`
`
`
`
`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Monica Bhattacharyya
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN DISPOSABLE VAPORIZER
`DEVICES
`
`Inv. No. 337-TA-1410
`
`RESPONDENTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`i
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ......................................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`DISPUTE OVER DEFINITION OF PERSON OF ORDINARY SKILL IN THE ART ...1
`
`III.
`
`DISPUTED CLAIM TERMS ..............................................................................................5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Storage compartment [being configured for storage of a liquid aerosol-forming
`material] ........................................................................................................................5
`
`Heater ............................................................................................................................7
`
`Air passageway through at least a portion of the outer housing ...................................9
`
`Smoking article ............................................................................................................12
`
`Controller .....................................................................................................................16
`
`Ends..............................................................................................................................18
`
`IV.
`
`CONCLUSION ..................................................................................................................23
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`CASES
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ................................................................................................. 14
`Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp.,
`533 F.3d 1362 (2008) .................................................................................................................. 7
`Cioffi v. Google, Inc.,
`632 F. App’x 1013 (Fed. Cir. 2015) .......................................................................................... 21
`Comark Commc’ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998) ................................................................................................. 21
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251, 9 USPQ2d 1962 (Fed. Cir. 1989) ..................................................................... 13
`Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) ................................................................................................. 17
`Gen. Am. Transp. Corp. v. Cryo-Trans, Inc.,
`93 F.3d 766 (Fed. Cir. 1996) ..................................................................................................... 17
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016) ................................................................................................. 14
`Lydall Thermal/Acoustical, Inc. v. Fed.-Mogul Corp.,
`452 F.3d 112 (Fed. Circ. 2006) ................................................................................................. 15
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ................................................................................................. 17
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................................................... 14, 17
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 734 (Fed. Cir. 2016) ................................................................................................... 23
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ................................................................................................. 21
`Techtronic Indus. Co. v. Int’l Trade Comm’n,
`944 F.3d 901 (Fed. Cir. 2019) ................................................................................................... 14
`Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc.,
`212 F.3d 1377 (Fed. Cir. 2000) ................................................................................................. 22
`Zimmer Surgical, Inc. v. Stryker Corp.,
`Civil Action No. 16-679-RGA, 2018 U.S. Dist. LEXIS 102055 (D. Del. June 19, 2018) ....... 13
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`
`
`ROCCB
`
`SOCCB
`
`COCCB
`
`TEO
`
`ID
`
`POSA
`
`TABLE OF ABBREVIATIONS
`
`Respondents’ Opening Claim Construction Brief
`
`Staff’s Opening Claim Construction Brief
`
`Complainants’ Opening Claim Construction Brief
`
`Temporary Enforcement Order
`
`Initial Determination
`
`Person having Ordinary Skill in the Art
`
`
`
`iv
`
`

`

`
`
`I.
`
`
`INTRODUCTION
`
`Complainants’ Opening Claim Construction Brief advances constructions that contradict
`
`or disregard altogether the claim language and specification of the ’202 Patent, under the guise of
`
`“plain and ordinary meaning.” But the Federal Circuit has repeatedly instructed that patent claims
`
`are to be construed in light of the intrinsic evidence: the claim language, the patent specification
`
`and the prosecution history. A construction that is inconsistent with the intrinsic evidence does
`
`not reflect the patentee’s intent and should be rejected. Here, the claim language and the
`
`specification of the ’202 Patent provide guidance on the proper scope of the claim language, and
`
`Respondents’ constructions follow this guidance. Complainants stray from this guidance in
`
`service of their litigation positions, going so far as to modify yet again their definition of a POSA
`
`in an attempt to disqualify Respondents’ expert. These litigation-induced contentions should be
`
`rejected in favor of Respondents’ proposed constructions.
`
`II.
`
`
`
`DISPUTE OVER DEFINITION OF PERSON OF ORDINARY SKILL IN THE
`ART
`
`Complainants’ POSA Definition
`
`Respondents’ POSA Definition
`
`Reynolds contends that a POSA for the ’202
`Patent would have had a bachelor’s degree in
`mechanical
`engineering,
`electrical
`engineering, chemistry, or physics, or a related
`field, and three to four years of experience in
`the vaporizer device industry. Alternatively, a
`POSA would have had a greater amount of
`education—a Master’s degree in mechanical
`engineering, electrical engineering, chemistry,
`or physics, or a related field—to go along with
`a slightly lesser degree of industry experience
`(one to two years of experience in the
`vaporizer device industry). A POSA would
`also have been familiar with electrically
`powered
`smoking
`articles
`and
`their
`
`Respondents submit that a Person of Ordinary
`Skill in the Art (“POSA”) would have had a
`bachelor’s degree in mechanical engineering,
`electrical engineering, chemistry, physics, or a
`related field, three to four years of experience
`in their respective field, and familiarity with
`electrically powered smoking articles, their
`components, and underlying technologies or
`similar
`components
`and
`technologies.
`Alternatively, a POSA would have had a
`master’s degree in mechanical engineering,
`electrical engineering, chemistry, physics, or a
`related field, one to two years of experience in
`their respective field, and familiarity with
`electrically powered smoking articles, their
`
`
`
`1
`
`

