Case 1:20-cv-00393-LO-TCB Document 957-1 Filed 02/11/22 Page 1 of 13 PageID# 26612
`Case 1:20-cv-00393-LO-TCB Document 957-1 Filed 02/11/22 Page 1 of 13 PagelD# 26612
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`EXHIBIT 1
`EXHIBIT 1
`(PUBLIC)
`(PUBLIC)
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`Case 1:20-cv-00393-LO-TCB Document 957-1 Filed 02/11/22 Page 2 of 13 PageID# 26613
`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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`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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`
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`Case No. 1:20-cv-00393-LO-TCB
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`RESPONSIVE EXPERT REPORT OF KELLY R. KODAMA
`REGARDING U.S. PATENT NO. 10,104,911
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`Abraham provides no evidence to support these statements about Reynolds’s “knowledge” or the
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`basis for his “understanding,” and he fails to explain how these assertions would, in any event,
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`establish that Reynolds possessed a specific intent to encourage its customers to infringe any
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`claim of the ’911 patent.
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`176. For these reasons, I disagree with Dr. Abraham’s opinion regarding alleged
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`induced infringement of the ’911 patent.
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`XII. Non-Infringing Alternatives
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`177.
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`In my assessment of the (cid:1932)911 patent, I have also been asked for my opinion as to
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`whether there would have been non-infringing alternatives available to Reynolds at the time the
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`’911 Patent issued on October 23, 2018. I understand this analysis may be relevant to certain
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`damages issues.
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`178. Every claim of the (cid:1932)911 patent requires, inter alia:
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`1. An aerosol generating system for heating a liquid aerosol-forming substrate, the
`system comprising: an aerosol-forming chamber; and
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`leakage prevention means configured to prevent or reduce leakage of liquid aerosol
`condensate from the aerosol generating system, 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, and
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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, and
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`wherein the at least one cavity has a largest cross-sectional dimension x taken along
`a cross-section of the cavity in a direction perpendicular to the longitudinal
`direction of the cavity, where x is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.
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`179. Dr. Abraham opines that the current design of the Solo (G1 and G2), Vibe, and
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`Ciro infringe the ‘911 patent.
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`187. My opinion is consistent with Dr. Abraham's discussion of ce1iain Fontem prior
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`a1i patents.
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`188.
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`I understand that Dr. Abraham has identified (,I 326) a number of patents assigned
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`to Fontem that he calls "the Shell Design Family" consisting of patents that claim priority to
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`PCT/CN07/01575, including U.S. Patent Nos. 8,156,944 (''the ' 944 patent"), 8,365,742 ("the
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`'742 patent"), 9,456,632 ("the ' 632 patent"), 9,326,548 ("the ' 548 patent"), 9,808,034 ("the '034
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`patent"); and U.S. Patent Application 15/ 167,690.
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`189. My opening rep01i on invalidity addressed the ' 944 patent, including at Paras. 72-
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`75 and 260-311.
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`190. Dr. Abraham has described the related ' 742 patent as follows:
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`319 Accordu1g to 1hr '7~2 p.11c11t, ho1ve,·er. some liquid droplers nre not nbsorbed by
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`tJ1e mr cbnnuel. Id. 01 '1.32-36. fig_ l
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`lns1et1d Ibey arr <collected m the cleamncc betweeu die
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`ciinrcne holder shell nnd n,r chn1111d. Id. Spccificnlly. die '742 patent e~pfains thiu "[wlbcn the
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`uerosol cmen. the ci1<111c11e huld.:1 ,hell (\,), ,uuhiple •nmll liquid d1ops me coudcnsed ,mo bittgc1
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`ones, wbicb foll imo 1hc clcanmcc between tbt cigarcuc bolder shell (b) ond nll' chmmel (bl)
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`wnhou1 bcml' obsorbed by die air channel (bl) ~ Id.
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`3
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`a
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`4 51 5 al 7 8
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`9
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`b
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`bl
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`52 54 53
`Figure 1
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`A> o 1eouh. wc,e l01ier liquid dmJJle1> nr<: p1c:\e111«t f1out 1ca<luug we nit dmuucl aud being
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`i1~mled by the smoker.
