Case 1:20-cv-00393-LO-TCB Document 967-8 Filed 02/11/22 Page 1 of 13 PageID# 27293
`Case 1:20-cv-00393-LO-TCB Document 967-8 Filed 02/11/22 Page 1 of 13 PagelD# 27293
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`EXHIBIT 8
`EXHIBIT 8
`(PUBLIC)
`(PUBLIC)
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`Case 1:20-cv-00393-LO-TCB Document 967-8 Filed 02/11/22 Page 2 of 13 PageID# 27294
`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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`Case No. 1:20-cv-00393-LO-TCB
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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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`RESPONSIVE EXPERT REPORT OF KELLY R. KODAMA
`REGARDING U.S. PATENT NO. 10,555,556
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`(RJREDVA_001022592-593.)
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`54.
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`A A
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`—_ \o
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`56.
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`I analyzed the VUSE Vibe product to understand its structure, which included
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`disassembling and photographing its components. In addition, I reviewed dimensioned
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`engineering drawings and computer-aided design (CAD) files provided by Reynolds.
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`57.
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`The general methodology used to perform this analysis was as follows: first, I
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`unpacked the VUSE Vibe product and took photographs using the camera on a smartphone
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`(iPhone 12). I photographed the exterior of the device and packaging. I then disassembled the
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`components to examine the internal structure of the device. I disassembled the device using
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`pliers and tweezers to remove the components as intact as possible. Smartphone imaging was
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`suitable for identifying the components within the device.
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`IX. Analysis – ’556 Patent
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`58.
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`Dr. Abraham contends that:
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` (Abraham Opening Rpt. at ¶ 264.)
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`59.
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`Below, I explain how the VUSE Vibe product does not meet all the limitations of
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`independent claim 1, and therefore the Vibe product necessarily does not meet the limitations of
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`dependent claims 3-8 and 15.
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`A.
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`60.
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`The Vibe Does Not Infringe The Asserted Claims of the ’556 Patent
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`In my opinion, the VUSE Vibe product does not infringe the asserted claims of
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`the ’556 patent identified by Dr. Abraham.
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`any claim of the ’556 patent.
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`102. For these reasons, I disagree with Dr. Abraham’s opinion regarding alleged
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`induced infringement of the ’556 patent.
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`XII. Alleged ’556 Cost Savings
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`103.
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`I understand that Dr. Abraham contends that “[t]he technology claimed in the
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`’556 patent allows [Reynolds] to save costs with respect to two components: (1) the
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`combination of the heater and capillary materials and (2) the e-liquid.” (Abraham Opening Rpt.
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`at ¶¶ 371-379.) As discussed above, I do not agree that the Vibe utilizes “the technology claimed
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`in the ’556 Patent” and my opinion is that Vibe does not infringe any asserted claim of the ’556
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`patent. In addition, in my opinion, Dr. Abraham’s analysis of alleged costs savings is based on
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`inapt or incomplete comparisons.
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`A.
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`Alleged Reduction of Materials Used
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`104. Dr. Abraham contends that “[u]sing the technology claimed in the ’556 Patent, a
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`cartridge for an e-vapor product can be manufactured at reduced costs
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`reduces e-liquid waste as compared to prior art approaches because
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` and he asserts that “this approach also significantly
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` (Abraham Opening Rpt. at ¶ 372.)
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`105. Dr. Abraham opines that Reynolds “realizes cost savings by using the technology
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`claimed in the ’556 Patent in the VUSE Vibe compared to a product
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`that is manufactured using a prior art approach.” (Abraham Opening Rpt. at ¶ 373.)
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`106.
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`107.
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`In focusing exclusively on a prior art approach where “the liquid is entirely held
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`in gauze (or a similar material)” and where there is a “need to use (and the cost associated with
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`using) a piece of gauze (or a similar material) sufficiently large to hold all of the liquid,”
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`Dr. Abraham fails to address other known prior art approaches. And in my opinion, he
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`overlooks a more apt comparison for the Vibe product.
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`108.
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`(RJREDVA_000961849; RJREDVA_000961857.)
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`109.