`

`
`
`components and underlying technologies or
`similar components and technologies.
`
`In the Initial Determination Denying Complainants’ Motion for Temporary Relief, a POSA
`
`components, and underlying technologies or
`similar components and technologies.
`
`was defined as a person having:
`
`in mechanical engineering, electrical
`a bachelor’s degree
`engineering, chemistry, or physics, and three to four years of
`industry experience. Or, a Master’s degree
`in mechanical
`engineering, electrical engineering, chemistry, or physics, and one
`to two years of industry experience. Additionally, a POSA would
`have been familiar with electrically powered smoking articles and
`their components and underlying
`technologies or similar
`components and technologies.
`
`
`TEOID at 27 (“TEO POSA definition”). This is consistent with the definition of a POSA the
`
`Complainants originally proposed and with which Respondents agreed. Respondents’ current
`
`definition of a POSA is similarly consistent, except that Respondents now seek to clarify the phrase
`
`“industry experience,” which was included in the original definition of a POSA proposed by
`
`Complainants. This ambiguous “industry experience” language was a point of contention in the
`
`TEO phase, with Complainants belatedly seeking to limit the industry to one of “designing
`
`smoking articles,” “tobacco industry,” “e-cigarette industry,” or “vaporizer product” industry. Id.
`
`at 49, fn. 20. Complainants now argue that a POSA must have “vaporizer device industry”
`
`experience, in addition to familiarity with “electrically powered smoking articles and their
`
`components and underlying technologies or similar components and technologies.” COCCB, p.
`
`4. Complainants’ new POSA definition1 is improper for at least two reasons.
`
`
`1 Complainants contend that “Respondents have not contested this definition of a POSA.” COCCB
`at 4. Not so. Not only is this the first time Respondents have seen this definition (as Complainants
`have changed their definition at least five times), but Respondents immediately contested
`Complainants’ definition as soon as they began injecting specific industries not previously
`included.
`
`
`
`2
`
`

`

`
`
`
`
`First, Complainants new POSA definition diverges from the definition that Complainants
`
`asserted in a prior ITC investigation involving the grandparent of the ’202 patent. In the 1199
`
`Investigation, Complainants defined a POSA for U.S. Patent No. 9,901,123 (the ’123 patent”)
`
`consistent with the TEO POSA definition. See Complainants’ Opening Claim Construction Brief
`
`in 1199 Investigation (EDIS ID 1565124) at 176. Complainants now contend that a POSA for the
`
`’202 patent must have “vaporizer device” industry experience. But the ’202 patent is related to
`
`the ’123 patent through a series of continuations, all of which share the same specification. And
`
`Complainants previously argued that “[t]he ʼ202 Patent includes claims similar to those in its
`
`grandparent, the ʼ123 Patent.” TEO MOT. at 52. Given Complainants’ own admissions, there is
`
`no plausible basis to argue that a POSA for the ’202 patent must have experience in the “vaporizer
`
`device industry,” where the POSA for the ’123 patent did not. Rather, it is clear that Complainants
`
`are improperly seeking this new definition for the sole purpose of excluding Respondents’ expert.
`
`The ALJ has already rejected this attempt in the Initial Determination Denying Motion for
`
`Temporary Relief (TEOID at 47-51), and Respondents request the ALJ make similar findings here.
`
`Second, in the Initial Determination Denying Motion for Temporary Relief, the ALJ
`
`identified multiple issues with respect to Complainants’ effort to limit the industry experience
`
`aspect of the TEO POSA definition. And Complainants new POSA definition includes these same
`
`issues. For example, the ALJ identified that separately requiring “‘familiarity with electrically
`
`powered smoking articles and their components and underlying technologies or similar
`
`components and technologies’ indicates that the required ‘industry experience’ is not limited to
`
`the ‘e-cigarette,’ ‘tobacco,’ ‘vaporizer products,’ or ‘designing smoking articles industry.’”
`
`TEOID at 49. Although Complainants now modify “industry” with “vaporizer device,”
`
`Complainants still include a separate requirement of familiarity with electrical powered smoking
`
`
`
`3
`
`

