UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`R.J. REYNOLDS VAPOR COMPANY,
`
`Petitioner,
`
`v.
`
`PHILIP MORRIS USA, INC.,
`
`Patent Owner.
`__________________
`
`U.S. Patent No. 9,814,265
`
`Filing Date: March 10, 2014
`Issue Date: November 14, 2017
`
`Title: PERMEABLE ELECTRIC THERMAL RESISTOR FOIL FOR
`VAPORIZING FLUIDS FROM SINGLE-USE MOUTHPIECES WITH
`VAPORIZER MEMBRANES
`__________________
`
`DECLARATION OF JEFFREY C. SUHLING, Ph.D.
`
`RJR EX 1010
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`

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`TABLE OF CONTENTS
`
`
`Page
`
`
`Introduction ..................................................................................................... 1
`I.
`II. Qualifications .................................................................................................. 1
`III. Legal Standards .............................................................................................. 6
`A.
`Claim Construction............................................................................... 7
`B.
`Person of Ordinary Skill in the Art ...................................................... 7
`C. No Presumption of Validity ................................................................. 8
`D. Obviousness .......................................................................................... 8
`IV. Bases of Opinions and Materials Considered ............................................... 13
`V.
`Summary of My Opinions ............................................................................ 14
`VI. The ’265 Patent ............................................................................................. 15
`A. Overview of Technology Background ............................................... 15
`B.
`The Prosecution History ..................................................................... 22
`VII. The Prior Art To the ’265 Patent .................................................................. 25
`A. Overview of Alarcon .......................................................................... 25
`B. Overview of Rabin ............................................................................. 30
`C. Overview of Harwig ........................................................................... 34
`D. Overview of Johnson .......................................................................... 38
`VIII. Technology Background & The State of the Art.......................................... 41
`A. Vaporizers and Heating Systems........................................................ 42
`B.
`Fluids and Fluid Flow in Electric Vaporizers .................................... 43
`C.
`Electric Heating Devices .................................................................... 44
`IX. Person of Ordinary Skill in the Art ............................................................... 45
`X.
`Claim Construction ....................................................................................... 46
`XI. Ground 1: Alarcon In View of Rabin ........................................................... 47
`A. Motivation to Combine Alarcon with Rabin ...................................... 48
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2.
`
`3.
`
`4.
`
`Claim 1 ............................................................................................... 52
`1.
`Preamble: “A vaporizer device for vaporizing a substance
`containing at least one active and/or aroma material,
`comprising:” ............................................................................. 52
`Element 1a: “a mouthpiece, having at least one fluid
`inlet and at least one fluid outlet; and” .................................... 54
`Element 1b: “a heating device, configured to be
`connected to the mouthpiece, comprising: a thermal
`resistor comprising a metallic foil or a thin sheet in a
`shape of a dual coil and/or sinuous line, having two ends
`and dimensions substantially the same as a cross-section
`of a cigarette or a cigar, wherein interspaces of the shape
`are configured to allow a flow of fluid therethrough;” ............ 56
`Element 1c: “at least one contact tab including a first
`contact tab and a second contact tab being connected to
`respective opposed ends of the dual coil and/or sinuous
`line of the thermal resistor, the first contact tab and the
`second contact tab not being in direct contact with each
`other; and” ................................................................................ 59
`Element 1d: “at least one vaporizer membrane disposed
`in contact with the thermal resistor and being permeable
`to the flow of fluid, and which is wetted or can be wetted
`with the substance containing the at least one active
`and/or aroma material,” ........................................................... 62
`Element 1e: “wherein the thermal resistor and the at
`least one vaporizer membrane are arranged orthogonally
`or at an angle to a direction of the flow of fluid in the
`mouthpiece.” ............................................................................ 66
`Claim 4: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of different materials.” ....................................................................... 69
`
`5.
`
`6.
`
`ii
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`
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`B.
`
`C.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`D.
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`E.
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`Claim 5: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of a same material.” ............................................................................ 70
`Claim 8: “The vaporizer device according to claim 1, wherein
`the metallic foil or the thin sheet, or the metallic foil and the
`thin sheet, are aluminum, an aluminum-manganese alloy, or a
`stainless steel, or a combination thereof.” .......................................... 70
`Claim 17: “wherein the thermal resistor and the at least one
`vaporizer membrane are disposed perpendicular, to a direction
`of the flow of fluid across the thermal resistor and/or the at least
`one vaporizer membrane.” ................................................................. 71
`XII. Ground 2: Alarcon In View of Harwig ......................................................... 72
`A. Motivation to Combine Alarcon with Harwig ................................... 73
`B.
`Claim 1 ............................................................................................... 75
`1.
`Preamble: “A vaporizer device for vaporizing a substance
`containing at least one active and/or aroma material,
`comprising:” ............................................................................. 75
`Element 1a: “a mouthpiece, having at least one fluid
`inlet and at least one fluid outlet; and” .................................... 75
`Element 1b: “a heating device, configured to be
`connected to the mouthpiece, comprising: a thermal
`resistor comprising a metallic foil or a thin sheet in a
`shape of a dual coil and/or sinuous line, having two ends
`and dimensions substantially the same as a cross-section
`of a cigarette or a cigar, wherein interspaces of the shape
`are configured to allow a flow of fluid therethrough;” ............ 76
`
`F.
