Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 1 of 7 PageID# 27306
`Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 1 of 7 PagelD# 27306
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`EXHIBIT 9
`EXHIBIT 9
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`(PUBLIC)
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`Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 2 of 7 PageID# 27307
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`RESTRICTED – ATTORNEYS’ EYES ONLY
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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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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`Civil Action No. 1:20-cv-393
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`SECOND AMENDED AND SUPPLEMENTAL OPENING EXPERT REPORT OF JOHN
`ABRAHAM RELATING TO US PATENT NOS. 10,104,911 AND 10,555,556
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`Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 3 of 7 PageID# 27308
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`I reserve the right to amend or supplement my opinions should RJR identify additional purported
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`alternatives or provide any evidence or explanation supporting its alleged design arounds.
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`XII. RJR HAS NOT IDENTIFIED ANY ACCEPTABLE, NON-INFRINGING
`ALTERNATIVES TO THE INVENTIONS CLAIMED IN THE ’556 PATENT
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`370.
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`I understand that RJR asserts that the ’556 Patent “can be designed around at least
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`by not using both ‘a first capillary material’ and ‘a second capillary material,’ or by changing the
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`configuration of the ‘first capillary material’ and the ‘second capillary material’ in the cartridge.”
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`RJR’s Resp. to Interr. No. 4 (Nov. 9, 2020) at 7. I disagree. The benefits of the ’556 Patent
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`discussed above are achieved through the use of two capillary material and RJR does not identify
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`any specific ways how these same benefits can be achieved without using a “first capillary
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`material” and a “second capillary material” or how any changes would not result in other
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`drawbacks. Similarly, RJR provides no detail about what “changing the configuration of the ‘first
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`capillary material’ and the ‘second capillary material’ in the cartridge” entails or how these
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`changes can be made to retain the benefits of the ’556 Patent without other drawbacks. Such
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`configuration changes will likely require significantly re-engineering the product, which RJR does
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`not account for.
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`XIII. COST SAVINGS ASSOCIATED WITH THE ’556 PATENT
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`371. The technology claimed in the ’556 Patent allows RJR to save costs with respect
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`to two components: (1) the combination of the heater and capillary materials and (2) the e-liquid.
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`A.
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`Reducing Materials Used
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`372. Using the technology claimed in the ’556 Patent, a cartridge for an e-vapor product
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`can be manufactured at reduced costs because e-liquid is transported from the tank to the heater
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`through two capillary materials, which eliminates the 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. I
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`understand that this approach also significantly reduces e-liquid waste as compared to prior art
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`approaches because when the liquid is entirely held in gauze (or a similar material).
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`373. RJR realizes cost savings by using the technology claimed in the ’556 Patent in the
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`VUSE Vibe compared to a product (such as the VUSE Solo) that is manufactured using a prior art
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`approach.
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`374. The VUSE Vibe
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` The VUSE Solo
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`375.
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`It is therefore appropriate to compare the cost of the
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`in the Vibe (which are part of the infringing functionality) to the
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`cost of the
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` in the Solo (which are arranged in the prior art
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`configuration described in the ’556 Patent) to measure the cost savings provided by ’556 Patent.
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`B.
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`Reducing Wasted E-Liquid
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`376.
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`I understand that one additional benefit of the ’556 Patent technology is that it
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`“avoids waste of aerosol-generating substrate liquid.” ’556 Patent at 1:52-57. In prior art systems
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`where the liquid aerosol-generating substrate is “held in the capillary material and delivered to the
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`wick,” there will be “some residual liquid” that “remain[s] in the capillary material after usage,
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`leading to wastage.” Id. at 1:44-48.
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`377.
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`I understand that testing done by Philip Morris compared a “Reference” design
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`using the prior art approach of holding all of the liquid in “capillary material” (e.g., design 1 shown
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`below) to designs where two capillary materials are used, along with liquid within a liquid tank as
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`described by the ’556 Patent. For example, as shown below
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` (e.g.,
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`).
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`PMP_EDVA00005605; see also PMP_EDVA00005555-5608; Brifcani Dep. Tr. at 80:12-25;
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`81:5-17; 171:8-172:8; 195:22-196:7.
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`378.
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`I believe it is reasonable to conclude that the VIBE’s use of the claimed invention
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`reduces liquid waste
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` Adopting the prior art approach with the Vuse VIBE to overcome
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`issues with orientation, see, e.g., RJREDVA_001655369 at RJREDVA_001655431-1655435,
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`) would
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`similarly result in
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`of liquid volume wastage. This is based on a Zoom conversation I had
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`with Noori Moyad on February 24, 2021, my review of the Vuse VIBE tanks, and Philip Morris’
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`findings described above.
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`379.
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`In addition to the use of the two capillary materials in the manner claimed in the
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`’556 Patent, the Vuse VIBE incorporates various other patented features that would reduce liquid
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`Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 6 of 7 PagelD# 27311
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`wastage. Fist, asdiscussed»,
`SS <...::
`Be These patented features further facilitates transfer
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`of liquid from the liquid storage containerto the wick, reducing liquid wastage.
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`380.
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`I understand that Dr. James Figlar was recently deposed on May 3, 2021 as a
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`corporate witness for RJR relating to certain aspects of the ’556 patent. Dr. Figlar testified that
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`theee. Figlar Dep. Tr. at 23:8-10. Dr.
`Figlar’s testimony showsthat the ma is therefore different from the prior art “tank device”
`describe in the °556 patent which, unlike a. had the problem where “the system stops
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`generating aerosolif the device is held at such an angle that the liquid aerosol-generating substrate
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`in the tank is not in contact with the capillary system”andis prone to leakage. ’556 patent at 1:26-
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`40. This testimony provides further evidence supporting my opinion that, for purposes of
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`determining the cost savings achieved by using the °556 patented technology,it is appropriate and
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`reasonable to compare the Solo (which embodies the prior art approach described in the *556
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`patent) and the Vibe (which uses the technology claimed in the °556 patent, which is an
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`improvementoverthe prior art approach to solving the orientation problem described in the ’556
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`patent). Further, Dr. Figlar noted that the Ciro (which came on the marketlater than the Solo and
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`Vibe) vsEI FolDep. Trat 19:14-202. For
`a
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`Case 1:20-cv-00393-LO-TCB Document 967-9 Filed 02/11/22 Page 7 of 7 PageID# 27312
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`I declare under penalty of perjury that to the best of my knowledge, information, and belief, the
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`foregoing statements are true and correct.
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`DATED: May 10, 2021
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`Dr. John Abraham
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