Case 1:20-cv-00393-LO-TCB Document 952-9 Filed 02/11/22 Page 1 of 18 PageID# 26477
`Case 1:20-cv-00393-LO-TCB Document 952-9 Filed 02/11/22 Page 1 of 18 PagelD# 26477
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`EXHIBIT 9(cid:3)
`EXHIBIT 9
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`Case 1:20-cv-00393-LO-TCB Document 952-9 Filed 02/11/22 Page 2 of 18 PageID# 26478
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`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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`
`
`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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`
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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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`
`
`
`Case No. 1:20-cv-00393-LO-TCB
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`SUPPLEMENTAL AND AMENDED RESPONSIVE EXPERT REPORT OF
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`KELLY R. KODAMA REGARDING U.S. PATENT NO. 10,104,911
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`Case 1:20-cv-00393-LO-TCB Document 952-9 Filed 02/11/22 Page 3 of 18 PageID# 26479
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`TABLE OF CONTENTS
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`Page
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`Introduction and Scope of Assignment .............................................................................. 1
`I.
`Summary of Opinions ........................................................................................................ 2
`II.
`III. Materials Considered ......................................................................................................... 3
`IV.
`Legal Principles ................................................................................................................. 3
`V.
`The POSITA ...................................................................................................................... 4
`VI.
`Background And State Of The Art .................................................................................... 4
`VII. Overview Of The ’911 Patent ............................................................................................ 5
`A.
`The ’911 Patent ...................................................................................................... 5
`B.
`Prosecution History ................................................................................................ 7
`C.
`Claim Scope Urged By Dr. Abraham and Philip Morris ....................................... 7
`VIII. Overview of Accused Products .......................................................................................... 7
`A.
`The VUSE Alto Product ........................................................................................ 7
`B.
`Teardown and Testing Protocol ............................................................................. 9
`Rebuttal to Infringement Analysis – ’911 Patent ............................................................. 11
`A.
`The Asserted Claims of the ’911 Patent Are Not Infringed By The Alto
`Product ................................................................................................................. 12
`1.
`Independent Claim 1 ................................................................................ 12
`2.
`Dependent Claims 2 and 9-12 .................................................................. 34
`No Infringement Under The Doctrine of Equivalents (DOE) ......................................... 38
`X.
`XI. No Induced Infringement ................................................................................................. 44
`XII. Non-Infringing Alternatives ............................................................................................. 46
`XIII. Conclusion ....................................................................................................................... 53
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`IX.
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`-i-
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`(Abraham Supp. Rpt. at ,r 25, annotated.)
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`38.
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`As best understood, Dr. Abraham opines that two cavities are fonned between the
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`two inwardly-extending protrusions and the respective sides of the Alto cartomizer holder tap.
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`(Abraham Supp. Repo1t ,nr 16-23.)
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`39.
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`Dr. Abraham's opinion finding a "cavity" is based on cross-sectional images and
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`teardown photos of the Alto product that present an incomplete view of the protlusions and the
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`cartomizer holder tap. Considering the entirety of the ca1tomizer holder tap structure, the areas
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`Dr. Abraham identifies are not "cavities" as disclosed and claimed in the '911 patent.
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`I
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`spaces cannot be considered a “cavity” as a POSITA would understand the common English
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`meaning of the term.
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`42. My inspection of the Alto product, the Alto engineering drawings, and the Alto
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`CAD files all confirm that the Alto does not include the claimed “cavity.”
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` The ’911 patent specification discloses that the
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`“blind holes” and “blind cavities” interrupt the flow route of liquid droplets so those droplets do
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`not leak out of the air outlet:
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`The cavities 305, 307 are positioned so as to interrupt the flow route for liquid
`droplets 303 running towards the air outlet. Thus, the liquid droplets are prevented
`from leaking out of the air outlet of the aerosol generating system.
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`* * *
`The cavity 505 is positioned so as to interrupt the flow route for liquid droplets 503
`running towards the air outlet. Thus, the liquid droplets are prevented from leaking
`out of the air outlet of the aerosol generating system.
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`(’911 patent at 10:60-64 and 12:28-31.)
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`45.
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`The ’911 patent specification further discloses that the “blind holes” and “blind
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`cavities” are sized so as “to trap the liquid in the cavity.” (’911 patent at 11:28-32: “The size has
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`been found to be advantageous since it is large enough to collect a sufficient amount of liquid,
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`but small enough to trap the liquid in the cavity by capillary action, even if the aerosol generating
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`system is rotated or vertically aligned”; see also 12:46-51.)
