Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 1 of 11 PageID# 36608
`
`Exhibit 2
`Public Redacted Version
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 2 of 11 PageID# 36609
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`PHILIP MORRIS PRODUCTS S.A.,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`R.J. REYNOLDS VAPOR COMPANY,
`
`Defendant.
`
`Case No. 1:20-cv-00393-LMB-TCB
`
`
`
`
`DECLARATION OF DR. JEFFREY C. SUHLING
`
`I, Jeffrey C. Suhling, declare as follows:
`
`1.
`
`I am a resident of Opelika, Alabama. I am currently employed as the Quina
`
`Distinguished Professor and Department Chair at the Department of Mechanical Engineering at
`
`Auburn University in Auburn, Alabama. I testified at trial as Defendant R.J. Reynolds Vapor
`
`Company’s (“RJRV”) technical expert concerning Plaintiff Philip Morris Products S.A.’s (“PMP”)
`
`patent, United States Patent No. 9,814,265 (“ ’265 Patent”).
`
`2.
`
`I offer this declaration to respond to statements contained in PMP’s recent brief and
`
`exhibits submitted in support of PMP’s motion for a permanent injunction, related to the issue of
`
`whether the patented features set forth in claims 1 and 4 of the ’265 Patent drive demand for the
`
`VUSE Alto product. I have reviewed the sections of PMP’s brief and Mr. Meyer’s declaration
`
`related to that issue, as well as the cited exhibits.
`
`3.
`
`PMP argues that “the ’265 patent claims include a novel compact heater that
`
`efficiently vaporizes e-liquid while allowing the device to retain the conventional smoking
`
`experience of a CC (combustible cigarette).” (PMP Brief at 11). PMP claims the patented heater
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 3 of 11 PageID# 36610
`
`drives consumer demand because the VUSE Alto’s “innovative ceramic wick and alloy heating
`
`element . . . combine to create high vapor production.” (PMP Brief at 11). PMP notes that a survey
`
`ranked the Alto as a top e-cigarette for “vapor consistency,” arguing that is another benefit of using
`
`the patented heater. (Id.) PMP also cites marketing materials and articles about the VUSE Alto’s
`
`use of the FEELM heater technology from Smoore. (PMP Brief at 11).
`
`4.
`
`PMP’s submission thus identifies three consumer benefits allegedly linked to the
`
`’265 Patent claims: 1) efficient vaporization, 2) high vapor production, and 3) vapor consistency.
`
`I also recall that PMP’s technical expert Mr. Walbrink testified at trial that the invention of the
`
`’265 Patent results in efficient vaporization of the e-liquid. (Trial Tr. at 293:14-20).
`
`5.
`
`PMP does not link these benefits to the language of claims 1 and 4 of the ’265
`
`Patent, however. PMP also does not explain how the use of the invention claimed in claims 1 and
`
`4 leads to efficient vaporization, high vapor production, or vapor consistency.
`
`6.
`
`The ’265 Patent does not discuss “high vapor production” explicitly. The ’265
`
`Patent specification does address efficient vaporization and vaporization uniformity (I understand
`
`“vaporization uniformity” to be the same as “vapor consistency”). The ’265 Patent teaches:
`
`The above-described structural design of the vaporizer device achieves not only a
`very high vaporizing efficiency but also the highest possible degree of vaporization
`uniformity due to fact that the invention provides the largest possible contact area
`between the thermal resistor foil and the vaporizer membrane or vaporizer
`membranes. ’265 Patent at Col. 5, ll. 59-64.
`
`
`
`7.
`
`The ’265 Patent thus teaches that, to obtain “vaporizing efficiency” and
`
`“vaporization uniformity,” an e-cigarette should use a resistor that provides the “largest possible
`
`contact area” between the resistor and the vaporizer membrane.
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 4 of 11 PageID# 36611
`
`
`
`8.
`
`The ’265 Patent discloses two embodiments of a resistor, one in the shape of a “dual
`
`coil” and the other in the shape of a “sinuous line.” These embodiments are pictured below in
`
`Figure 1 from the ’265 Patent:
`
`
`
`
`
`9.
