Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 1 of 10 PageID# 26467
`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 1 of 10 PagelD# 26467
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`EXHIBIT 8(cid:3)
`EXHIBIT 8
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 1 of 10 PagelD# 26467
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`EXHIBIT 8(cid:3)
`EXHIBIT 8
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 2 of 10 PageID# 26468
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`RESTRICTED – ATTORNEYS’ EYES ONLY
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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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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`v.
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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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`Civil Action No. 1:20-cv-393
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`AMENDED AND SUPPLEMENTAL EXPERT REPORT OF JOHN ABRAHAM
`RELATING TO U.S. PATENT NO. 10,104,911
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 3 of 10 PageID# 26469
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`4.
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`“wherein the leakage prevention means comprises at least one cavity
`in a wall of the aerosol forming chamber, for collecting liquid
`condensate formed from the aerosol forming substrate”
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`22.
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`As explained below, the VUSE Alto literally meets this limitation because it
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`includes a “leakage prevention means [that] comprises at least one cavity in a wall of the aerosol
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`forming chamber, for collecting liquid condensate formed from the aerosol forming substrate.”
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`23.
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`As shown in the images below from my analysis of the CAD files that RJR recently
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`produced and my teardown analysis of the Alto, the Alto includes “a leakage prevention means
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`[that] comprises at least one cavity in a wall of the aerosol forming chamber, for collecting liquid
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`condensate
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`formed
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`from
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`the aerosol
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`forming
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`substrate.”
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` RJREDVA_001642024;
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`DEF_PUB_EDVA500000034. See also RJREDVA_001285356-RJREDVA_001285368 at
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`RJREDVA_001285367;
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`RJREDVA_001449196-RJREDVA_001449208
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`at
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`RJREDVA_001449207.
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`12
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 4 of 10 PageID# 26470
`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 4 of 10 PagelD# 26470
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`13
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 5 of 10 PageID# 26471
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`24.
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`Further, these cavities are used “for collecting liquid condensate formed from the
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`aerosol forming substrate” because
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` Thus, the Alto includes
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`“a leakage prevention means [that] comprises at least one cavity in a wall of the aerosol forming
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`chamber, for collecting liquid condensate formed from the aerosol forming substrate,” under the
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`plain meaning of those terms.
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`25.
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`RJR argues that the Alto does not include a “leakage prevention means [that]
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`comprises at least one cavity in a wall of the aerosol forming chamber, for collecting liquid
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`condensate formed from the aerosol forming substrate.” See RJR’s Resp. to Interr. No. 1 (Dec. 2,
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`2020) at 70-71. See also RJR’s Resp. to Interr. No. 1 (Mar. 5, 2021) at 64. With respect to its
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`originally-produced Alto CAD drawings (produced at RJREDVA_001526194-95), which RJR
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`later stated were inaccurate, RJR argued that the Alto cavities are not “in a wall of the aerosol-
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`forming chamber,” as required by claim 1 of the ’911 Patent,
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`RJR’s Resp. to Interr. No. 1 (Dec. 2, 2020) at 70-
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`71.
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`respect
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`to
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`its
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`recently produced Alto CAD drawings
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`(produced at
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`RJREDVA_001642024-27), RJR further argues
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`14
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 6 of 10 PageID# 26472
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` See RJR’s
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`Resp. to Interr. No. 1 (Mar. 5, 2021) at 64. To the extent RJR still contends these arguments
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`provide a basis for non-infringement, I disagree for several reasons, which are discussed in turn
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`below.
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`26.
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`First, as I have explained above, the Alto does include cavities “in a wall of the
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`aerosol-forming chamber, for collecting liquid condensate formed from the aerosol-forming
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`substrate.”
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`27.
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`Second, as I have explained above,
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`28.
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` Thus, the
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`Alto cavities are in a wall of the aerosol-forming chamber.
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`29.
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`The plain and ordinary meaning of the phrase “in a wall of the aerosol-forming
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`chamber” supports my opinion and contradicts RJR’s argument. In my analysis above (and
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`consistent with the Court’s claim construction order), I have applied the plain and ordinary
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`meaning of the claimed cavity “in a wall of the aerosol-forming chamber” and the specification of
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`the ’911 Patent is in accord. Figures 3-4 of the ’911 Patent, for example, show aerosol-forming
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`chamber 127 extending up to cavities 305, 307 near air outlet 125. A POSITA reviewing Figures
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`15
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`3-4 of the ' 911 Patent would understand that aerosol-forming chamber 127 would extend from air
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`outlet 125 at least down to the space where heater 119 is wrapped around capilla1y wick 117 (as
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`shown in Figure 1 of the '911 Patent) because Figures 3-4 only show mouthpiece end 103 of the
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`aerosol generating system.