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`191. According to Dr. Abraham, "the Shell Design patents disclose that 'liquid
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`drop[lets] fall into the clearnnce between the cigarette holder shell (b) and air channel (bl)
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`without being absorbed by the air channel (bl). ' ' 742 patent at 4:32-36. This teaching is, from a
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`technical perspective, similar to the stmctures claimed in the '911 Patent that help to prevent or
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`minimize leakage of liquid condensate outside of an e-cigarette. See, e.g. , '911 Patent at cl.
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`1." (Abraham Opening Rpt. ~ 335; see also~ 336 ("the Shell Design patents disclose a
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`' clearance' portion that is, from a technical perspective, similar to the ' leakage prevention
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`means' claimed in the '911 Patent ... the Shell Design family describe the functionality of the
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`clearance portion and show a cross-sectional view of this structure in Figure 1 (see, e.g., '742
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`patent at 4:32-36, Fig. 1)").
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`192. Dr. Abraham admits(~ 335) that the "clearance" disclosed in the '944 patent and
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`other Shell Design patents serves a similar purpose to the claimed "blind hole" in the '911 patent
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`claims:
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`F1mhennore. 1he '9 ll Pa1e111 desc1ibes how sys1ems wi1hou1 leakage prevemion 1ueans are
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`problematic because condensate droplets, .. particnlarly the larg.er drople1s. may accumulate on tbe
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`inside walls of the 11ermol-fonnin!1, cl111mber " '911 P:11en1 nt I 0:28-30. TI1ese condensale drople1s
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`"may mn out of lhe ou1lei,'' whicb "cm1S[es] the aerosol geuerntiug systelll 10 become we1 or
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`s1icky." /d. a1 10:30-33. Thus. in one e111bodi111e111, 1he aerosol-genemti11g sys1e111s disclosed i11
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`the '91 1 Patent include "droplet collecting cavities or recesses." Id. at 10:43-45. lu accordance
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`wi1b this disclosure. claim I of the '911 Patenr recites that the claimed lenkage pre\'eution means
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`comprises " ni least one covi1y iu a wa ll of the aerosol-fon11i11g chamber, for collec1iutt liquid
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`condensate.·· Id. at cl. I. As a result. the ·'clearance .. claimed in the Shell Design pa1eu1s serves a
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`si1Uilar purpose as 1he mechanical stnictmes claimed in the '9 11 Patent.
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`for example. tbe
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`clearanct' collects 1he drople1 so 1ba1 1hey do 1101 run 0111 of the air chauuel. Liquid drople1s "foll
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`into the clearance ... wi1ho11t being. absorbed by 1he air channel."
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`' 742 patent at 4:32-36.
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`Therefore. the Shell Design patems and 1be ·91 1 Patent seek 10 solve the same problem. namely.
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`collecti11g droplets so tha1 they do not exi1 tl1e mouthpiece. which infonus a killed arti au that the
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`two 1echnologies are similar.
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`193. Dr. Abraham has further opined that:
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`•
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`"the technology claimed in the Shell Design patents and the technology claimed
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`in the '911 Patent are generally directed to the same subject matter" (,I 332);
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`•
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`"the patents in the Shell Design Family and the '911 Patent also describe similar
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`strnctures for the claimed electronic cigarettes" and "the claims of both are
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`directed to ve1y similar technologies" (,I 333);
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`•
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`"the technology claimed in the ' 911 Patent and the technology claimed in the
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`patents in the Shell Design Family are comparable [because] they seek to achieve
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`similar goals, namely both claim similar mechanical strnctmes within the
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`disclosed e-cigarette device that help prevent or reduce leakage of aerosol through
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`the opening in the mouthpiece" (,I 335);
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`(cid:120) “there is a strong link between the technology claimed in the patents in the Shell
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`Design Family and the technology claimed in the ’911 Patent” (¶ 338)
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`194. Dr. Abraham asserts (¶ 336) that the Shell Design patents purportedly:
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`(cid:120) “do not disclose the specific dimensions for optimizing the leakage prevention or
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`reduction effects of the claimed leakage prevention means”;
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`(cid:120) “describe the structure and functionality of the clearance portion with less detail
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`than the ’911 Patent”; and
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`(cid:120) “do not provide the level of specificity provided in the ’911 Patent.”