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` into the open areas around the air outlet hole where there are no protrusions
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`Additionally, the alleged cavities are not “in a wall” of the Alto product.
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`or raised lips.
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`46.
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`47.
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`Dr. Abraham’s assertion that the inwardly-extending protrusions and the sides of
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`the cartomizer holder tap together form a “cavity in a wall” of the Alto product is contrary to
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`how a POSITA would understand the common English meaning of the term “wall,” and is
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`contrary to representations the Applicant made to the U.S. Patent & Trademark Office during the
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`prosecution of the application that led to the ’911 patent.
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`48.
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`During prosecution, the Examiner rejected the pending claims as obvious over a
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`combination of prior art references that included “Rose” (U.S. Pat. No. 5,935,975)
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`(RJREDVA_001651236-250), explaining that “Rose teaches an apparatus comprising a leakage
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`prevention means” including “at least one cavity in a wall (62) of the aerosol-forming chamber.”
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`(DEF_PUB_EDVA000015839.)
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`49.
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`In particular, Rose disclosed a smoking device that included “fingers 62” to help
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`prevent liquid leakage. As disclosed and as shown in FIG. 5 of Rose, liquid is collected “in the
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`spaces 64 between the point of connection of the fingers 62 and the interior surface of the wall of
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`the tube 58.” (Rose at 13:44-47.)
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`In rejecting the then-pending claims in the ’911 patent application, the Examiner
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`50.
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`interpreted the “wall” in Rose as including both the tube 58 and the fingers 62, with the “at least
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`one cavity” corresponding to the spaces 64 formed by the tube 58 and fingers 62. The Examiner
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`cited the following language from Rose:
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`FIGS. 4 and 5 illustrate another modified form of smoking device 60 and which is very
`similar in construction to the smoking device 50 of FIG. 3 in that it employs a conventional
`filter tip cigarette. In this embodiment, the elongate smoke delivery tube 58 is provided on
`its interior surface with a plurality of radially inwardly extending somewhat flexible fingers
`62. These fingers may actually adopt the form of filaments and are sufficiently flexible so
`as to yield to the draw of aerosol through the delivery tube 58. The fingers 62 generally
`extend randomly throughout the annular interior surface of the delivery tube 58 and are
`effective to preclude any of the liquid antagonist from rolling out of the delivery tube 58
`when the cigarette is held in a vertical position with the outer end located downwardly.
`Thus, the liquid antagonist will collect in the spaces 64 between the point of connection of
`the fingers 62 and the interior surface of the wall of the tube 58. (Rose at 13:31-47.)
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`51.
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`In response to the rejections, and to distinguish the prior art Rose reference, the
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`Applicant stated that the Examiner’s interpretation of the term “wall” went “beyond the broadest
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`reasonable interpretation in light of the disclosure.” (DEF_PUB_EDVA000016123.) The
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`Applicant argued that the claimed “wall” means “the inside surface of the hollow housing [in red
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`below], which encloses the chamber 127 and which acts as a barrier” (Id.) And the Applicant
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`urged that “a person of ordinary skill in the art would have equated the claim term ‘wall’ to the
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`inner tube 58 of Rose [in yellow below].” (DEF_PUB_EDVA000016124.) The Applicant thus
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`argued that Rose’s fingers 62 (like the Alto’s protrusions) did not correspond to the “wall” as
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`claimed.
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`(Rose at Fig. 5 (annotated))
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`The Applicant argued, clearly and unmistakably, that Rose’s fingers or filaments
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`52.
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`62 “cannot be considered a wall of the aerosol-forming chamber”:
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`[A]lthough the intention of the filaments 62 is to prevent leakage, the filaments
`cannot be considered as a wall of the aerosol forming chamber and, even if they
`could, they do not comprise at least one cavity for collecting liquid condensate.
`Rather, Rose’s filaments 62 simply allow liquid to “collect in the spaces 64 between
`the point of connection of the fingers 62 and the interior surface of the wall of the
`tube 58.” Id., col. 13, 11. 45-47.
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`(DEF_PUB_EDVA000015974.)
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`53.
