Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 1 of 12 PageID# 26430
`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 1 of 12 PagelD# 26430
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`EXHIBIT 4(cid:3)
`EXHIBIT 4
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 2 of 12 PageID# 26431
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`Case No. 1:20-cv-00393-LO-TCB
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`v.
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and Counterclaim Defendants,
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
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`Defendants and Counterclaim Plaintiffs.
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`RESPONSIVE EXPERT REPORT OF KELLY R. KODAMA
`REGARDING U.S. PATENT NO. 10,555,556
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 3 of 12 PageID# 26432
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`A.
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`11.
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`12.
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`Claim Construction
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`I understand that a patent’s claims define the scope of the alleged invention.
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`I understand that claim construction is a legal issue to be decided by the Court. I
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`understand that in this case the Court has declined to issue any specific constructions for any
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`disputed terms. Accordingly, I have given all terms their ordinary and customary meaning as
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`would be understood by a person of skill in the art at the time of the invention, read in context of
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`the entire claim and the patent as a whole, including the specification and prosecution history.
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`B.
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`13.
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`Person of Ordinary Skill in the Art
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`I have been informed that certain questions in patent law are assessed from the
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`perspective of a hypothetical person of ordinary skill in the art to which the invention pertains. I
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`understand that a person of ordinary skill in the art is a person with a level of experience,
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`education, or training generally possessed by those individuals who work in the area or field of
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`the invention at the time of the invention. A person of ordinary skill is also a person of ordinary
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`creativity that can use common sense to solve problems
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`C.
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`Infringement
`1.
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`Direct Infringement
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`14.
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`I understand that an accused infringer of a U.S. patent may be found to directly
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`infringe if they make, use, sell, or offer for sale in the United States or import into the United
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`States a patented invention. I understand that an accused product infringes an independent claim
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`only if it practices each limitation of the independent claim. This principle is sometimes referred
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`to as the “all elements rule.” I also understand that an accused product infringes a dependent
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`claim only if it infringes the independent claim from which it depends and practices the
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`additional limitations in the dependent claim.
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`3
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 4 of 12 PageID# 26433
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`Optnin,of
`Ctnimk Substnitt
`44
`----------
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`First Part
`32
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`S.cond Part
`34
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`·---------
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`Ctrtmk Substr.tt
`42
`First C.plll;uy
`Material
`36
`S.cond Capillary
`Material
`38
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`.
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`--······--,
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`Figure 3
`(anno~ttd)
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`Liquid Aerosol-
`Formin1 Substnitt
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`Hcxuing
`2•
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`32
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`3'
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`
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`the housing having an opening
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`Liquid
`Stonigt
`Portion
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`FIG. 2
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`65.
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`66.
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`lltr
`Assembly
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` In the ’556 patent, the opening of the housing is at the mouth end of
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`the device, i.e., at the mouth end where the user draws vapor from the device.
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`23
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 5 of 12 PageID# 26434
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`71.
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`72.
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`But dming the prosecution histo1y of the '556 patent, the Applicant distinguished
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`the Dubief prior rut reference by arguing that the claimed "opening" of the housing is not for an
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`"airflow path," but is instead an "opening" for receiving delive1y of "the substrate in liquid
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`f01m"-which "might then be brought into contact with a vaporizing device" such as "an electric
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`heater element." (DEF _PUB _EDVA000019628.) Dr. Abraham does not address or even
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`mention this representation in the '556 prosecution histo1y.
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`26
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 6 of 12 PageID# 26435
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`73.
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`(RJREDVA_001022594.)
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`74.
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`Dr. Abraham contends that his application of the “housing having an opening”
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`claim limitation to the Vibe product “is consistent with the ’556 Patent, which shows an ‘opening
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`44’ in Figure 2 (the ‘opening’ shown is further ‘defined by the substrate’).” (Abraham Opening
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`Rpt. ¶ 274.) As shown in Figure 2, though, the claimed “housing having an opening” sits below
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`the heater assembly; the “opening 44 [is] defined by the [ceramic heater] substrate,” which is
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`part of the heater assembly. (’556 patent at 12:4-9.)
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`27
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 7 of 12 PageID# 26436
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`75.
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`Dr. Abraham also references “an ‘open end’ with an ‘aperture 44’ in Figure 3” of
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`the ’556 patent. (Abraham Opening Rpt. ¶ 274.) But in describing Figure 3, the ’556 patent
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`does not refer to “aperture 44” as an “opening of the housing.” Instead, the “aperture 44” in
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`Figure 3 is likewise described as part of the “heater assembly.” (Id. at 12:33-34, 46-52).
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`Heater
`Assembly
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`26
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`FIG. 3
`(annotated)
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`36
`First Capillary
`Material
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`./ Heater Element
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`. . . . . . . . . . . .. . . . . . . . . . . . . . . . :
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`•
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`38
`Second Capillary
`Material
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`24
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`34
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`28
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 8 of 12 PageID# 26437
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`76.