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`195. Dr. Abraham opines (¶ 356) that the ‘911 patent claims a “significant
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`improvement” over the prior art Shell Design patents because of “the specific claimed
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`dimensions”:
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`[T]he technology claimed in the ’911 Patent represents a significant improvement over
`the prior art as compared to the improvement over the prior art described by the patents in
`the Shell Design Family. Specifically, the ’911 Patent provides additional detail to ensure
`that the leakage prevention structures in the e-cigarette device performs at an optimal
`level. For example, as discussed above, the patents in the Shell Design Family disclose a
`clearance but do not provide specific dimensions for the clearance. In contrast, the ’911
`Patent provides this additional detail, for example, in claim 1 by reciting “wherein the at
`least one cavity has a largest cross-sectional dimension x taken along a cross-section of
`the cavity in a direction perpendicular to the longitudinal direction of the cavity, where x
`is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.” ’911 Patent at cl. 1. In addition, the
`’911 Patent describes the purpose for the specific claimed dimensions, explaining that
`“[t]his size has been found to be advantageous since it is large enough to collect a
`sufficient amount of liquid, but small enough to trap the liquid in the cavity by capillary
`action.” Id. at 12:46-48. The specific dimensions specified by the ’911 claims make it
`easier and more feasible to manufacture a commercial product that reaps the benefits of
`the claimed inventions.
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`196. Dr. Abraham thus stresses that it is the specifically-claimed cross-sectional
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`dimensions “where x is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm” that makes the ‘911
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`patent claims different than the “clearance” disclosed in the prior art Shell Design
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`patents. Consequently, if the largest cross-sectional dimensions of any cavities or clearances in
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`an aerosol-generating system are sized to fall outside that range, then such an aerosol-generating
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`system would not infringe the ‘911 patent claims.
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`197. Dr. Abraham further opines that “the technology claimed in the ’911 Patent is
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`more valuable than the combined value of the technology claimed in the patents of the Shell
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`Design Family.” (Abraham Opening Rpt. ¶¶ 353-356.) However, all the ’911 patent claims
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`necessarily require that “the at least one cavity has a largest cross-sectional dimension x taken
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`along a cross-section of the cavity in a direction perpendicular to the longitudinal direction of the
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`cavity, where x is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.” By comparison, I
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`understand that none of the claims of the issued patents in the Shell Design Family (the ’944
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`patent; the ’742 patent; the ’632 patent; the ’548 patent; the ’034 patent) include a similar
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`numerical requirement for the “largest cross-sectional dimension” of a “cavity” or “blind hole”
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`in the aerosol-forming chamber of an e-cigarette device, and Dr. Abraham does not account for
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`the value of the absence of this detailed dimensional requirement in the interior structure of an e-
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`cigarette device.
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`198. My opinions here address non-infringing alternatives for the Solo G1, Solo G2,
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`Vibe, and Ciro, as laid out in Dr. Abraham’s opening report served February 24. As noted
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`above, I understand that Dr. Abraham’s opinions in his February 24 report regarding alleged
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`infringement of the ’911 patent by the VUSE Alto product have been withdrawn, and Dr.
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`Abraham’s opinions regarding alleged infringement of the ’911 patent by the Alto are set forth in
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`his Supplemental Expert Report dated March 12, 2021. I understand that, by agreement of the
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`Conclusion
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`Based on the analysis in this report and the documents and testimony that I reviewed and
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`relied upon in reaching my opinions, I have concluded that the Reynolds Solo, Vibe, and Ciro
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`Products do not infringe the asserted claims of the '911 patent, and there is no induced
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`infringement of the asserted claims of the '911 patent.
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`This report sets forth my opinions and the basis and reasons for them. I reserve the right
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`to supplement this report to the extent permitted under the rules if additional infonnation becomes
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`available to me--for example, in response to any determinations by the Court, opinions expressed
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`by Philip Morris's experts in the litigation, or additional evidence or testimony developed in the
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`proceeding. If called upon to testify at trial, I may create demonstrative exhibits or other visual
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`aids to assist with the presentation of my opinions.
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`Dated:
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