Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 1 of 10 PageID# 26413
`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 1 of 10 PagelD# 26413
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`EXHIBIT 2(cid:3)
`EXHIBIT 2
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 2 of 10 PageID# 26414
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`IN THE UNITED STA TES DISTRI
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`FOR THEE TERN DJ RI T OF VIR INIA
`XANDRlA DI I 10
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`. 1:2 -cv- 0 3-L -
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`laintiff! and aunt rclaim D fi ndan
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`V.
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`L · PHI fP
`Vl
`. ; and PHILIP MORR!
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`Defendant and
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`unterclaim Plaintiff: .
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`REBUTTAL EXP i RT REPOR
`p
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`ated:
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 3 of 10 PageID# 26415
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`as being unpatentable over Sprinkel (US 5,649,554) in view of Thorens (US 2011/0155153).
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`PMP_EDVA00001276- PMP_EDVA00001281. The Examiner indicated that claims 25-29
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`would be allowable if rewritten in independent form. PMP_EDVA00001281-
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`PMP_EDVA00001282.
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`48.
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`On May 9, 2017, the Applicant submitted claim amendments to remove
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`“substantially perpendicular” from claim 30 to overcome the § 112 rejection. The Applicant
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`disagreed with all other objection and rejections, and no other amendments were made. A
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`Notice of Allowance was issued on July 17, 2017. PMP_EDVA00001335.
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`C.
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`49.
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`Asserted Claims
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`I understand that Philip Morris alleged infringement by Reynolds of claims 1, 3-5,
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`8 and 17 of the ’265 Patent in its infringement contentions, but that Mr. Walbrink offered
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`opinions on alleged infringement of only claims 1, 4-5, 8, and 17 of the ’265 Patent.
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`Accordingly, I understand that Philip Morris presently asserts infringement of only claims 1, 4-5,
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`8, and 17 of the ’265 Patent (“Asserted Claims”). Regardless, it is my opinion that none of these
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`claims 1, 3-5, 8 and 17 are infringed or have been shown to be infringed by Mr. Walbrink.
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`D.
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`50.
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`Court’s Claim Construction
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`I understand that the Court issued a Claim Construction Order on November 24,
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`2020, but did not construe any terms of the ’265 Patent. I also understand that, according to the
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`Court, the terms that were proposed for construction “are all well-known common English words
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`given their common meaning.” Therefore, I have applied the plain and ordinary meaning of the
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`terms of the ’265 Patent as understood by a POSITA at the time of the invention, in view of the
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`specification and intrinsic record. In the event that the Court construes any terms of the ’265
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`Patent at a later time, I reserve the right to amend and supplement my opinions in this rebuttal
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`report.
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 4 of 10 PageID# 26416
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`section is a circle. Thus, the claim language indicates that “dimensions substantially the same as
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`a cross-section of a cigarette or cigar” are dimensions of a circle.
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`82.
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`I have reviewed the specification of the ’265 Patent, and it provides few details
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`about what dimensions are within the scope of this Claim 1 limitation. The ’265 Patent does not
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`specify what should be measured or provide a range of measured values that would be
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`“substantially the same as a cross-section of a cigarette or cigar.” The specification uses
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`language similar to that in Claim 1, but without further explanation—“dimensions of the cross-
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`section of a cigarette or a small cigar.” Id., Abstract, 4:54-55. In several instances, the ’265
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`Patent specification discloses that the “vaporizer membrane” is in “large-area contact” with the
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`“thermal resistor.” Id., Abstract, 5:52-53, 8:18-20 (emphasis added). The ’265 Patent also
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`discloses:
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`The above-described structural design of the vaporizer device achieves not only a
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`very high vaporizing efficiency but also the highest degree of vaporization
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`uniformity due to the fact that the invention provides the largest possible contact
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`area between the thermal resistor foil and the vaporizer membrane or vaporizer
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`membranes.
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`Id., 5:59-64 (emphasis added). In view of the language of Claim 1 and these disclosures in the
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`specification, a POSITA would understand “dimensions substantially the same as a cross-section
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`of a cigarette or a cigar” to define an essentially circular shape that fits within an electronic
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`cigarette that is largely the same size as a cigarette or cigar and creates a large contact area with
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`the vaporizer membrane.
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`83.
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`The ’265 Patent’s Fig. 1 and Fig. 2 show thermal resistors having an essentially
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`circular shape. The thermal resistors shown in these figures do not extend all the way to the edge
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 5 of 10 PageID# 26417
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`and 24 mm are often te1med 'slim.' those beti.¥een 19 and 22 mm are refe11'ed to
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`as demi-slims and those in the range 14---19 mm ai-e te1med 'super slim'. There
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`are also a few 'wide' cigarettes on the market with circumferences of27-28 mm
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`which are considerably larger than traditional king size cigarettes.