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`In other systems, the liquid storage portion of a cartridge is filled with a capillary medium.
`The liquid aerosol-generating substrate is held in the capillary material and delivered to the
`wick. With such system the above mentioned problems of the holding angle and the risk of
`leakage can be reduced. However, some residual liquid will remain in the capillary material
`after usage, leading to wastage. Further, there can be an inconsistency in puff deliveries in
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`such systems due to decreasing saturation of the capillary medium during usage, which does
`not allow for a constant high quality smoking experience.
`110. But the ’556 patent also describes a different kind of prior art configuration at
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`col. 1, lines 26-33:
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`In some types of electrically operated aerosol-generating devices, a reservoir of aerosol-
`forming liquid is provided in a tank. In use in the aerosol-generating system, the liquid is
`conveyed from the tank by capillary action into the wick of a coil wick heater assembly
`where the liquid is vaporized. When a user draws at the mouthpiece an airstream flows over
`the heater assembly and the generated aerosol is inhaled by the user.
`111.
`In this other known prior art configuration, the liquid tank is not filled with a
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`capillary medium. Thus, the liquid is not “entirely held in gauze (or a similar material)” and
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`there is no need “to use (and [incur] the cost associated with using) a piece of gauze (or a similar
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`material) sufficiently large to hold all of the liquid.”
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`112. Dr. Abraham acknowledges that these two different alternative configurations are
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`conceded to be prior art in the ’556 patent: “The ’556 Patent recognized that, in prior art
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`systems, the aerosol-forming liquid could either be held in a tank or in a capillary material.”
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`(Abraham Opening Rpt. ¶ 259.)
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`113.
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`(RJREDVA_001150411; RJREDVA_001022595.)
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`114.
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`115.
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`116. Dr. Abraham references BOMs to identify the cost of the individual components
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`that “provide the functionality of transferring liquid to the heater,” and he contends these
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`component costs can be used “to measure the cost savings provided by ’556 Patent.” (Abraham
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`Opening Rpt. ¶¶ 374-375.)
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`117.
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`I have reviewed BOMs for the Vibe product and the Ciro product.
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`(RJREDVA_001144077 (Vibe); RJREDVA_001506017 (Ciro).)
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`118.
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`119.
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`B.
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`Alleged Reduction of Wasted E-Liquid
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`120. Dr. Abraham further opines that an “additional benefit of the ’556 Patent
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`technology” is an improvement over “prior art systems where the liquid aerosol-generating
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`substrate is ‘held in the capillary material and delivered to the wick,’” because in those prior art
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`systems “there will be ‘some residual liquid’ that ‘remain[s] in the capillary material after usage,
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`leading to wastage.’” (Abraham Opening Rpt. ¶ 376, quoting ’556 patent at 1:44-48.)
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`121. Here again, Dr. Abraham exclusively focuses on only one of the known prior art
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`configurations described in the ’556 patent. Dr. Abraham again only mentions “prior art
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`systems” where liquid is stored in a “capillary material” (like gauze) rather than a tank, as if that
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`is the only pertinent comparison for measuring potential cost savings.
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`122. But the ’556 patent (at col. 1, lines 26-33) describes a different prior art
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`configuration that,
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`, utilizes a liquid tank:
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`In some types of electrically operated aerosol-generating devices, a reservoir of aerosol-
`forming liquid is provided in a tank. In use in the aerosol-generating system, the liquid is
`conveyed from the tank by capillary action into the wick of a coil wick heater assembly
`where the liquid is vaporized. When a user draws at the mouthpiece an airstream flows over
`the heater assembly and the generated aerosol is inhaled by the user.
`123.
`In this other known prior art configuration, the tank is used to hold the liquid,
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`rather than a liquid-soaked capillary material.
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`124. Nevertheless, Dr. Abraham entirely ignores this other known prior art
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`configuration—
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`—in asserting that “the VIBE’s use of the claimed invention reduces liquid waste
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`by 30%.” (Abraham Opening Rpt. ¶ 378.)
