Case 1:20-cv-00393-LO-TCB Document 967-5 Filed 02/11/22 Page 1 of 7 PageID# 27268
`Case 1:20-cv-00393-LO-TCB Document 967-5 Filed 02/11/22 Page 1 of 7 PagelD# 27268
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`EXHIBIT 5
`EXHIBIT 5
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`Case 1:20-cv-00393-LO-TCB Document 967-5 Filed 02/11/22 Page 2 of 7 PageID# 27269
`CONFIDENTIAL – SUBJECT TO PROTECTIVE ORDER
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`Civil No. 1:20-cv-00393-LO-TCB
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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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`REBUTTAL EXPERT REPORT OF DR. TRAVIS BLALOCK REGARDING
`NON-INFRINGEMENT OF U.S. PATENT NOS. 6,803,545 AND 10,420,374
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`Dated ________________________
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`Dr. Travis N. Blalock
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`Case 1:20-cv-00393-LO-TCB Document 967-5 Filed 02/11/22 Page 3 of 7 PageID# 27270
`CONFIDENTIAL BUSINESS INFORMATION – SUBJECT TO PROTECTIVE ORDER
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`’545 Patent.” (Id.) But such statement ascribes too much credit to the ’545 Patent and too little
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`credit to the Spray Atomizer family.
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`(i)
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`The Alleged Technical Value Of The ’545 Patent Is Primarily
`Attributable To The Prior Art
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`175. The ’545 Patent provides almost no technical value over what was already well
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`understood in the art as explained in paragraphs 47-60, and 83-246 of my Opening Invalidity
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`Report. The ’545 Patent cites another Philip Morris Patent, U.S. Patent No. 6,040,560 to
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`Fleischhauer, which issued more than two years prior to the filing of the ’545 Patent.
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`Fleischhauer describes using pulse width modulation (“PWM”) in an electronic cigarette to
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`provide puffs with consistent taste and delivery to the user. (Fleischhauer at 3:5-24; 13:34-44.)
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`Fleischhauer describes numerous benefits of using pulse width modulation in electronic
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`cigarettes and includes identical Figures as the ’545 Patent including an identical schematic,
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`block-diagram for the control circuit. Compare ’545 Patent Figs. 1-3 with Fleischhauer Figures
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`2, 3, and 7.
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`176. Fleischhauer states that the “batteries 35a are sized to provide sufficient power for
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`the heaters,” that “[a]lternative sources of power are suitable,” and in “the preferred embodiment,
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`the power source comprises four nickel-cadmium battery cells connected in series with a total,
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`non-loaded voltage in the range of approximately 4.8 to 5.6 volts.” (Fleischhauer at 5:22-29.)
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`The only difference between Fleischhauer and the ’545 Patent is that Fleischhauer does not
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`explicitly mention lithium ion batteries. Rather, Fleischhauer incorporates by reference U.S. Pat.
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`No. 5,144,962 that “describes several types of power sources useful in connection with the
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`smoking system of the present invention” (Id. at 5:32-38), which included “rechargeable lithium
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`manganese dioxide” batteries. (’962 Patent at 9:62-65.) The technology described by the ’545
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`Patent was well known in the prior art.
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`177. Even though the advantages of PWM were well known in the art, as evidenced by
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`Fleischhauer’s explicit disclosure, Mr. McAlexander improperly ascribes the benefits of pulse
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`width modulation to the ’545 Patent. Mr. McAlexander states that “by using the invention of the
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`’545 Patent, however, lithium ion batteries are made viable in electrical resistance smoking
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`systems because they ‘can be used safely and effectively.’” (McAlexander Report at ¶ 66.) He
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`alleges that “[a]bsent the claimed invention, using lithium ion batteries in systems requiring such
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`high discharge rates (such as e-cigarette devices) would require drawing current that” would
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`“risk that the battery could become hot, catch fire, or explode.” (Id.) But, it is the technology of
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`PWM generally that allows for high initial discharge rates and then to scale back the delivered
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`power such that the battery is prevented from overheating. As described in Fleischhauer, the
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`control circuit delivers varying amounts of power to the heater over multiple phases.
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`(Fleischhauer at 13:15-23.) Fleischhauer describes how the “first phase of the power cycle [is]
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`dedicated to the rapid achievement of the desired operating temperature of the heater” and the
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`second phase “avoid[s] peaks in heater temperature and avoiding run-away pyrolysis.” (Id.)
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`This technology of avoiding peaks in heater temperature and avoiding run-away pyrolysis of the
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`tobacco also avoids runaway temperatures of the battery.
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`178. Second, Mr. McAlexander alleges that because lithium ion batteries have higher
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`voltages, the ’545 Patent “enables [the] electrical[] heating elements ‘to become hot in a very
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`short period of time.’” (McAlexander Report at ¶ 67.) But, the technology described in
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`Fleischhauer already provided a first power phase “to promote a quick climb in heater
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`temperature” and a second power phase that “sustain[ed] an elevated heater temperature.”
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`(Fleischhauer at 19:60-67.) Moreover it would be a simple and predicable design choice to add
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`additional batteries in series to increase the voltage output from the batteries if a higher discharge
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`rate was deemed necessary.
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`179. Third, Mr. McAlexander alleges that the technology of the ’545 Patent “enables
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`the overall device to be more compact and smaller,” because lithium ion batteries have higher
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`voltages. (McAlexander Report at ¶ 68.) This would be true if the inventors of the ’545 Patent
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`had invented lithium ion batteries. But they did not. In fact, as recognized in U.S. Patent No.