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`See Kodama 3/31 Supplemental Report at ,i,i 38-40 (images omitted). I disagree for the reasons
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`provided below.
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`31.
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`As a prelimina1y matter, I have shown the claimed cavities in the Alto from multiple
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`angles and these images fo1m a complete view of the claimed cavities. See, e.g., the images in
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`paragraphs (13]-(15]; see also Deposition ofE. Hnnt, dated 04.14.2021, at Exhibits 40-41.
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`32.
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`Second, Mr. Kodama does not apply the plain and ordinaiy meaning of the tenn
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`"cavity." Fmihennore, the '911 Patent shows two cavities / blind holes (one on either side of the
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`mouthpiece opening) in Figures 3-4 and as an annular cavity / blind hole ai·om1d the mouthpiece
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`16
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 8 of 10 PageID# 26474
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`opening in Figures 5-6. Further, the '911 Patent specifically notes that the claimed cavities may
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`include a capillaiy material. See, e.g. , '911 Patent at 13:20-32.
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`33.
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`Third, in my opinion, the plain and ordinaiy meaning of the te1m "cavity" would
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`encompass the
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`meaning of the te1m "cavity," and I disagree with Mr. Kodama' s opinion that a POSITA would
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`This strncture is consistent with the plain and ordinaiy
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`not inte1pret this strncture as the claimed "cavity."
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`34.
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`To the extent it is detennined that the Alto cavities do not literally meet the "at least
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`one cavity" limitation, the Alto meets this limitation under the doctrine of equivalents. As shown
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`above, each of the Alto cavities perfonns substantially the same function ( e.g., collects/traps liquid
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`condensate) in substantially the same way (e.g., by capillary action) to obtain the same result (e.g.,
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`leakage prevention or reduction) as the claimed cavity. Furthe1more, I am unaware of any
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`substantial difference between the Alto cavities and the claimed "at least one cavity." Indeed, like
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`the claimed cavity,
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`prevention means configured to prevent or reduce leakage of liquid aerosol condensate" above;
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`see also additional discussions herein regarding the "blind hole" and the claimed dimensions of
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`See e.g. , discussion regarding "leakage
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`the cavity.
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`35. Mr. Kodama further states the following:
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`45. Additionally, the alle ed cavities ai·e not "in a wall" of the Alto
`as illustrated below,
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`17
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`depend, it is appropriate to read the “blind hole” language recited in claim 1 to cover the
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`embodiments shown in FIGS. 5-6.
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`43.
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`The file history of the ’911 Patent also shows that the claim term “blind hole”
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`encompasses Figures 5 and 6 of the ’911 Patent. See DEF_PUB_EDVA000015567-
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`DEF_PUB_EDVA000016366 (’911 Patent file history) at DEF_PUB_EDVA000016296.
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`44. Mr. Kodama states the Alto does not include a cavity that is “a blind hole recessed
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`in the wall of the aerosol-forming chamber”
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` Kodama 3/31 Supplemental Report at ¶¶ 56-81.
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`I disagree.
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`45.
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`First, as explained in paragraph [38], the Alto cavities are blind holes that cannot
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`be seen from the outside of the aerosol-generating system.
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` See also Deposition of E. Hunt,
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`dated 04.14.2021, at 448:19-451:6, Exhibit 40.
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`46.
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`Second, as he did for the claim phrase “cavity in a wall,” Mr. Kodama again relies
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`on RJR’s rejected claim construction positions which I understand is improper. Mr. Kodama states
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`that the Applicant “clearly and unmistakably” disclaimed the full scope of the phrase “a blind hole
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`recessed in the wall of the aerosol-forming chamber.” Kodama 3/31 Supplemental Report at ¶¶
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`64-78. I disagree. My understanding is that the Court rejected RJR’s position during claim
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`construction that the Applicant disclaimed the full scope of the claim phrase “blind hole recessed
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`in the wall of the aerosol forming chamber” in the ’911 Patent. See Claim Construction Order
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`dated November 24, 2020 (“[N]one of the fifteen terms in dispute should be modified. They are
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`23
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`Case 1:20-cv-00393-LO-TCB Document 952-8 Filed 02/11/22 Page 10 of 10 PageID# 26476
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`I declare under penalty of perjury that to the best of my knowledge, information, and belief, the
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`foregoing statements are true and correct.
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`DATED: April 26, 2021
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`Dr. John Abraham
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`38
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