`

`
`
`articles, making either the “vaporizer device” modification or the smoking article familiarity
`
`redundant.
`
`
`
`As another example, Complainants’ new POSA definition continues to allow for
`
`alternative familiarity with “similar components and technologies.” COCCB, p. 4. Complainants’
`
`purported limitation of the relevant industry to vaporizer devices, therefore, is contradicted by
`
`Complainants’ subsequent proposal that familiarity with other components or technologies is
`
`sufficient. Indeed, the ALJ found that industry experience with circuitry and pressure sensors is
`
`an example of the “similar components and technologies” aspect of Complainants’ POSA
`
`definition. TEOID at 50. Because of such redundancies and contradictions, Complainants fail to
`
`set forth an appropriate definition of a POSA.
`
`
`
`In contrast to Complainants’ improper and inaccurate new POSA definition, Respondents
`
`set forth a proper and accurate POSA definition. Indeed, Staff indicated that “Respondents’
`
`definition of POSA is slightly more accurate and applicable in view of the technology at issue.”
`
`SOCCB at 4, fn 1. Respondents’ definition is consistent with the TEO POSA definition, with mere
`
`clarifications as to the term “industry experience.” Respondents’ definition stays true to prior
`
`POSA definitions for patents within the ’202 patent family. Respondents’ definition does not
`
`include redundancies or contradictions. And Respondents’ definition does not seek to overly
`
`narrow the POSA definition with a term (vaporizer) that does not even appear in the ’202 patent.
`
`
`
`In view of the above, Respondents request that the ALJ adopt Respondents’ definition of a
`
`POSA.
`
`
`
`
`
`
`
`
`
`4
`
`

`

`
`
`III. DISPUTED CLAIM TERMS
`
`
`A.
`Storage compartment [being configured for storage of a liquid aerosol-forming
`material]
`
`Claims Complainants’
`Proposed
`Construction
`Plain and ordinary
`meaning, which is
`an area where
`something is stored
`
`1, 3-5,
`8-9
`
`Respondents’
`Proposed
`Construction
`Plain and ordinary
`Meaning, which is
`an enclosure where
`something is
`stored2
`
`Staff’s Proposed
`Construction
`
`Plain and ordinary
`meaning, which is
`an enclosure area3
`where
`something is stored
`
`
`
`
`
`Claim Term
`
`“storage
`compartment
`[being
`configured for
`storage of a
`liquid aerosol-
`forming
`material]”
`
`None of the parties disputes that “storage compartment” should be construed according to
`
`its plain and ordinary meaning.4 Rather, the dispute now revolves around what is the plain and
`
`ordinary meaning of “storage compartment.” In this regard, Complainants argue that Respondents
`
`failed to explain what is the plain and ordinary meaning of “storage compartment.” COCCB at 5-
`
`7. But Complainants’ argument cannot stand because in their Opening Claim Construction Brief,
`
`
`2 Respondents maintain the construction offered by Respondents in the Temporary phase is correct
`and reserve the right to rely upon said construction should the ALJ adopt Respondents’ TEO phase
`construction of “storage compartment.”
`
` 3
`
` Respondents have included in this table Staff’s proposal as it appeared in Staff’s table, however
`in the body of Staff’s argument, Staff drops the word “area” from its construction and appears to
`adopt Respondents’ construction identically. SOCCB at 5-6.
`
` 4
`
` This is consistent with the Initial Determination Denying Motion for Temporary Relief, which
`tentatively construed the term “‘storage compartment’ according to its plain and ordinary
`meaning.” TEOID, pp. 36-37.
`
`
`
`
`5
`
`