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`5,144,962 (“’962 Patent”)—the patent that the ’545 Patent incorporates by reference—
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`rechargeable lithium batteries were already being used in electronic smoking articles. (’962
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`Patent at 12:2-3.) Any benefit of the smaller form factor was a predicable result of substituting
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`one known battery technology for another.
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`180. Fourth, Mr. McAlexander alleges that the controller in the ’545 Patent “deliver[s]
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`modulated pulses of electrical energy” to “prevent[] the power from being inconsistent, based on
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`battery voltage, and thus ensures receipt by the user of a consistent aerosol.” (McAlexander
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`Report at ¶ 69.) This is pulse width modulation that is fully disclosed by Fleischhauer.
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`Fleischhauer teaches “deliver[ing] a consistent smoking experience,” by “adjust[ing] the duty
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`cycles of each phase as the batteries progress through their discharged cycles so as to maintain
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`the predetermined total energy application.” (Fleischhauer at 15:40-56.) Again, this alleged
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`benefit is not attributable to the ’545 Patent.
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`181. Fifth, Mr. McAlexander alleges “consumption of the battery voltage and power
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`can be varied through time, which provides the user with the ability to regulate the battery
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`consumption and, thus, provide a quick and intense heat.” (McAlexander Report at ¶ 70.) As
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`previously discussed, varying power over time, first with an initial high power and second with a
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`sustained maintenance power was expressly taught by Fleischhauer. (Fleischhauer at 13:15-23;
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`19:60-67.) This alleged benefit is not attributable to the ’545 Patent.
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`182. Sixth, Mr. McAlexander alleges that the “’545 Patent enables the usage of high
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`current draw from the lithium ion battery, which in turn helps create ‘good flavor generation.’”
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`(McAlexander Report at ¶ 71.) Again, this is a benefit of pulse width modulation that was
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`already well known in the art. Fleischhauer teaches using a first phase with a high current draw
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`and a second phase that delivers less current to sustain the elevated heater temperature.
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`(Fleischhauer at 19:45-67.) This ensures good flavor generation by delivering a “first puff [that]
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`is more consistent with the subsequent puffs in taste and delivery. (Id. at 13:34-44.) This
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`alleged benefit is not attributable to the ’545 Patent.
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`183. Seventh, Mr. McAlexander alleges the ’545 Patent “enables longer battery life per
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`charge of the battery,” “[b]y modulating the pulses of energy.” (McAlexander Report at ¶ 72.)
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`As described above, Fleischhauer explicitly teaches modulating the pulses of energy from the
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`battery, which will allow the battery to operate longer than if the energy battery was not pulsed.
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`Mr. McAlexander also alleges that the technology of the ’545 Patent “permits one to upwardly
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`adjust the parameters of additional protection circuitry to permit short bursts of a higher current
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`level than the manufacturer’s recommended level.” (Id. at ¶ 74.) Again, this benefit is derived
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`from operating the battery using pulse width modulation. These alleged benefits are not
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`attributable to the ’545 Patent.
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`184. Lastly, Mr. McAlexander alleges that “the short circuit protection discussed by
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`the ’545 Patent provides an additional benefit because it provides an additional layer of safety
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`protection from overcurrent of the lithium ion power source.” (Id. at ¶ 75.) The ’545 Patent
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`discloses this circuit in Figure 4 and in column 10. Figure 4 is the only figure of the ’545 Patent
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`that was not explicitly disclosed by Fleischhauer. While current protection circuits were not
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`new, Figure 4 and the corresponding description in column 10 is the only portion of the ’545
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`Patent that was not explicitly disclosed by Fleischhauer. But my understanding from the
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`deposition of Mr. Robert Ripley, one of the named inventors of the ’545 Patent, and the witness
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`identified to testify on behalf of Altria and Philip Morris U.S.A., regarding the invention taught
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`by the ’545 Patent, the battery protection circuity described in column 10 the ’545 Patent and
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`shown in Figure 4 of the ’545 Patent was designed and developed by engineers at Sanyo
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`Corporation, who are not named inventors on the ’545 Patent. Moreover, the ’545 Patent
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`specification explains that “[m]anufacturers of lithium ion batteries provide circuitry within the
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`battery to prevent overdischarge and overcharging of the lithium ion battery.” (’545 Patent at
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`9:63-65.) Accordingly, this protection circuity should not be considered in determining the
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`benefits ascribed to the ’545 Patent.
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`(ii) Mr. McAlexander Admits The Spray Atomizer Patents Have
`Technological Value
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`185. Mr. McAlexander’s own analysis confirms that the technology in the Spray
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`Atomizer patents include benefits such as: (1) “system that ‘removes the micro-dirt accumulated
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`on the heating body,’ providing a cleaner, more desirable smoke for the end user,” (2) “a
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`rechargeable battery assembly that is separate from the atomizer,” so “the electrode [can]
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`function as a charging interface for the battery,” (3) “spraying the air-liquid mixture onto the
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`heating body, [so that] a more consistent mixture would be achieved.” (McAlexander Report at
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`¶¶ 738-739.)
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`186.
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`In my opinion, Mr. McAlexander’s analysis is fundamentally flawed in that it
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`attributes value to the ’545 Patent, that was already in the prior art and also largely ignores the
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`value of the nine Spray Atomizer patents.
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