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`The Applicant made this argument multiple times during the prosecution history,
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`repeatedly distinguishing Rose’s fingers 62 from the claimed “wall”:
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`T aking tht: requir<=<l broadest r.:asonabl,; intt:IJJrei:a.tion of lhe 1:b ims, ~ persoo u f
`ordinary skill in the arl would have equaled Lbe claim tel'm " 1vai/'' to ilie il.lner surface or lbe
`(ube 58 of Rose. Tf.ijs iu1erp1elallou is further supported uy Ro~e ·s col.13. ll.45-47, wbid1
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`refers to "1he interior surface of the wall of the wbe 58," within which the aerosol is
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`generated. Rose's fingers do not form d1e outer layer of the hollow tube, they are not a
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`material layer enclosing the chamber. and they do not resemble a wal l. Instead, rather than
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`forming part of the wa ll, the fingers 62 act roucb like cilia witbin the chamber.
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`(DEF_PUB_EDVA000016124.) The inwardly-extending protrusions (like Rose’s fingers 62)
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`identified by Dr. Abraham in the Alto cartomizer holder tap similarly “do not form the outer
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`layer of the [Alto] hollow tube, they are not a material layer enclosing the [Alto] chamber, and
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`they do not resemble a wall.”
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`54.
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`And the Applicant repeatedly argued that the Examiner’s interpretation that the
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`combination of Rose’s tube 58 and fingers 62 met the claimed “wall” was “not consistent” with
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`the ’911 patent disclosure:
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`The Examiner, however, chose the broadest possible interpretation. lt attempts to
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`read tbe claim term " wall" on a combination of part of Rose's delivery tube 58 and
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`fingers 62. And, it attempts to read the claim tem1 " at least one cavity in a wall" on Rose's
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`spaces 64 . See Final Office Action, p . 5; see also Rose, Fig. 5. But this is not consistent with
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`Applicant 's disclosure. See, e.g., Specification, p. I 2, II. 9-J 7; and Figs. 3-4.
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`(DEF_PUB_EDVA000016126.) Likewise, Dr. Abraham’s assertion that the combination of the
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`inwardly-extending protrusions (comparable to Rose’s fingers 62) and the sides of the cartomizer
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`holder tap are the claimed “wall” in the Alto product “is not consistent with the [’911 patent]
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`disclosure,” and Dr. Abraham’s assertion contradicts the meaning of “wall” that the Applicant
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`urged during the prosecution history.
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`55.
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`The Applicant further argued:
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`As mentioned earlier in this paper, the Examiner interprets the c.laimed "wall" to read
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`on a combiJ1ation of part of Rose' s delivery rnbe 58 and fingers 62, and to read the claimed
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`"at least one cavity in a wall" on Rose's spaces 64. See Final Office Action, p. 5; see also
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`Rose, Fig. 5. But Rose 's fingeq: 62 (plural) are narrow protrusions that do not each extend
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`around tbe inuer surface of the tube 58. So, fin gers 62 do 110 1 form a part of a wall ofan
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`aerosol-forming chamber, and spaces 64 behind fingers 62 do 1101 fonn a cavity as claimed.
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`(DEF_PUB_EDVA000016128-129.) Like Rose’s fingers 62, the inwardly-extending protrusions
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`identified by Dr. Abraham as forming “cavities” in the Alto cartomizer holder tap similarly “do
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`not each extend around the inner surface of the [Alto] tube,” they “do not form a part of a wall of
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`an aerosol-forming chamber,” and the “spaces” between the protrusions and the sides “do not
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`form a cavity as claimed.”
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`56.
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`Given the Applicant’s representations during the prosecution history, in my
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`opinion a POSITA would not consider the alleged cavities identified by Dr. Abraham in the
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`cartomizer holder tap to be “in a wall” of the Alto product.
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`b.
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`wherein the at least one cavity is a blind hole recessed in the wall
`of the aerosol-forming chamber and has an open end, a closed
`end, and a longitudinal direction extending between the open end
`and the closed end
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`57.
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`Dr. Abraham opines that the two inwardly-extending protrusions in the Alto
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`cartomizer holder tap form cavities that are “blind holes.” (Abraham Supp. Report ¶¶ 24-30.)
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`58.
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`I disagree. The Alto product does not include a cavity that is “a blind hole
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`recessed in the wall of the aerosol-forming chamber.”
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`- 65.
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`Dr. Abraham's assertion that the inwardly-extending protrnsions and the sides of
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`the Alto cartomizer holder tap together f01m a "blind hole recessed in the wall of the aerosol(cid:173)
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`fo1ming chamber" is contrary to how a POSIT A would understand the co1mnon English meaning
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`of "a blind hole recessed in a wall," and is contraiy to representations the Applicant made to the
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`U.S. Patent & Trademai·k during the prosecution of the application that led to the '911 patent.