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`125. Dr. Abraham points to “testing done by Philip Morris [that] compared a
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`‘Reference’ design using the prior art approach of holding all of the liquid in ‘capillary material’
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`(e.g., design 1 shown below) to designs where two capillary materials are used, along with liquid
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`within a liquid tank as described by the ’556 Patent,” and he asserts that “the prior art approach
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`resulted in 30% liquid volume wastage as compared to the approach where liquid is not entirely
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`held within a capillary material.” (Abraham Opening Rpt. ¶ 377, underlining added.)
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`126. Even assuming that the “testing done by Philip Morris” is accurate, and even
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`assuming that Dr. Abraham’s assessment of that testing is correct,
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`127.
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`In the “prior art approach” (“Reference” or “design 1”) relied upon by
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`Dr. Abraham for his 30% cost savings assessment, the liquid is entirely held in a “porous
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`material” or “capillary material” rather than in a separate liquid tank.
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`128. And Dr. Abraham’s opinion assumes that the only “prior art approach” relevant
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`for comparing costs would require “replacing the infringing
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` with a capillary material, such as PET
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`fibers, that holds all of the liquid aerosol.” (Abraham Opening Rpt. ¶ 378.)
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`129. Dr. Abraham does not, however, consider or address other known prior art
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`configurations where the liquid is held in a tank and not a liquid-soaked capillary material
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`(Abraham Opening Rpt. ¶ 259),
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`130.
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`In systems using this alternative prior art configuration, since liquid is stored in a
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`tank rather than a capillary material, there is no “‘residual liquid’ that ‘remain[s] in the capillary
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`material after usage, leading to wastage,” which Dr. Abraham relies upon in making his 30%
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`cost savings estimate.
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`131. Dr. Abraham’s failure to account for other admitted prior art designs where liquid
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`is held in a tank, in my opinion, renders incomplete and unreliable his conclusion that “VIBE’s
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`use of the claimed invention reduces liquid waste by 30%”.
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`132. Dr. Abraham also appears to suggest that the ’556 claimed invention overcomes
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`certain “issues with orientation” or “smoking angle” (Abraham Opening Rpt. ¶¶ 263, 378), but
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`such issues had already been addressed and solved in the prior art, for example, U.S.
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`2013/0056012 (Hearn), which I discussed at length in my opening report on invalidity. (See,
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`e.g., Kodama Opening Rpt. ¶¶ 68-70, 107-182.) Hearn recognized that “[o]ne problem with a
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`simulated cigarette of the kind described is the issue of orientation. In particular, if the device is
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`to be effective, it is important that it is able to dispense its dose in practically any orientation.”
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`(Hearn at [0004].) Hearn addressed that problem and “provide[d] a simulated cigarette device of
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`the kind described which can be used in practically all orientations.” (Hearn at [0010].) Hearn’s
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`simulated cigarette uses a liquid tank or reservoir that includes a capillary plug that “may be two
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`or more materials each having different pore sizes.” (Hearn at [0017].) With the prior art Hearn
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`approach, “the orientation of a cigarette is far less significant as [the capillary plug] will tend to
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`absorb the liquid to a greater or lesser extent in any orientation,” and “even when the reservoir is
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`almost empty, whichever orientation it is in, the liquid will come into contact with the capillary
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`rod 30 [and] [f]rom there, the rod is readily able to wick the liquid to the outlet path 13.” (Hearn
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`at [0012, 0040].)
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`133.
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`Case 1:20-cv-00393-LO-TCB Document 967-8 Filed 02/11/22 Page 13 of 13 PageID# 27305
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`Conclusion
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`Based on the analysis in this report and the documentsthat I reviewed and relied upon in
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`reaching myopinions, I have concluded that Reynolds’s Vibe product does notinfringe the
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`asserted claims of the ’556 patent, and there is no induced infringementof the asserted claims of
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`the ’556 patent.
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`This report sets forth my opinions andthe basis and reasons for them. I reserve the right
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`to supplementthis report to the extent permitted underthe rules if additional information
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`becomesavailable to me—for example, in response to any determinations by the Court, opinions
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`expressed by Philip Morris’s expertsin thelitigation, or additional evidence or testimony
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`developedin the proceeding. If called upontotestify at trial, I may create demonstrative exhibits
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