sorry. Yes, the claim language has multiple
`
`requirements to it, so I'm not sure specifically which function
`
`Sure. You put up a demonstrative in which you said the
`
`'911 Patent requires specific shapes and positions. Do you
`
`Yes.
`
`But you never highlighted functions on that
`
`That's correct.
`
`And that's because in the 600 hours that you spent
`
`working on this case up to the time of your deposition, you were
`
`not even asked to do any functional testing on any of the
`
`Reynolds devices, correct?
`
`THE COURT: Wait. There's an objection.
`
`Yes.
`
`And even though the Solo G2 has this design feature, your
`
`That's correct.
`
`Now, it's fair to say that it's your opinion that the
`
`Solo G2 doesn't have a blind hole is based on your understanding
`
`that the embodiments of Figures 5 and 6 in the '911 Patent do
`
`No, it's based -- can I answer just not yes or no? It's
`
`based upon my experience of designing products, and when we
`
`design products we're very specific about the geometries and the
`
`definitions that we use.
`
`What's shown in the Solo G2 is not what an expert would
`
`consider a blind hole; it would be considered, as I mentioned,
`
`11:08AM 1 A.
`11:08AM 2 Q.
`11:08AM 3
`theory is it doesn't have a blind hole, right?
`11:08AM 4 A.
`11:08AM 5 Q.
`11:08AM 6
`11:08AM 7
`11:08AM 8
`not represent a blind hole, right?
`11:08AM 9 A.
`11:08AM 10
`11:08AM 11
`11:08AM 12
`11:08AM 13
`11:08AM 14
`11:08AM 15
`an annular groove.
`11:08AM 16 Q.
`11:08AM 17 A.
`11:08AM 18 Q.
`11:08AM 19 A.
`11:09AM 20 Q.
`11:09AM 21
`11:09AM 22
`11:09AM 23
`BY MR. SOBOLSKI:
`11:09AM 24 Q.
`11:09AM 25
`
`You recall being deposed in this case, correct?
`
`I do, yes.
`
`And I asked you about this issue. Do you recall that?
`
`Yes.
`
`Let's see if we can pull that up. Let's go to your
`
`deposition, sir, page 212.
`
`MR. SOBOLSKI: Bring up line 21.
`
`The question was: "Is it fair to say that your opinions
`
`about noninfringement of the blind hole limitation for the
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`Case 1:20-cv-00393-LMB-TCB Document 1387-6 Filed 07/13/22 Page 7 of 15 PageID# 34609
`673
`675
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`accused products is based on your understanding that the
`
`embodiments of Figures 5 and 6 are not part of Claim 1 of the
`
`'911 Patent?"
`
`Did I read the question correctly?
`
`You read it correctly, yes.
`
`The witness's answer was, "I would say, yes, Claim 1
`
`POSITA, Figures 5 and 6 do not represent a blind hole. It's
`
`much more of what we would call perhaps an annular groove."
`
`MR. MAIORANA: Your Honor, it's the exact same answer he
`
`gave.
`
`THE COURT: I'm not hearing any inconsistency at this
`
`point, but I don't want a million objections either, all right?
`
`Mr. Kodama, you considered the '911 Patent's file history
`
`Yes, I did.
`
`And the file history refers to the public record of that
`
`11:09AM 1
`11:09AM 2
`11:09AM 3
`11:09AM 4
`11:09AM 5 A.
`11:09AM 6 Q.
`11:09AM 7
`refers specifically to a blind hole. And in my opinion, as
`11:09AM 8
`11:09AM 9
`11:09AM 10
`11:09AM 11
`11:09AM 12
`11:10AM 13
`11:10AM 14
`BY MR. SOBOLSKI:
`11:10AM 15 Q.
`11:10AM 16
`when you were preparing those expert reports, right?
`11:10AM 17 A.
`11:10AM 18 Q.
`11:10AM 19
`back-and-forth between the patent examiner and the patent
`11:10AM 20
`applicants, right?
`11:10AM 21 A.
`11:10AM 22 Q.
`11:10AM 23
`to be before it was allowed?
`11:10AM 24 A.
`11:10AM 25
`
`Yes.
`
`It's sort of like the history of how the '911 Patent came
`
`Yes.
`
`MR. SOBOLSKI: Let's bring up PX 8A, please.
`
`Okay. And the examiner, just to the right of that,
`
`I do.
`
`And just under that, Number 3, it says, "Primary, Lynne
`
`Yes.
`
`Now, "primary examiner," that means senior examiner at
`
`Yes.
`
`Now, examiners at the Patent Office like Mr. Ruddie and
`
`Yes.
`
`So we can safely assume that the '911 Patent examiners
`
`Yes.
`
`And because they have expertise in the '911 Patent's art,
`
`11:12AM 1 Q.
`11:12AM 2
`that's Elliott S. Ruddie. Do you see that?
`11:12AM 3 A.
`11:12AM 4 Q.
`11:12AM 5
`Anderson." Do you see that?
`11:12AM 6 A.
`11:12AM 7 Q.
`11:12AM 8
`the Patent Office. Do you understand that?
`11:12AM 9 A.
`11:12AM 10 Q.
`11:12AM 11
`Ms. Anderson have expertise in the art of the patent application
`11:12AM 12
`they're reviewing, right?
`11:12AM 13 A.
`11:12AM 14 Q.
`11:12AM 15
`here have expertise in the art of the '911 Patent, right?
`11:12AM 16 A.
`11:12AM 17 Q.
`11:12AM 18
`we can assume that examiners understand the '911 Patent's
`11:12AM 19
`claims, right?
`11:12AM 20 A.
`11:12AM 21
`11:13AM 22
`11:13AM 23
`11:13AM 24
`11:13AM 25
`
`Yes.
`
`MR. SOBOLSKI: Well, let's go to page 4 -- I'm sorry, page
`
`5. And blow up on the screen so the jury can see the part that
`
`says "the examiner suggested structure" -- and can we bring that
`
`up, Mr. Smith, blow up that part of it so we can all see it.
`
`BY MR. SOBOLSKI:
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`674
`
`676
`
`And you understand -- you recognize this as part of the
`
`Yes, I do.
`
`And you understand that at one point the examiners and
`
`Yes.
`
`MR. MAIORANA: Your Honor, I believe -- we didn't get
`
`binders so I don't have copies of the exhibits they were reading
`
`from.
`
`THE COURT: All right. Well, of course, they are visible
`
`on the screen, but the protocol has been in the past, since