Case 1:20-cv-00393-LO-TCB Document 967-3 Filed 02/11/22 Page 1 of 8 PageID# 27249
`Case 1:20-cv-00393-LO-TCB Document 967-3 Filed 02/11/22 Page 1 of 8 PagelD# 27249
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`EXHIBIT 3
`EXHIBIT 3
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`Case 1:20-cv-00393-LO-TCB Document 967-3 Filed 02/11/22 Page 2 of 8 PagelD# 27250
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`Case 1:20-cv-00393-LO-TCB Document 967-3 Filed 02/11/22 Page 2 of 8 PageID# 27250
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIADIVISION
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`Civil No; 1:20-cv-00393-LO-TCB
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`)
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`) ) )
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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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`
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`) ) )
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`EXPERT REPORT OF DR. THOMASF. FULLER
`REGARDINGU.S. PATENT NO.6,803,545
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`Dated Febnue ay aAv|
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`Thogmer J Tulle
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`Dr. ThomasF’. Fuller
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`not be discharged at a current greater than 1000 milliamps (mA) or 1 amp. This is because
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`discharging the battery at rates greater than 1 C could cause the battery to become hot, catch fire,
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`or explode.” (’545 patent, col. 9, lines 18-28)
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`56.
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`The ’545 patent specification further states that “[t]he electrical resistance heaters
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`of the present invention draw peak discharge currents in the range of 15 to 30 C. This is well
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`above industry norms of discharge rates of between 2 to 3 C for consumer products that are
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`considered to require high discharge rates. Although lithium ion batteries are not intended to
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`deliver the discharge rates required for electrical smoking systems, the electrically heated smoking
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`device of the present invention provides an arrangement wherein lithium ion batteries can be used
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`safely and effectively.” (’545 patent, col. 9, lines 28-37)
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`57.
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`I disagree with the statement that lithium ion batteries were not necessarily intended
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`to deliver the discharge rates required for electrical smoking systems at the time of the filing of
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`the ’545 patent. This statement seems to be based on a incorrect or incomplete understanding of
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`the lithium-ion batteries that were available at the time of the filing of the ’545 patent. As already
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`discussed, at that time lithium-ion batteries were being used in high current medical device
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`applications, and even Philip Morris had patents recognizing the use of lithium-ion batteries (e.g.,
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`Counts ’962 Patent).
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`58. Moreover, battery manufacturers generally do not provide a single value for the
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`maximum discharge rate (C-rate) for batteries. Larger batteries typically are able to sustain larger
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`currents. The rate at which current is drawn from the cell is normalized in terms of the capacity
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`(size) of the cell in A-h. The reason for this is that the same discharge current may represent a
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`very high rate of discharge for a small battery and a low rate of discharge for a large-capacity
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`battery. The normalized rate of charge or discharge is expressed as a C-rate, which is a multiple
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`of the rated capacity. A rate of “1C” draws a current that is equal to the capacity expressed in Ah.
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`59.
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`It is not accurate now, nor was it at the time of the ’545 patent, to state without
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`qualification that “manufacturers of lithium ion batteries recommend that the battery not be
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`discharge at greater than 1C . . .” The more relevant question is whether the current draw is
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`continuous or short term. For example, the same battery that can provide continuous discharge at
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`1C may be capable of 5C for short periods of time. The temperature of the cell can also be a factor
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`in limiting the rate capability of the cell.
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`60.
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`In addition to the cell chemistry (lithium-ion, lead-acid, NiCd, etc.), the design of
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`the cell has a tremendous influence on the rate capability of the battery. Changing the thickness
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`of electrodes and the separator can result in the same cell materials being able to discharge safely
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`at much higher rates. See e.g., Fuller and Harb, Electrochemical Engineering, Wiley 2018, Ch. 8..
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`As an example, the battery used in the Honda Accord hybrid is capable of discharing at 60 C,
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`https://www.gs-yuasa.com/en/newsrelease/article.php?ucode=gs160711142215_271. With the
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`similar chemistry, another design (18650) is only rated for 3C for pulse discharges.
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`https://www.antbatt.com/wp-content/uploads/2019/09/18650-3.6V-2600mAh-Datasheet.pdf.
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`61.
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`The ‘545 patent claims to “prevent damage to the lithium ion power source”
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`through the use of pulsed controller. (’545 patent, 11:35) Based on description in the specification,
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`and its use in connection a “controller to control the flow of modulated pules of electrical power,”
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`I understand the claim to be talking about preventing damage to the lithium-ion battery cells in the
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`“electrical sense” –not physical protection, like a housing or case. Similarly, I would not expect
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`this claim language to be directed to the preventing the normal wear and tear on a lithium-ion
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`battery based on use and aging. It is well-known that lithium-ion batteries lose capacity and power
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`capability over time.
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`62.
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`Damage, loss of capacity or complete failure, can be the result of negligence,
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`carelessness or misuse; i.e., using the battery under conditions outside of the intended design
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`parameters and conditions. It is well known that a lithium-ion battery can be designed to operate
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`at rates of 15 to 30C for short periods of time, and that such techniques were known at the time of
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`the filing of the ’545 patent, see e.g., the Takeuchi ‘953 patent discussed previously. My
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`understanding from reading the ’545 patent, however, is that the inventors are claiming to have
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`invented a system using a pwm controller to prevent damage to a lithium-ion power source, where
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`the battery is used well outside of its intended design envelope.
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`63.
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`The ’545 patent specification suggests to a POSA that the electrical smoking system
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`claimed in the ’545 patent are those systems having a peak current discharge rate in the range of
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`15 C to 30 C. Specifically, the ’545 patent specification suggests that the problem purportedly
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`solved by the ’545 patent is “an arrangement wherein lithium ion batteries can be used safely and
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`effectively” in an electrical smoking device having resistance heaters that require high peak
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`discharge current values. (’545 patent, col. 9, lines 28-37)
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`64.
