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`•
`Exhibit 2
`Public Redacted Version
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 2 of 11 PageID# 39466
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`PHILIP MORRIS PRODUCTS S.A.,
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`Plaintiff,
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`v.
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`R.J. REYNOLDS VAPOR COMPANY,
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`Defendant.
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`Case No. 1:20-cv-00393-LMB-TCB
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`DECLARATION OF DR. JEFFREY C. SUHLING
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`I, Jeffrey C. Suhling, declare as follows:
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`1.
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`I am a resident of Opelika, Alabama. I am currently employed as the Quina
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`Distinguished Professor and Department Chair at the Department of Mechanical Engineering at
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`Auburn University in Auburn, Alabama. I testified at trial as Defendant R.J. Reynolds Vapor
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`Company’s (“RJRV”) technical expert concerning Plaintiff Philip Morris Products S.A.’s (“PMP”)
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`patent, United States Patent No. 9,814,265 (“ ’265 Patent”).
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`2.
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`I offer this declaration to respond to statements contained in PMP’s recent brief and
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`exhibits submitted in support of PMP’s motion for a permanent injunction, related to the issue of
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`whether the patented features set forth in claims 1 and 4 of the ’265 Patent drive demand for the
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`VUSE Alto product. I have reviewed the sections of PMP’s brief and Mr. Meyer’s declaration
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`related to that issue, as well as the cited exhibits.
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`3.
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`PMP argues that “the ’265 patent claims include a novel compact heater that
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`efficiently vaporizes e-liquid while allowing the device to retain the conventional smoking
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`experience of a CC (combustible cigarette).” (PMP Brief at 11). PMP claims the patented heater
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`drives consumer demand because the VUSE Alto’s “innovative ceramic wick and alloy heating
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`element . . . combine to create high vapor production.” (PMP Brief at 11). PMP notes that a survey
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`ranked the Alto as a top e-cigarette for “vapor consistency,” arguing that is another benefit of using
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`the patented heater. (Id.) PMP also cites marketing materials and articles about the VUSE Alto’s
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`use of the FEELM heater technology from Smoore. (PMP Brief at 11).
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`4.
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`PMP’s submission thus identifies three consumer benefits allegedly linked to the
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`’265 Patent claims: 1) efficient vaporization, 2) high vapor production, and 3) vapor consistency.
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`I also recall that PMP’s technical expert Mr. Walbrink testified at trial that the invention of the
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`’265 Patent results in efficient vaporization of the e-liquid. (Trial Tr. at 293:14-20).
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`5.
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`PMP does not link these benefits to the language of claims 1 and 4 of the ’265
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`Patent, however. PMP also does not explain how the use of the invention claimed in claims 1 and
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`4 leads to efficient vaporization, high vapor production, or vapor consistency.
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`6.
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`The ’265 Patent does not discuss “high vapor production” explicitly. The ’265
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`Patent specification does address efficient vaporization and vaporization uniformity (I understand
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`“vaporization uniformity” to be the same as “vapor consistency”). The ’265 Patent teaches:
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`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.
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`7.
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`The ’265 Patent thus teaches that, to obtain “vaporizing efficiency” and
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`“vaporization uniformity,” an e-cigarette should use a resistor that provides the “largest possible
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`contact area” between the resistor and the vaporizer membrane.
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`8.
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`The ’265 Patent discloses two embodiments of a resistor, one in the shape of a “dual
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`coil” and the other in the shape of a “sinuous line.” These embodiments are pictured below in
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`Figure 1 from the ’265 Patent:
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`9.
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`The “dual coil” embodiment would provide for a large contact area between the
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`resistor and a vaporizer membrane. It is clear from a visual inspection of the figures that the
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`sinuous line embodiment depicted in Figure 1 provides for slightly less contact area than the dual
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`coil embodiment. A resistor could take the shape of an alternative sinuous line design while
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`providing even less contact area than the sinuous line example depicted in Figure 1.
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`10.
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`PMP’s asserted patent claims 1 and 4 do not require a resistor having a large contact
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`area with the vaporizer membrane. In fact, while the claims require the resistor to be “disposed in
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`contact” with the vaporizer membrane, the claims do not say anything about whether the contact
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`area between the resistor and the vaporizer membrane must be large, or small, or anything in
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`between.
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`11.
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`Instead, the claims require a resistor in the shape of a “dual coil” (which could
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`provide a large contact area) or in the shape of a “sinuous line” (which would not necessarily
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 5 of 11 PageID# 39469
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`provide for a large contact area). Claims 1 and 4, the claims the jury found infringed, are set forth
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`in full below with the relevant text underlined:
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`Claim 1: “A vaporizer device for vaporizing a substance containing at least one active
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`and/or aroma material, comprising:
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`a mouthpiece, having at least one fluid inlet and at least one fluid outlet; and
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`a heating device, configured to be connected to the mouthpiece, comprising:
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`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,
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`wherein interspaces of the shape are configured to allow a flow of fluid
`therethrough;
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`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
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`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,
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`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.
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`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.