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`In my opinion, the difference between the “opening of the housing” as recited in
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`claim 1 and any aperture or opening in the “heater assembly” is confirmed by dependent claim 2,
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`which recites: “The cartridge according to claim 1, further comprising a fluid permeable heater
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`assembly extending across the opening of the housing.” (Id. at 14:47-49).
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`
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`a first part of the liquid storage portion comprising a first
`capillary material, provided in a vicinity of the opening of the
`housing,
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`77.
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`I understand that Reynolds previously argued during the claim construction
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`proceedings that the phrase “provided in a vicinity of the opening of the housing” is indefinite, as
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`the ’556 patent fails to inform a POSITA with reasonable certainty of the meaning of this phrase.
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`I understand that the Court held that this phrase uses “well known common English words given
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`their common meaning.”
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`78.
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`In my opinion, based on my review of the ’556 patent specification, claims, and
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`prosecution history, and as best understood, a POSITA applying the common English meaning
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`would have interpreted “in a vicinity of the opening of the housing” to mean “close to or very
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`close to” the opening of the housing. In Figures 2 and 3 of the ’556 patent, for example, the first
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`capillary material 36 is located directly next to the opening of the housing 24. Additionally, with
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`reference to Figures 4 and 5, the ’556 patent describes the first capillary material as being “flush
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`with” the opening of the housing. In Figure 4, “[t]he capillary material 60 is inserted apex first
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`into the cylindrical housing 24 until the surface of the base of the cone lies flush with the front
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`face of the cylindrical housing” and at that end of the housing “the heater assembly as illustrated
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`in FIGS. 2 and 3 can be provided.” (’556 patent at 13:5-22.) Similarly, in Figure 5, “[t]he
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`capillary material 60 is inserted into the housing 24 until an end face of the capillary material 60
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`lies flush with the smaller diameter front face of the cylindrical housing, i.e., with the end face at
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`29
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 9 of 12 PageID# 26438
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`•
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`a second capilla,y material in fluid contact with the first capillary
`material and spaced apart from the opening by the first capillary
`material
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`88.
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`The ' 556 specification describes the first
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`capilla1y material as a "spacer" separating the second capillaiy material from the opening of the
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`housing where the heater element (46) is located. The '556 patent explains: "The first capillaiy
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`material effectively acts as a spacer sepai·ating the heater element from the second capilla1y
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`material so that the second capillaiy material is not exposed to temperatures above its thennal
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`decomposition temperature." ('556 patent at 4:20-32, see also 5:18-22 ("The first capilla1y
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`material may separate the heater assembly from the second capilla1y material"), 12:10-32 ("The
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`first capillaiy material 36 effectively acts as a spacer sepai·ating the heater element 46 from the
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`second capillaiy material 38 so that the second capillaiy material 38 is not exposed to
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`temperahues above its thennal decomposition temperah1re.").)
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`89.
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`34
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 10 of 12 PageID# 26439
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`(RJREDVA_001022591-593.)
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`90.
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`91.
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`The ’556 patent discloses that the first and second capillary materials are “spaced
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`apart” as claimed so that the first capillary material (more heat resistant) “acts as a spacer” and
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`separates the second capillary material (less heat resistant) from the heater: “The first capillary
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`material 36 effectively acts as a spacer separating the heater element 46 from the second
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`36
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 11 of 12 PageID# 26440
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`capillaiy material 38 so that the second capillaiy material 38 is not exposed to temperatures
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`above its thennal decomposition temperature. The the1mal gradient across the first capillaiy
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`material 36 is such that the second capillaiy material 38 is exposed to temperatures below its
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`the1mal decomposition temperature." ('556 patent at 4:20-32; 12: 11-23.)
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`92.
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`Dr. Abraham ignores the ' 556 prosecution histo1y when he opines that the Vibe
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`product meets the "spaced apait" claim limitation
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`The Applicant distinguished
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`Dubief by arguing that the "spaced apait" claim language requires the second capillaiy material
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`to be sepai·ated from the opening of the housing by a distance "defined by" the first capilla1y
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`material. (DEF_PUB_EDVA000019626.)
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`37
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`Case 1:20-cv-00393-LO-TCB Document 952-4 Filed 02/11/22 Page 12 of 12 PageID# 26441
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`CONFID,E,NTIAL BUSINESS INFORMATION, SUBJECT T01 PRO·TECTl'VE ORDER
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`Conclusion
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`B,ased on the analysis in this report and the documents that I reviewed ,and relied upon in
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`reaching my opinions,, I have concluded that Reyno]ds's Vibe product does not infringe the
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`asserted claims of the '556 patent, and there is no induced infringement of the asserted claims of
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`the '5 5: 6 p,atent.
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`T.bis report sets forth my opinions and the basis and reasons for them., I reserve the right
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`to suppleme·nt this report to the extent permitted under the rules if additional information
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`becomes available to me
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`for exampJ:e, in response to any determinations by the Co·url, opin.io·ns
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`expressed by 'Philip Morris's ex,p,erts in the litigation, or additional evidence or testimony
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`developed in the proceeding .. If called upo.n to testify at trial, I m.ay create demonstrative exhibits
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`or other visual aids to assist with the presentation of my opinions.
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`Dated:
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`..
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`elly R Kodama
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