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`66.
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`Initially, the original claim submitted to the U.S. Patent & Trademark Office in
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`the application that resulted in the '911 patent recited only a "cavity": "at least one cavity in a
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`wall of the aerosol-fo1ming chainber." During the lengthy prosecution of the application,
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`however, and in response to multiple rejections based on prior art, the Applicants specifically
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`amended issued claim 1 to require that the at least one cavity be a “blind hole” (“wherein the at
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`least one cavity is a blind hole”). A POSITA reading the ’911 patent claims, specification, and
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`prosecution history would understand that only a “blind hole”—and not a space or channel
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`between two structures—is within the scope of claim 1.
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`67.
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`During prosecution of the ‘911 patent application, as noted above, the Examiner
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`rejected the pending claims multiple times as obvious over the prior art, including the Rose
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`reference (U.S. Patent No. 5,935,975). The Applicants repeatedly argued that Rose’s fingers or
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`filaments 62 (comparable to the Alto protrusions identified by Dr. Abraham) did not form the
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`claimed “blind hole.”
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`68.
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`On July 29, 2016, the Applicant amended the claims to add the “blind hole”
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`limitation. (DEF_PUB_EDVA000016091.) The Applicant then relied on the “blind hole”
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`limitation to attempt to distinguish the claimed invention from Rose’s leakage prevention
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`structure (i.e. the spaces (64) between the point of connection of the fingers (62) and the interior
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`surface of the wall of the tube (58)). (DEF_PUB_EDVA000016098-099.)
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`69.
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`First, the Applicant stated that the “blind hole” limitation was added “to more
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`clearly emphasize existing distinctions over the cited references” (including Rose).
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`1it.hot t coucedin to the
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`·- a] O ffi.ce
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`c.tio ' s ' terpreti'ltion o ' '
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`discussed above, Applic.ant has amended claim 13 to more c lea r'l y emp ha. ize e .. i tmg
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`distinctio n~ ove r lhe c ited reference . Pore. ample, the claimed at least one caviry b ing a
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`bli rid ho le in the wall of th e aerosol- form i11g chainber with the re ited cr-oss- ectio al
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`d i nensiou. eakag fton1 aerosol-gen.era,ting ystems cru be reduc.ed el ti e to ' own
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`systems. Til ts i
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`ecau e liquid may be trapped in the blind hole in the wall of the
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`aerosol- ormi 1g d 1amber and held ther-e by api fory actjo . e en if the system is rotated or
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`turned up~ide down .• nch a "'blind lhole" is sbown, for ex:amp1e, i.n Applicant's : ig.s. " and 4.
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`(DEF_PUB_EDVA000016097.)
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`70.
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`Next, the Applicant re-stated that Rose prevents liquid from escaping by allowing
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`it to collect in the spaces between the fingers (62) and the wall of the tube (58).
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`1n contra.'lt, Rose' s Fig. 4 sbo1,vs a cjgareue 50 hav-i11g a conventiona.l filter tip 56 a.nd
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`a tobacco rod 5-4 wrapped by cigarette p,aper 52. See Rose, c,ol. 13, 11. l - 7 . Ex.tending
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`through the cOTe of tobacco rod 5
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`is a hoUow tub e 58 provided \'>'itl1 a p lurality of tle ·ible
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`filaments or fingers 62, which' extend rando mly th rougho ut the annular interior surface o f
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`the de liv,
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`tube 58." Id. . col. 13, II. 40•4 1. The purpos~ ofRosc·s fingers 62 is to p revent
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`[he liquid anta ·•onist from cs.capin when ci •arcttc SO is in,·crtcd b , allowin• liquid to
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`"c0lle-ct in 1h ~ aces 64 between 1
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`ohH of cormection of the fin• rs 62 and the interior
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`_c.11 1 foce ofl he MI ii of the tube 5s.·· Id., col. 1 , 11. 45-47.
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`71.
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`The Applicant then emphasized that because Rose’s fingers (62)—characterized
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`(Id.)
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`as “narrow protrusions”—“do not each extend around the inner surface of the tube 58,” they “do
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`not form a part of a wall of an aerosol-forming chamber, and spaces 64 behind fingers 62 do not
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`form a cavity as claimed.” (DEF_PUB_EDVA000016098.)