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`12. The VUSE Alto has a resistor in the shape of a “sinuous line.” The VUSE Alto’s
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`resistor does not, however, provide for a large contact area with a vaporizer membrane. Depicted
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`immediately below is a picture of the VUSE Alto’s resistor. I have colored the VUSE Alto resistor
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`in red—the material to the left and right of the resistor is the metal contact tabs and is not part of
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`the resistor. And just below that is a picture from Mr. Walbrink’s slides at trial, showing the VUSE
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 6 of 11 PageID# 39470
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`Alto’s resistor attached to the underside of VUSE Alto’s ceramic wick (which the parties agreed
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`was the “vaporizer membrane” recited in claim 1). As can be easily seen, the VUSE Alto’s resistor
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`does not have “large contact area” with the vaporizer membrane, let alone the “largest possible
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`contact area” taught by the ’265 Patent. In fact, unlike the embodiments depicted in the ’265 Patent,
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`far more of the vaporizer membrane area is not in contact with the resistor.
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`Vuse Alto Ceramic Wick and Thermal Resistor
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`vaporizer
`meml>rane
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`sinuous
`thermal
`resistor
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`(PDX-3.010 (Walbrink Direct Demonstratives).)
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`13.
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`PMP has not tried to demonstrate that the VUSE Alto in fact achieves “high vapor
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`production,” “vaporization efficiency,” or “vaporization consistency.” Even if it does, however,
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`it does not do so by using a patented feature. The ’265 Patent claims 1 and 4 do not claim “high
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`vapor production,” “vaporization efficiency,” or “vaporization consistency” as a patented feature,
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`because those claims do not require the large contact area that the ’265 Patent teaches leads to the
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`purported benefits. In addition, the VUSE Alto does not use a large contact area between a resistor
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`and a vaporizer membrane.
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`14.
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`PMP contends that another benefit of the claimed invention is that the ’265 Patent’s
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`“novel compact heater” allows “the device to retain the conventional smoking experience.” (PMP
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`Brief at 11). I recall also that PMP’s expert Mr. Walbrink testified at trial about the element of
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`’265 claim 1 requiring the resistor to have “dimensions substantially the same as a cross-section
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`of a cigarette or a cigar.” Mr. Walbrink testified that the goal of this claim element was to enable
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`an e-cigarette that consumers could hold between their fingers and handle and smoke like a
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`conventional cigarette or cigar. (Trial Tr. at 320:20-321:3.)
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`15.
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`I agree with Mr. Walbrink that the claim element requiring the resistor to have
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`“dimensions substantially the same as a cross-section of a cigarette or a cigar” could be used in an
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`e-cigarette that has the form factor of a conventional cigarette or cigar. But I do not agree with
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`Mr. Walbrink that the VUSE Alto mimics the experience of handling a conventional cigarette or
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`cigar. While the jury found that the VUSE Alto has a resistor that meets this claim element, the
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`VUSE Alto is not shaped and sized like a conventional cigarette or cigar.
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 8 of 11 PageID# 39472
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`16.
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`Simply looking at the design and shape of the VUSE Alto shows that it was not
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`designed to resemble a conventional cigarette. The VUSE Alto does not have the shape or form
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`factor of a conventional cigarette. It does not give the consumers the feel in their hands of a
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`conventional cigarette, and the VUSE Alto’s mouthpiece looks quite different and will feel quite
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`different in a consumer’s mouth than a conventional cigarette. Below are side-by-side images of
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`the VUSE Alto and a conventional cigarette.
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`VUSE Alto
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`Alto Pod
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`Conventional Cigarette
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 9 of 11 PageID# 39473
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`17.
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`Indeed, a comparison of the VUSE Alto products to other RJRV electronic
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`cigarettes on the market shows that the VUSE Alto is the least similar to a conventional
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`cigarette.
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`A Comparison of the VUSE Alto to Other Electronic Cigarettes on the Market
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`https://vusevapor.com/blog/find-your-favorites-complete-comparison-of-vuse-vapes
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`18.
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`PMP quotes a VUSE Alto marketing document as saying that the VUSE Alto’s
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`“‘compact design’ is ‘engineered to mimic the cigarette experience in satisfaction and taste.’”
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`(PMP Brief at 11, citing Ex. 38). But PMP, again, does not tie the “satisfaction and taste”
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`referenced in that marketing document to any ’265 patented feature. PMP also misquotes the
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`document, which actually says that the VUSE Alto product has a “compact design without
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`compromising performance” and separately says the VUSE Alto product is “engineered to mimic
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 10 of 11 PageID#
`39474
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`the cigarette experience in satisfaction and taste.” The marketing document does not say that the
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`“compact design” is engineered to mimic a conventional cigarette, and as discussed above, the
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`VUSE Alto was not designed to resemble a conventional cigarette or mimic a conventional
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`cigarette.
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`19.
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`Finally, PMP relies on two articles to argue that one reason RJRV’s VUSE products
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`overtook JUUL as the market leader is because “Juul products use a traditional cotton coil, while
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`Vuse Alto has adopted a FEELM ceramic coil.” (PMP Brief at 12, see also PMP Brief at 24, citing
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`Exhibits 3, 39). This description of the VUSE Alto is not correct. It is apparent that the articles’
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`authors were not familiar with the VUSE Alto, because that product does not have a “ceramic
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`coil.” Instead, the VUSE Alto has a ceramic wick, depicted in green below in this figure taken
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`from the VUSE Alto PMTA. [Trial Ex. PX-028 at 38]. The ceramic wick is not a coil but a basin
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`Case 1:20-cv-00393-LMB-WEF Document 1462-2 Filed 04/05/23 Page 11 of 11 PageID#
`39475
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`that receives the e-liquid, and the underside of that ceramic wick is in contact with the VUSE
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`Alto’s resistor. Moreover, in any event, the ’265 Patent does not claim a “ceramic coil.”
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on September 1, 2022.
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`Dr. Jeffrey C. Suhling
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