`

`
`
`Respondents clearly set forth their contention that the plain and ordinary meaning of “storage
`
`compartment” is an enclosure where something is stored.5
`
`Complainants argue that the plain and ordinary meaning is “an area where something is
`
`stored.” Id. at 5. Complainants’ unbounded “area” fails to provide any clarity and is inconsistent
`
`with the plain meaning of a “storage compartment.” Complainants fail to identify any intrinsic
`
`evidence to support the notion that a storage compartment is merely an “area” with no bounds or
`
`enclosures. Rather, Complainants argue that the specification describes “‘a variety of’
`
`‘[a]lternativ[e]’ kinds of storage compartments” such as “a container,” “absorbent fibrous
`
`materials,” “sponge-link materials,” and “a substrate.” Id. at 7. But each of these examples is or
`
`is akin to enclosures, and certainly do not represent unbounded areas, especially since each
`
`example keeps liquid aerosol-forming material enclosed therewithin. An unenclosed area cannot
`
`store a liquid any more than a table with a drink spilled on it stores that drink. And in the context
`
`of smoking articles which are constantly moved about, if liquid were merely placed in some “area,”
`
`the liquid would move to some other area as soon as the smoking article shifts positions. This is
`
`the contrary to the description (and functionality) of the storage structures within the ’202 patent.
`
`In contrast, Respondents’ proposal that the plain and ordinary meaning of “storage
`
`compartment” is an enclosure (which is bounded) where something is stored is consistent with the
`
`intrinsic evidence. ROCCB at 10. Staff agrees that Respondents’ explanation of the plain and
`
`ordinary meaning of “storage compartment” is consistent with the intrinsic evidence. SOCCB at
`
`6 (pointing out the various disclosures of enclosures in the specification, the implication of an
`
`enclosure in view of the word “compartment,” and adapting its prior claim construction proposal
`
`
`5 To the extent Complainants argue in their rebuttal brief that Respondents’ contention as to the
`plain and ordinary meaning of “storage compartment” is untimely or waived, Respondents
`reserved the right to rebut any plain and ordinary meaning advanced by Complainants that is
`contrary to the specification, and Respondents’ explanation is just that. COCCB at 6.
`
`
`
`6
`
`

`

`
`
`to align with Respondents’ proposal). Accordingly, Respondents maintain that the plain and
`
`ordinary meaning of “storage compartment” is an enclosure where something is stored.
`
`B.
`
`Heater
`
`Claim Term
`
`“heater”
`
`
`
`
`
`Claims Complainants’
`Proposed
`Construction
`Plain and ordinary
`meaning, which is a
`heating element
`
`1, 9-12,
`14, 18,
`25-26
`
`Respondents’
`Proposed
`Construction
`Plain and ordinary
`meaning, which is
`an assembly
`configured to heat
`
`Staff’s Proposed
`Construction
`
`Plain and ordinary
`meaning, which is
`an assembly
`configured to heat
`
`Despite using the term “heating element” in the ’202 patent specification to describe the
`
`alleged invention, Reynolds intentionally chose a different, broader term for the claims: “heater.”
`
`And when different words are used, different meanings are presumed. See Bd. of Regents of the
`
`Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (2008). Reynolds has failed to rebut
`
`this presumption and show that heater should be construed contrary to its plain and ordinary
`
`meaning.
`
`Complainants first argue (at COCCB 9) that Respondents are impermissibly rewriting the
`
`claims. Respondents are not. Respondents are simply applying the plain and ordinary meaning of
`
`the claim term heater—an assembly configured to heat.
`
`Complainants next argue (at COCCB 9-10) that the ’202 patent specification demonstrates
`
`that the term “heater” refers to a heating element. This is wrong. The disclosures cited by
`
`Complainants are all consistent with an assembly configured to heat that includes an electrical
`
`resistance heating element among other components. That fact that the specification uses the term
`
`“electrical resistance heating element” does not render that term synonymous with “heater.” An
`
`assembly configured to heat can include the referenced heating element, as well as other
`
`
`
`7
`
`