`
`The “dual coil” embodiment would provide for a large contact area between the
`
`resistor and a vaporizer membrane. It is clear from a visual inspection of the figures that the
`
`sinuous line embodiment depicted in Figure 1 provides for slightly less contact area than the dual
`
`coil embodiment. A resistor could take the shape of an alternative sinuous line design while
`
`providing even less contact area than the sinuous line example depicted in Figure 1.
`
`
`
`10.
`
`PMP’s asserted patent claims 1 and 4 do not require a resistor having a large contact
`
`area with the vaporizer membrane. In fact, while the claims require the resistor to be “disposed in
`
`contact” with the vaporizer membrane, the claims do not say anything about whether the contact
`
`area between the resistor and the vaporizer membrane must be large, or small, or anything in
`
`between.
`
`
`
`11.
`
`Instead, the claims require a resistor in the shape of a “dual coil” (which could
`
`provide a large contact area) or in the shape of a “sinuous line” (which would not necessarily
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 5 of 11 PageID# 36612
`
`provide for a large contact area). Claims 1 and 4, the claims the jury found infringed, are set forth
`
`in full below with the relevant text underlined:
`
`
`
`Claim 1: “A vaporizer device for vaporizing a substance containing at least one active
`
`and/or aroma material, comprising:
`
`a mouthpiece, having at least one fluid inlet and at least one fluid outlet; and
`
`a heating device, configured to be connected to the mouthpiece, comprising:
`
`a thermal resistor comprising a metallic foil or a thin sheet in a shape of a
`dual coil and/or sinuous line, having two ends and dimensions substantially
`the same as a cross-section of a cigarette or a cigar,
`
`wherein interspaces of the shape are configured to allow a flow of fluid
`therethrough;
`
`at least one contact tab including a first contact tab and a second contact tab
`being connected to respective opposed ends of the dual coil and/or sinuous
`line of the thermal resistor, the first contact tab and the second contact tab
`not being in direct contact with each other; and
`
`at least one vaporizer membrane disposed in contact with the thermal
`resistor and being permeable to the flow of fluid, and which is wetted or can
`be wetted with the substance containing the at least one active and/or aroma
`material,
`
`wherein the thermal resistor and the at least one vaporizer membrane are
`arranged orthogonally or at an angle to a direction of the flow of fluid in the
`mouthpiece.” ’ 265 Patent at 9:23-50.
`
`
`
`
`
`Claim 4: “The vaporizer device according to claim 1, wherein the thermal
`resistor and the at least one contact tab are formed of different materials.”
`’265 Patent at 9:56-58.
`
`
`
`12. The VUSE Alto has a resistor in the shape of a “sinuous line.” The VUSE Alto’s
`
`resistor does not, however, provide for a large contact area with a vaporizer membrane. Depicted
`
`immediately below is a picture of the VUSE Alto’s resistor. I have colored the VUSE Alto resistor
`
`in red—the material to the left and right of the resistor is the metal contact tabs and is not part of
`
`the resistor. And just below that is a picture from Mr. Walbrink’s slides at trial, showing the VUSE
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 6 of 11 PageID# 36613
`
`Alto’s resistor attached to the underside of VUSE Alto’s ceramic wick (which the parties agreed
`
`was the “vaporizer membrane” recited in claim 1). As can be easily seen, the VUSE Alto’s resistor
`
`does not have “large contact area” with the vaporizer membrane, let alone the “largest possible
`
`contact area” taught by the ’265 Patent. In fact, unlike the embodiments depicted in the ’265 Patent,
`
`far more of the vaporizer membrane area is not in contact with the resistor.
`
`Vuse Alto Ceramic Wick and Thermal Resistor
`
`
`
`
`
`
`
`
`
`(PDX-3.010 (Walbrink Direct Demonstratives).)
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 7 of 11 PageID# 36614
`
`
`
`13.
`
`PMP has not tried to demonstrate that the VUSE Alto in fact achieves “high vapor
`
`production,” “vaporization efficiency,” or “vaporization consistency.” Even if it does, however,
`
`it does not do so by using a patented feature. The ’265 Patent claims 1 and 4 do not claim “high
`
`vapor production,” “vaporization efficiency,” or “vaporization consistency” as a patented feature,
`
`because those claims do not require the large contact area that the ’265 Patent teaches leads to the
`
`purported benefits. In addition, the VUSE Alto does not use a large contact area between a resistor
`
`and a vaporizer membrane.
`
`
`
`14.