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`s n.e11ti o11ed earlier iu thi.s paper, th e Final Office ction appears to interprret the
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`claimed ·"'-...all '' to read on a combinr:uicm of part of Rose ' s delivery tube_ 8 and fingers 6_ ,
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`and appears ~o read the claim te.rn "at leas t one ecav ity in a ,•,rall" on Rose 's spaces 6 _ See
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`Final Office Action, p. 5; ·ee: alf;,u Rose, Fig. S _ B ut Rose's finger.; 6 :::! are narrow protrusions
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`tJiat d o 1101 cac.h l"XWn <l around th· inner surfact.: of th ~ tube 58.
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`o. fim.! ·rs 62 do no! fonn a
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`part of a wait of..m in·rosol-formin • charnbn, and spaces 64 behind fin •.•crs 62 do no! form a
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`cavi l · as daimcd .
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`(Id.) Like Rose’s fingers or protrusions 62, the inwardly-extending protrusions identified by Dr.
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`Abraham as forming “blind holes” in the Alto cartomizer holder tap similarly “do not each
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`extend around the inner surface of the [Alto] tube,” they “do not form a part of a wall of an
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`aerosol-forming chamber,” and the “spaces” between the protrusions and the sides “do not form
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`a cavity [blind hole] as claimed.”
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`72.
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`The Applicant further argued that the spaces (64) behind Rose’s fingers (62) are
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`“non-blind” because the spaces are “open around the sides of each finger.” According to the
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`Applicant, “[t]his is the opposite of what is claimed.” (Id.)
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`Mowe,.,
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`s1rrf'aU? of wb 58 and fing
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`62 could b , c.onsiderod a.
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`·•\ all.'' Jtos s·rm d
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`not p
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`id.e a1
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`teach ing o ugg,estion of the claimed •<at ]eat oue
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`cavl ... being ·a blind hole in the wall 0(1he qe,: , ol-fonntng chqmber.'' Rathe , the spaces
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`beh ind each tfoier h4 in R
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`..- are o en amund the sides ofea h finger- mean in~ dnu suc h
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`features .ir nun-h!ind, Th is is rhe oppo ite ofwhn~ i claimed
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`(Id.) Like Rose’s fingers or protrusions 62, the inwardly-extending protrusions identified by Dr.
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`Abraham in the Alto cartomizer holder tap similarly are “non-blind” because the spaces are
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`“open around the sides of each finger.” Based on the Applicant’s representations to the
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`Examiner during the prosecution history, Dr. Abraham’s assertion that the Alto protrusions form
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`“blind holes” is “the opposite of what is claimed.”
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`73.
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`In a subsequent interview with the Examiner, the Applicant’s representative again
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`“explained that Rose’s fingers 62, whether they are inwardly extending filaments (col. 13, l. 38),
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`or slots, or bristles as if on an inverted pipe cleaner, would still remain ‘open’ around their
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`sides/ends and hence be non-blind. Applicant’s representative explained how this is the opposite
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`of what is claimed.” (DEF_PUB_EDVA000016122.)
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`74.
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`Because the Examiner continued to reject the claims as unpatentable, the
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`Applicant further amended the claims to try to distinguish over the Rose prior art reference. The
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`Applicant further defined and limited the claimed “blind hole” to being “recessed in the wall of
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`the aerosol-forming chamber.”
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`13. (Currently Amended) Au aerosol generating system for beating a liquid
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`aerosol-forming substrate, the. system comprising:
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`an aerosol-forming chamber; and
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`leakage prevention means configured to prevent or reduce leakage of liquid aerosol
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`condensate from the aerosol generating system,
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`wherein the leakage prevention means comprises at least one cavity 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, and
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`~...-herein the at least one:: cavity is a blind hole recessed in the wall of the
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`aerosol-forming chamber and bas a cross-sectional dimension x taken along a cross- enion of
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`the cavity, where x is 0.5 mm, or l mm, or between 0.5 mm and l mm.
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`(DEF_PUB_EDVA000016118.)
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`75.
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`The Applicant argued that the “recessed in the wall” limitation was added to the
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`claims “to better emphasize existing structural distinctions over the cited references” (including
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`Rose):
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`Without conceding to the grounds oftbe rejec6ons, Applicant has amended claim 13
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`to better emphasize existing structural distiuctions over the cited references. Support for the
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`amendment may be found throughout the originally-filed disclosure including at, for
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`example, p. J 2, 11. 9-17; p. 14, IL 5-9; and Figs. 3-6. The amended language differs from that
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`of the unentered Amendment after Final in that daim 13 now specifies that the blind hole is
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`r ecessed in the wall of the chamber. No new matter bas been added. Upon entry oftl1is
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`Amendment, claims 13 and 15-24 remain pending and w1der examination.