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`But based on my review of the ’545 patent specification, I did not identify a
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`description of “a controller to control a flow of modulated pulses of electrical power from the
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`lithium-ion power source to the at least one electrical resistance heating element to prevent damage
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`to the lithium ion power source” as required by the last limitation of claim 1 of the ’545 patent.
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`65.
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`Instead, the ’545 patent specification simply provides that for the electrical smoking
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`system disclosed “the required current is drawn from the lithium ion battery for a short period of
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`time on the order of approximately one to two seconds, preferably 1.6 seconds, which is too short
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`of a duration to cause the battery to lose so much voltage that it can no longer generate sufficient
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`power for good flavor generation, or become hot, catch fire or explode.” (’545 patent, col. 9, lines
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`28-37).
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`66.
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`The controller of the ’545 patent is described in the specification at column 6, line
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`23 through column 9, line 17 and a block diagram of such controller is shown in Figure 3 of the
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`patent. In terms of the controller turning on the heaters for short periods of time, the ’545 patent
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`specification provides that “[t]he logic circuit 195 cooperates with the timing circuit 197 to
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`precisely execute the activation and deactivation of each heater element 37 in accordance with a
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`predetermined total cycle period and to precisely divide each total cycle period into a
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`predetermined number of phases, with each phase having its own predetermined period of time.
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`In the preferred embodiment, the total cycle period has been selected to be 1.6 seconds (so as to
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`be less than the two second duration normally associated with a smoker's draw upon a cigarette,
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`plus provision for margin). The total cycle is divided preferably into two phases: a first phase
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`having a predetermined time period of one second and a second phase having a predetermined
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`time period of 0.6 seconds.” (‘545 patent, col. 6, 37-49).
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`67.
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`From my review of the patent specification, I did not identify anything new about
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`the controller described in the ’545 patent specification. Rather, in my review of ’560 patent
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`(Fleischhauer), I noted that the exact same controller shown in Figure 3 of the ’545 patent is shown
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`in Figure 7 of the ’560 patent. Moreover, I noted that the description of the controller for sending
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`power to turn on the heater for limited periods of time was nearly identical. Specifically, the ’560
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`patent provides the following: “The logic circuit 195 cooperates with the timing circuit 197 to
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`precisely execute the activation and deactivation of each heater element 37 in accordance with a
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`predetermined total cycle period ("t.sub.total ") and to precisely divide each total cycle period into
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`a predetermined number of phases, with each phase having its own predetermined period of time
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`("t.sub.phase "). In the preferred embodiment, the total cycle period t.sub.total has been selected
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`to be 1.6 seconds (so as to be less than the two-second duration normally associated with a smoker's
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`draw upon a cigarette, plus provision for margin) and the total cycle period t.sub.total is divided
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`preferably into two phases, a first phase having a predetermined time period ("t.sub.phase 1 ") of
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`1.0 seconds and a second phase having a predetermined time period ("t.sub.phase 2 ") of 0.6
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`seconds.” (’560 patent, col 9, lines 11-23). I did not identify any material difference in terms of
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`how the controller, shown in Figure 3 of the ‘’545 patent, operated as compared to the controller
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`show in in Figure 7 of the ‘560 patent.
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`68.
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`Further, while the use of pwm can have benefit for managing the power to the
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`heaters, it would also likely increase the peak C-rates required to deliver the same power. If the
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`average power for the heaters required by the system during the roughly 2s operation is known to
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`achieve the preferred “thermal pathway”, then as the duty of the pwm (off-time) decreases the
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`peak current required by the battery will increase, and the heat generated in the battery will
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`increase. Both of these would arguably have the effect of increasing damage to the battery, not
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`preventing damage to the battery. There is no discussion of this potential issue in the ’545 patent
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`specification.
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`69.
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`The use of a capacitor in parallel with the cell as shown in the battery protection
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`circuit shown in Figure 4 creates a hybrid power source, that does reduce the peak power drawn
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`from the cell. However, there is nothing new or novel with this technique. See e.g., (R. A. Dougal,
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`S. Liu and R. E. White, "Power and life extension of battery/ultracapacitor hybrids", IEEE Trans.
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`Comp. Packag. Technol., vol. 25, pp. 120-131, Mar. 2002.), J. R. Miller, "Battery̵capacitor power
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`source for digital communication applications: Simulations using advanced electrochemical
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`capacitors", Proc. Electrochem. Soc. Conf., vol. 95-29, pp. 246-254, 1995-Oct. And in any event,
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`this battery protection circuit, as described in the ’545 patent, is part of the claimed battery power
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`source, and not part of the the claimed pwm controller.
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`70.
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`In my opinion, there is nothing disclosed in the ’545 patent specificationthat would
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`convey to a POSA that the inventors of the ’545 patent had possessikinvented a way to “prevent
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`damage” to a lithium-ion battery power source using a controller to control modulated pulses in
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`an electronic smoking device as claimed. its specification would convey to a POSA that the
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`inventor had possession of the full scope of the claimed invention Accordingly, in my opinion,
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`claim 1 of the ‘545 patent and the other claims that depend from it are invalid for failing to comply
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`with the written description requirement.
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`X.
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`CONCLUSION
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`71.
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`This report sets forth my opinions and the basis and reasons for them. I reserve the
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`right to supplement this report to the extent permitted under the rules if additional information
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`becomes available to me—for example, in response to any determinations by the court, opinions
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`expressed by PM-US’s experts in the litigation, or additional evidence or testimony developed in
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`the proceeding.
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