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`Id. at 111-12.
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`100. Using the cir umferenes mentioned in this article, I calculated
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`l
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`indicated in the following table:
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`Circumferen
`14to 19 mm
`19 to22mm
`22 to24mm
`24 to 25 mm
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`I repeated the comparison abo e using these values as shown in the following table.
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`gain the
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`differnnces are substantial.
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`Cigarette Cross(cid:173)
`ectional Area
`62.4 mm2
`58.0 mm2
`49.7 mm2
`45.8 mm2
`38.5 mm2
`28.7 mm2
`15.6 mm2
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`.Accordingly the Accused Products do not practice this limitation or infringe Claim 1.
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`101. Another problem with Mr. Walbrink's analysis is that this limitation recites
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`' dimensions ubstantially the same as a cross-section of a cigarette or a cigar. As I explained
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`above a POSIT A would understand "dimensions substantially the same as a cross-section of a
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`cigarette or a cigar" to define an essentially circular shape that fits within the electronic cigarette
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`and creates a large contact area with the vapo1izer membrane. A POSIT A would not consider
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 6 of 10 PageID# 26418
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`what Mr. Walbrink has identified as the “thermal resistor” to have such dimensions. Its
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`dimensions are nothing like those of the thermal resistors (101, 102) in the ’265 Patent’s Fig. 1,
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`which are both essentially circular.
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`Mr. Walbrink’s Image
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`Fig. 1 (a)
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`Fig. 1 (b)
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`102. Mr. Walbrink opines that “dimensions substantially the same as a cross-section of
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`a cigarette or a cigar” are recited because they “enable a conventional smoking experience,
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`where a user holds the cigarette/cigar between their fingers and lips when smoking.” Walbrink
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`Infringement Report ¶ 65. This is an example of Mr. Walbrink ignoring what the ’265 Patent
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`actually discloses regarding the dimensions of the thermal resistor. As I discussed above, the
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`’265 Patent discloses that “dimensions substantially the same as a cross-section of a cigarette or
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`a cigar” to ensure that the vaporizer membrane is “in large-area contact” with the thermal
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`resistor. ’265 Patent, Abstract, 5:52-53, 8:18-20. The ’265 Patent teaches that it is important to
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`“provide[] the largest possible contact area between the thermal resistor foil and the vaporizer
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`membrane or vaporizer membranes” in order to “achieve[] not only a very high vaporizing
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`efficiency but also the highest possible degree of vaporization uniformity.” Id., 5:59-64. The
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`alleged “thermal resistor” identified by Mr. Walbrink is not designed to achieve “large-area
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`contact” like the thermal resistors actually disclosed in the ’265 Patent and shown in Fig. 1 and
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`Fig. 2.
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`103. To the extent Mr. Walbrink opines that the dimensions of the thermal resistor are
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`important to “enable a conventional smoking experience” and mimic the conventional cigarette
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 7 of 10 PageID# 26419
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`experience, then simply looking at the design and shape of the Accused Products shows that they
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`were not designed to resemble a conventional cigarette, and they do not have the shape of a
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`conventional cigarette. Below are side-by-side images of the Accused Products and
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`conventional cigarettes. It’s plain to see that they do not have the same design or cross-sectional
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`dimensions.
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`VUSE Alto
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`Alto Pod
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`Conventional Cigarette
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`104.
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`In an attempt to bolster his flawed analysis, Mr. Walbrink discusses several other
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`Philip Morris patents, apparently because he cannot find anything in the ’265 Patent itself to
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`support his opinions. These other patents and patent publications describe different inventions,
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`not the alleged invention of the ’265 Patent. To the extent their disclosures are relevant at all,
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`they actually support my opinion that the Accused Products do not practice this limitation. For
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 8 of 10 PageID# 26420
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`example U.S. Patent No. 8,733,346 (' 346 patent ') discloses:
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`In this context the phrase ' shape and dimensions of a cigarette or cigar means
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`that the combined pat1s of the device the heating member (2) and mouthpiece (3)
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`are of an essentially cyli11drical shape and have a diameter of between approx. 6
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`and approx. 14 mm, preferably between approx. 8 and 11 mm and a length of
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`approx. 50 to approx. 1 0 mm, preferably between approx. 75 and approx. 105
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`mm.
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`'346 patent 3:31 -37 (emphasis added).
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`either the alleged ''the1mal resistor' nor the Accused
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`Products have "an essentially cylindrical shape." And when the resistive heater is properly
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`measured, as I have done above, it does not have "dimensions sub tantiaUy the same as' those
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`disclosed in the 346 patent. In the table below I have performed the same comparison as 1 did
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`above for the cigarette dimensions in the FDA submission and study. These numbers confom
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`that the dimensions of the S-shap d resistive heater trace ru·e not' substantially the same."