`

`
`
`components, and nothing in the patent specification precludes the inclusion of additional
`
`components.
`
`Moreover, in the context of the ’202 patent, an assembly configured to heat “heat[s] drawn
`
`air passing through the smoking article from the distal end 13 of the outer housing 20” and is
`
`“powered by the battery 36.” See ’202 patent, 21:29-36. Likewise, the assembly is “controlled by
`
`the electrically powered control components 50,” such as by being turned “on” and “off” in
`
`response to a control signal, and “configured to allow airflow therethrough.” See id., 21:35-40,
`
`21:66-22:2. An assembly that heats also has a heating element that itself is a wick or have a wick
`
`separate from the heating element. See ’202 patent, 21:29-36.
`
`Complainants further argue (at COCCB 10) that the ’202 patent claim language
`
`demonstrates that the term “heater” refers to a heating element. But like the identified specification
`
`disclosures, the claim language is consistent with an assembly configured to heat that includes,
`
`among other components, an electrical resistance heating element. Such an assembly is “positioned
`
`within the outer housing” and “configured for electrical connection with the electrical power
`
`source.” See ’202 patent, 32:64-67. The liquid aerosol-forming material is “wicked into contact
`
`with” the assembly, and the controller “activate[s] current flow through” the assembly. Id., 33:1-
`
`6, 33:14-17. In sum, nothing in the claims nor the specification indicates that the term heater is
`
`limited to a single component—the heating element.
`
`Complainants further contend (at COCCB 13) that it is nonsensical for an “electrical
`
`resistance heater” to encompass components that are not electrically resistive. In fact, it is entirely
`
`sensical. “Electrical resistance” denotes the type of heater. As their name suggests, such heaters
`
`include an electrical resistance component, but need not be limited to such components. Indeed, a
`
`POSA would understand that, in addition to an electrical resistance component, an electrical
`
`
`
`8
`
`

`

`
`
`resistance heater can include components that are not electrical resistive, for example, an insulating
`
`chamber wall that retains heat. A POSA would characterize an assembly that includes electrical
`
`non-resistive components as well as an electrical resistance element (e.g., a wire coil) as an
`
`electrical resistance heater.
`
`Finally, Complainants argue (at COCCB 13) that Respondents’ proposed construction
`
`injects ambiguity because the metes and bounds of the “heater” would allegedly be unclear. This
`
`is incorrect because the ’202 patent claims provide the needed context. For example, the claims
`
`specify that the electrical resistance heater volatilizes the liquid aerosol-forming material wicked
`
`into contact therewith. A POSA would readily understand and identify the assembly components
`
`that work together to volatize the liquid aerosol-forming material.
`
`In short, nothing in the specification or claims indicates that the term “heater” should have
`
`a meaning different than its plain and ordinary meaning—an assembly configured to heat. And
`
`nothing in the specification or claims limits such an assembly to an electrical resistance heating
`
`element alone; rather a POSA would understand that the heater can include other components that
`
`are not electrically resistive. Indeed, as Staff noted, the ’202 patent uses terms synonymous with
`
`an assembly to describe the heater, for example, “heating device” and “heating unit.” See, e.g., JX-
`
`0001, 5:34-35, 5:54-55.
`
`C.
`
`Air passageway through at least a portion of the outer housing
`
`Claim Term
`
`“air passageway
`through at least
`a portion of the
`outer housing”
`
`1, 18
`
`Claims Complainants’
`Proposed
`Construction
`Plain and ordinary
`meaning, which is
`not limited to an
`opening in the outer
`housing
`
`Respondents’
`Proposed
`Construction
`Plain and ordinary
`meaning, which is
`an opening in the
`outer housing
`through which air
`can flow
`
`Staff’s Proposed
`Construction
`
`Plain and ordinary
`meaning, which is
`an opening in the
`outer housing
`through which air
`can flow
`
`9
`
`
`
`
`
`
`
`