`
`PMP contends that another benefit of the claimed invention is that the ’265 Patent’s
`
`“novel compact heater” allows “the device to retain the conventional smoking experience.” (PMP
`
`Brief at 11). I recall also that PMP’s expert Mr. Walbrink testified at trial about the element of
`
`’265 claim 1 requiring the resistor to have “dimensions substantially the same as a cross-section
`
`of a cigarette or a cigar.” Mr. Walbrink testified that the goal of this claim element was to enable
`
`an e-cigarette that consumers could hold between their fingers and handle and smoke like a
`
`conventional cigarette or cigar. (Trial Tr. at 320:20-321:3.)
`
`
`
`15.
`
`I agree with Mr. Walbrink that the claim element requiring the resistor to have
`
`“dimensions substantially the same as a cross-section of a cigarette or a cigar” could be used in an
`
`e-cigarette that has the form factor of a conventional cigarette or cigar. But I do not agree with
`
`Mr. Walbrink that the VUSE Alto mimics the experience of handling a conventional cigarette or
`
`cigar. While the jury found that the VUSE Alto has a resistor that meets this claim element, the
`
`VUSE Alto is not shaped and sized like a conventional cigarette or cigar.
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 8 of 11 PageID# 36615
`
`
`
`16.
`
`Simply looking at the design and shape of the VUSE Alto shows that it was not
`
`designed to resemble a conventional cigarette. The VUSE Alto does not have the shape or form
`
`factor of a conventional cigarette. It does not give the consumers the feel in their hands of a
`
`conventional cigarette, and the VUSE Alto’s mouthpiece looks quite different and will feel quite
`
`different in a consumer’s mouth than a conventional cigarette. Below are side-by-side images of
`
`the VUSE Alto and a conventional cigarette.
`
`VUSE Alto
`
`Alto Pod
`
`Conventional Cigarette
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 9 of 11 PageID# 36616
`
`
`
`17.
`
`Indeed, a comparison of the VUSE Alto products to other RJRV electronic
`
`cigarettes on the market shows that the VUSE Alto is the least similar to a conventional
`
`cigarette.
`
`A Comparison of the VUSE Alto to Other Electronic Cigarettes on the Market
`
`
`
`https://vusevapor.com/blog/find-your-favorites-complete-comparison-of-vuse-vapes
`
`
`
`18.
`
`
`
`PMP quotes a VUSE Alto marketing document as saying that the VUSE Alto’s
`
`“‘compact design’ is ‘engineered to mimic the cigarette experience in satisfaction and taste.’”
`
`(PMP Brief at 11, citing Ex. 38). But PMP, again, does not tie the “satisfaction and taste”
`
`referenced in that marketing document to any ’265 patented feature. PMP also misquotes the
`
`document, which actually says that the VUSE Alto product has a “compact design without
`
`compromising performance” and separately says the VUSE Alto product is “engineered to mimic
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 10 of 11 PageID#
`36617
`
`the cigarette experience in satisfaction and taste.” The marketing document does not say that the
`
`“compact design” is engineered to mimic a conventional cigarette, and as discussed above, the
`
`VUSE Alto was not designed to resemble a conventional cigarette or mimic a conventional
`
`cigarette.
`
`
`
`19.
`
`Finally, PMP relies on two articles to argue that one reason RJRV’s VUSE products
`
`overtook JUUL as the market leader is because “Juul products use a traditional cotton coil, while
`
`Vuse Alto has adopted a FEELM ceramic coil.” (PMP Brief at 12, see also PMP Brief at 24, citing
`
`Exhibits 3, 39). This description of the VUSE Alto is not correct. It is apparent that the articles’
`
`authors were not familiar with the VUSE Alto, because that product does not have a “ceramic
`
`coil.” Instead, the VUSE Alto has a ceramic wick, depicted in green below in this figure taken
`
`from the VUSE Alto PMTA. [Trial Ex. PX-028 at 38]. The ceramic wick is not a coil but a basin
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1423-2 Filed 09/02/22 Page 11 of 11 PageID#
`36618
`
`that receives the e-liquid, and the underside of that ceramic wick is in contact with the VUSE
`
`Alto’s resistor. Moreover, in any event, the ’265 Patent does not claim a “ceramic coil.”
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on September 1, 2022.
`
`Dr. Jeffrey C. Suhling
`
`