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`(DEF_PUB_EDVA000016121.)
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`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
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`76. With this amendment, the Applicant argued yet again that Rose’s fingers or
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`filaments (62) are “non-blind” because they “remain ‘open’ around their sides/ends” and “this is
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`the opposite of what is claimed”:
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`Second, Applicant's representative discussed the arrangement shov,·n in Rose 's Fig. 5
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`and described at col. l 3, 11. 30-4 7. Applicant ' s representative explained that Rose ' s
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`fingers 62, w betber they are inwardly extending filaments (col. 13, l. 38), or slots, or bristles
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`as if on an inverted pipe cleaner, would still remain "open" around their sides/ends and hence
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`be non-blind. Applicant's representative explained how this is the opposite of what is
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`claimed. Applicant's representative also explained how such a different structure makes for a
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`very different operation of each device, for example, in that fingers 62 in Rose would actually
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`obstruct a free flow of aerosol through tube 58. And, Applicant' s representative discussed
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`the required standard for making an obviousness determination with reference to pp. 7-9 of
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`the Amendment after Final.
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`(DEF_PUB_EDVA000016122.)
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`77.
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`The Applicant further argued that Rose’s fingers or filaments (62) “are also not a
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`recessed blind hole as claimed” because the spaces “are open around the sides of each finger—
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`meaning that such features are non-blind”:
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`Rose's finger~ 62 (plural) are also not a recessed blind hole, as claimed. That is, even
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`if the inner surface of tube 58 and fingers 62 could be considered a " wall," Rose still does not
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`provide any teaching or suggestion of the claimed "at least one cavity" being "a blind hole
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`recessed in the wall of the aerosol-forming chamber." Rather, the spaces behind each
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`finger 64 in Rose are open around the sides of each finger- meaning that such features are
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`non-blind. And, as already noted above , such features are not recessed in the wall. This is
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`the opposite of what is claimed.
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`
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`(DEF_PUB_EDVA000016129.) Like Rose’s fingers or protrusions 62, the spaces are “open
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`around the sides of each” protrusion identified by Dr. Abraham in the Alto cartomizer holder
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`tap—“meaning that such features are non-blind.” And Dr. Abraham’s assertion that the Alto
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`protrusions form “blind holes” is “the opposite of what is claimed” according to the prosecution
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`history of the ’911 patent.
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`78.
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`To further distinguish Rose, the Applicant also argued that the spaces between
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`Rose’s fingers/protrusions 62 and the tube wall 58 “are not recessed in the wall of the chamber”:
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`Rose does not disclose or suggest that tbe claimed "at least one cavity is a blind bole
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`recessed in the wall of the aerosol-forming chamber" (emphasis added). Instead, Rose
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`discloses that fingers 62 "general!v extend randomlv" from the annu lar interior surface of the
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`delive1y tube 58, and allow the liquid antagonist to "collect in the spaces 64 bet1,l-'ee11 the
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`point of connectio11 of the finr;ers 62 and the interior surfi1ce ofche wall of the tube 58."
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`Rose, col. 13, II. 40-47 (emphases added). Thus, the spaces 64 are not recessed in the wall of
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`the chamber, but are instead be-tween the wall of the tube 58 and the fingers 62.
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`(DEF_PUB_EDVA000016124.) Dr. Abraham’s assertion that the spaces between the
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`
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`protrusions and the respective sides of the Alto cartomizer holder tap are “blind holes” that are
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`“recessed in the wall” of an aerosol-forming chamber is contrary to this representation in the
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`’911 patent prosecution history—indeed, Dr. Abraham points to the spaces “between the wall of
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`the [Alto cartomizer holder tap] and the [protrusions].”
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`79.
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`In my opinion, a POSITA would understand the Applicant’s numerous and
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`repeated prosecution history statements distinguishing Rose and the other cited prior art
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`references as clearly and unmistakably disclaiming the structure and configuration that Dr.
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`Abraham relies upon for his opinion that the Alto infringes the ’911 patent claims.
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`80.
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`In Dr. Abraham’s February 24 Opening Report, he opined that other accused
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`* * *
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`Reynolds VUSE products include a “blind hole” in the form of an “annular groove” like the one
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`shown in FIGS. 5-6 of the ’911 patent. (e.g., Abraham Opening Rpt. ¶¶ 147-168.) I disagreed
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`with Dr. Abraham’s opinions, as explained in my Responsive Report (e.g., Kodama Responsive
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`30
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