`

`
`
`Contrary to Complainants’ arguments in their Opening Claim Construction Brief ,
`
`Respondents’ and Staff’s construction of “air passageway through at least a portion of the outer
`
`housing” finds ample support in the claims and specification of the ’202 patent. Indeed, as
`
`Respondents identified in their Opening Claim Construction Brief , the context of the claims (e.g.,
`
`claims 1 and 18) supports Respondents’ and Staff’s construction that “air passageway through at
`
`least a portion of the outer housing” means “an opening in the outer housing through which air can
`
`flow,” because the air passageway must be “arranged so that air drawn into the outer housing
`
`combines with volatilized liquid aerosol-forming material to produce an aerosol that can be drawn
`
`into the mouth of a user of the electrically-powered, aerosol-generating smoking article through
`
`the mouthpiece.” ROCCB at 15; JX-0001, claims 1 and 18. As Staff astutely noted in its Opening
`
`Brief, it is unclear “how the claimed device could even work without the opening 32 in the outer
`
`housing allowing an air passageway.” SOCCB at 9. For any air to be drawn into the mouth of a
`
`user, as required by the claims, air must come into the outer housing from outside of the housing.6
`
`The specification describes this very function by explaining that “[a]ir is drawn through the air
`
`passageways or openings 32 … into the outer container 20” (JX-0001 at 24:31-34, 27:26-29,
`
`29:11-14) and “at least one air passageway 32 to allow drawn air to enter the inner region of the
`
`outer container 20” (id. at 20:17-20).
`
`
`
`Complainants’ apparent issue with Respondents’ and Staffs’ construction is that other air
`
`passageways are described by the ’202 patent. COCCB at 15 (pointing to an air passageway 45,
`
`an air passageway area, and an air passageway 115). But the context of the claim language
`
`
`6 Otherwise, a vacuum would form as a result of a user attempting to draw air into their mouth,
`which would resist or otherwise restrict airflow. There is no internal source of air described by
`the ’202 patent, nor would such a source enable air to be drawn into the outer housing.
`
`
`
`10
`
`