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`igarette or Cigar
`Diameter / Cross(cid:173)
`ectiona.1 Area
`14 mm / 153 .9 mm2
`11 mm / 95 .0mm2
`8 mm / 50.3 mm2
`6 mm I 28.3 llllll2
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`105.
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`imilarly .Mr. Walbrink seeks suppo11 for his opinions in U .. Patent No.
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`10 104 911 (' 911 patent '), but it too actually supp011s my opinion that the ccused Prnducts do
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`not have a "thennal resistor with 'dimensions sub tantially the same as a cross-section of a
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`cigru·ette or a cigar." In full context the portion of the ' 911 patent that :Mr. Walbrink references
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`says:
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`In FIGS. 3 and 4, the cavities are substa11tially cyli11drical with a substa11tially
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 9 of 10 PageID# 26421
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`circular cross section. . .. In FIGS. 3 and 4 the cross sectional dimension of the
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`aerosol generating system at the air outlet end is shown as W and the cross
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`sectional dimension of the air outlet itself is shown as w. W and w may have any
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`suitable values. For example, W may be between 5 mm and 30 mm which is the
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`typical range of diameters of cigai-ettes and cigaTs.
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`'9 11 patent 10:65-11:7 (emphasi added).
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`gain, neither the alleged "thennal resistor' nor the
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`Accused Products are ' substantially cylindrical with a substantially circular cross section.' Also,
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`when the resistive heater is properly measured, as I have done above it does not have
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`"dimensions substantially the same as" tho e disclosed in the '911 patent. In the table below I
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`have performed the same comparison as I did above for the cigarette dimensions in the FD
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`submission and stud . These numbers con:fum that the dimensions of the S-shaped resistive
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`heater trace ru·e not "substantially the same."
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`Cigru·ette or Cigar
`Diameter I Cross(cid:173)
`Sectional Area
`30 mm / 706.9 mm2
`mm / 19.6mm2
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`U.S. Patent o. 10 555 556 (" 556 patent") which Mr. Walbrink also references discloses that
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`'[t]he smoking system may have an external diameter between approximately 5 mm and
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`approximately 30 mm." '556 patent 7:1-3. For the same reasons as above when the resistive
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`heater is properly measured it does not have' dimensions substantially the same as" the e
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`dimensions.
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`106. The properly measured resistive heater also does not have 'dimensions
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`substantially the same as" those in the ruticle cited in Pru·agraph 67 of Mr. Walbrink's repo11.
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`The table below reflects the ame comparison that I have done several times above and it shows
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`Case 1:20-cv-00393-LO-TCB Document 952-2 Filed 02/11/22 Page 10 of 10 PageID# 26422
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`cigar.” Without this analysis and explanation, Mr. Walbrink’s opinion is incomplete and
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`unreliable.
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`109. Mr. Walbrink says that he disagrees that “the claimed ‘dimensions’ must result in
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`a cylindrical or circular shape or some other ‘dimensions.’” Walbrink Infringement Report ¶ 68.
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`He claims that the Court rejected this proposed construction and construed the term to have its
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`plain and ordinary meaning, which is not limited to a circular shape. Id. I understand that the
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`Court stated in its Claim Construction Order “that none of the ... terms in dispute should be
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`modified” and that “[t]hey are well known common English words given their common
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`meaning.” Claim Construction Order at 1. But I also understand that the plain and ordinary
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`meaning is that given to the terms by a POSITA in view of the specification and intrinsic record,
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`when there is no claim construction. As I explained above, the plain and ordinary meaning of
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`“dimensions substantially the same as a cross-section of a cigarette or a cigar,” in view of the
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`specification and intrinsic record, would define an essentially circular shape. And as I also
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`explained above, some of the references on which Mr. Walbrink attempts to rely to bolster his
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`faulty opinion also support my opinion.
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`110. Mr. Walbrink’s opinion on alleged infringement under the doctrine of equivalents
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`further shows that his opinion on infringement is based on a faulty interpretation of the claim
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`limitation and the alleged invention described in the ’265 Patent. Mr. Walbrink misstates the
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`function of a “thermal resistor” having “dimensions substantially the same as a cross-section of a
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`cigarette or a cigar.” Mr. Walbrink opines that “[t]he function of this limitation is to ‘retain[] the
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`consumer experience of a conventional cigarette,” citing column 1, lines 32-38 of the ’265
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`Patent. Walbrink Infringement Report ¶ 71. Certainly, the ’265 Patent discloses a desire that the
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`electronic cigarette operate as “a substitute for the conventional cigarette” and “retain[] the
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