`

`
`
`surrounding “air passageway” in the independent claims precludes interpreting the claimed “air
`
`passageway” as any of these.
`
`The claim language at issue is an “air passageway through at least a portion of the outer
`
`housing.” The word through is “used as a function word to indicate movement into at one side or
`
`point and out at another and especially the opposite side of.” See, e.g., Ex. 1, “through,” Merriam-
`
`Webster.com Dictionary, https://www.merriam-webster.com/dictionary/through (last accessed Nov.
`
`21, 2024). None of the examples relied upon by Complainants allow air movement into from one
`
`side of the outer housing and out another side (i.e., “through” the outer housing). Indeed, each of
`
`air passageway 45, air passageway area, and air passageway 115 are completely sealed within the
`
`outer housing. Complainants’ argument that the claimed air passageway can be “entirely internal
`
`to the outer housing” (COCCB at 15) conflicts with the literal claim language and requires
`
`rewriting the claim from “through” to “within.” See COCCB at 16. Such terms are not
`
`synonymous. Indeed, the claim requires that the air passageway be arranged so that “air drawn
`
`into the outer housing combines with volatilized liquid aerosol that can be drawn into the mouth
`
`of a user … through the mouthpiece.” JX-0001 33:7-13 (emphasis added). For air to be drawn
`
`into the outer housing, combined with volatilized liquid, and then drawn into the mouth of a user,
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`the air passageway must be through the housing, not just within it.
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`Not one example that Complainants rely upon is arranged so that air is drawn into the outer
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`housing. And at least one example—air passageway 115—is arranged only so that air (or aerosol)
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`can reach the mouthpiece. Air passageway 115 is not arranged to allow air to combine with
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`volatilized liquid aerosol-forming material to produce an aerosol, as such combination would, if
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`at all, occur upstream from air passageway 115.
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`Respondents share Staff’s concerns that Complainants’ failure “to offer what is included
`
`in the claim term … invite[s] a conclusion that the claims suffer from structural flaws under 35
`
`U.S.C. §112 requiring ‘claims particularly pointing out and distinctly claiming the subject matter
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`which the inventor or a joint inventor regards as the invention.’” SOCCB at 9. Although
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`Respondents’ and Staff’s construction is proper and should be adopted, Respondents reserve the
`
`right to argue indefiniteness of this phase should Complainants’ proposed construction be adopted.
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`D.
`
`Smoking article
`
`Claim Term
`
`Claims
`
`“smoking
`article”
`
`All
`claims
`
`
`
`
`
`Complainants’
`Proposed
`Construction
`Plain and ordinary
`meaning, which
`does not require
`presence of tobacco
`
`Respondents’
`Proposed
`Construction
`A smoking device
`that possesses
`tobacco
`
`Staff’s Proposed
`Construction
`
`Plain and ordinary
`meaning, which
`does not require
`presence of tobacco
`
`
`Respondents maintain that the term “smoking article,” as it appears in the preamble and
`
`within the body of the claims, should be construed to mean “[a] smoking device that possesses
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`tobacco.” Complainants first argue that the preamble is non-limiting and that any subsequent
`
`mention of the term “smoking article” should therefore be ignored. Complainants then argue that
`
`Respondents “seek to improperly import a limitation from the specification” because “the claim—
`
`not even the preamble—makes no reference whatsoever to ‘tobacco.’” COCCB at 19. As set forth
`
`below, these arguments are both factually and legally improper.
`
`First, as Respondents established in their opening brief, the preamble of the independent
`
`claims is limiting. Complainants rehash their prior arguments from the TEO phase as to why they
`
`believe that the preamble should not be limiting, but Respondents have already addressed these
`
`arguments. Respondents previously pointed out that Complainants’ primary case law—Catalina
`
`Marketing Int’l—actually supports the notion that a preamble is limiting when the preamble
`
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`language is later referenced in the body of the claim (just as “smoking article” is later referenced
`
`in the body of the claims of the ’202 patent). ROCCB at 19. Complainants’ focus on the Catalina
`
`court’s conclusions regarding a claim that did not reference the preamble language later in the
`
`body of the claim is irrelevant here.
`
`Complainants’ reliance on a non-precedential district court opinion (e.g., Zimmer Surgical
`
`Inc.) fairs no better. The preamble at issue in Zimmer Surgical (“[a] system for handling waste
`
`fluid from a patient”) was determined to be a statement of purpose or intended use. Zimmer
`
`Surgical, Inc. v. Stryker Corp., Civil Action No. 16-679-RGA, 2018 U.S. Dist. LEXIS 102055, at
`
`*13 (D. Del. June 19, 2018). The preamble language in this case is not a statement of purpose or
`
`intended use, which is typically identified by the preposition “for” (e.g., for smoking), but rather
`
`the preamble here sets forth a structural limitation on the type of device claimed (e.g., an
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`electrically-powered, aerosol-generating smoking article). Corning Glass Works v. Sumitomo
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`Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).
`
`Complainants provide no case law to rebut Respondents’ arguments (and supporting case
`
`law) that “the preamble 1) recites limitations of the claim when read in the context of the entire
`
`claim, 2) is ‘necessary to give life, meaning, and vitality’ to the claim, 3) limits the structure of the
`
`invention, 4) provides antecedent basis for terms in the body of the claims, and 5) defines positive
`
`limitations in the body of the claims.” ROCCB at 18. And the Initial Determination Denying
`
`Motion for Temporary Relief has correctly found that the preambles of the independent claims are
`
`limiting. TEOID at 29.7
`
`
`7 The Initial Determination Denying Motion for Temporary Relief went even further, stating that
`“[e]ven if the preamble[s] were not construed as limiting, the appearance of ‘smoking article’ in
`the body of the claims means that the scope of the claims would be identical.” TEOID at 30, fn 10.
`
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`Second, Complainants’ argument that Respondents are improperly importing a limitation
`
`from the specification fails to appreciate that patent clearly and consistently characterizes the
`
`present invention as a smoking article that