`
`2.
`
`3.
`
`
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`TABLE OF CONTENTS
`(continued)
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`Page
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`4.
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`5.
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`6.
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`Element 1c: “at least one contact tab including a first
`contact tab and a second contact tab being connected to
`respective opposed ends of the dual coil and/or sinuous
`line of the thermal resistor, the first contact tab and the
`second contact tab not being in direct contact with each
`other; and” ................................................................................ 78
`Element 1d: “at least one vaporizer membrane disposed
`in contact with the thermal resistor and being permeable
`to the flow of fluid, and which is wetted or can be wetted
`with the substance containing the at least one active
`and/or aroma material,” ........................................................... 80
`Element 1e: “wherein the thermal resistor and the at
`least one vaporizer membrane are arranged orthogonally
`or at an angle to a direction of the flow of fluid in the
`mouthpiece.” ............................................................................ 82
`Claim 3: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of at least one piece of the metallic foil or the thin sheet.” ................ 83
`Claim 5: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of a same material.” ............................................................................ 83
`Claim 17: “wherein the thermal resistor and the at least one
`vaporizer membrane are disposed perpendicular, to a direction
`of the flow of fluid across the thermal resistor and/or the at least
`one vaporizer membrane.” ................................................................. 84
`XIII. Ground 3: Alarcon In View of Johnson ....................................................... 85
`A. Motivation to Combine Alarcon with Johnson .................................. 85
`B.
`Claim 1 ............................................................................................... 87
`1.
`Preamble: “A vaporizer device for vaporizing a substance
`containing at least one active and/or aroma material,
`comprising:” ............................................................................. 88
`iv
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`C.
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`D.
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`E.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2.
`
`3.
`
`4.
`
`Element 1a: “a mouthpiece, having at least one fluid
`inlet and at least one fluid outlet; and” .................................... 88
`Element 1b: “a heating device, configured to be
`connected to the mouthpiece, comprising: a thermal
`resistor comprising a metallic foil or a thin sheet in a
`shape of a dual coil and/or sinuous line, having two ends
`and dimensions substantially the same as a cross-section
`of a cigarette or a cigar, wherein interspaces of the shape
`are configured to allow a flow of fluid therethrough;” ............ 88
`Element 1c: “at least one contact tab including a first
`contact tab and a second contact tab being connected to
`respective opposed ends of the dual coil and/or sinuous
`line of the thermal resistor, the first contact tab and the
`second contact tab not being in direct contact with each
`other; and” ................................................................................ 91
`Element 1d: “at least one vaporizer membrane disposed
`in contact with the thermal resistor and being permeable
`to the flow of fluid, and which is wetted or can be wetted
`with the substance containing the at least one active
`and/or aroma material,” ........................................................... 93
`Element 1e: “wherein the thermal resistor and the at
`least one vaporizer membrane are arranged orthogonally
`or at an angle to a direction of the flow of fluid in the
`mouthpiece.” ............................................................................ 93
`Claim 3: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of at least one piece of the metallic foil or the thin sheet.” ................ 93
`Claim 5: “The vaporizer device according to claim 1, wherein
`the thermal resistor and the at least one contact tab are formed
`of a same material.” ............................................................................ 94
`
`5.
`
`6.
`
`v
`
`
`
`
`
`C.
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`D.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`E.
`
`Claim 17: “wherein the thermal resistor and the at least one
`vaporizer membrane are disposed perpendicular, to a direction
`of the flow of fluid across the thermal resistor and/or the at least
`one vaporizer membrane.” ................................................................. 95
`XIV. Conclusion .................................................................................................... 95
`
`
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`EXHIBIT LIST
`Exhibit 1001 U.S. Patent No. 9,814,265 (“’265 Patent”)
`
`Exhibit 1002 U.S. Patent No. 9,439,455 (“Alarcon”)
`
`Exhibit 1003 U.S. Patent No. 7,920,777 (“Rabin”)
`
`Exhibit 1004 U.S. Patent No. 6,909,840 (“Harwig”)
`
`Exhibit 1005 U.S. Publication No. 2012/0193343 (“Johnson”)
`
`Exhibit 1006 U.S. Patent No. 5,649,554 (“Sprinkel”)
`
`Exhibit 1007 U.S. Publication No. 2002/0078951 (“Nichols”)
`
`Exhibit 1008 U.S. Publication No. 2002/0078951 (“Nichols”)
`
`Exhibit 1009 Prosecution History of the ’265 Patent
`
`Exhibit 1011 Dr. Jeffrey Suhling’s curriculum vitae
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`I.
`
`INTRODUCTION
`
`1.
`
`I, Jeffrey C. Suhling, Ph.D. make this declaration on behalf of R.J.
`
`Reynolds Vapor Company (“Reynolds”) in connection with Reynolds’s petition for
`
`inter partes review of U.S. Patent No. 9,814,265 (“’265 Patent”) (EX1001) assigned
`
`to Philip Morris USA, Inc.
`
`2.
`
`I make this declaration based on my personal knowledge. I am over the
`
`age of twenty-one and competent to make this declaration. The statements in this
`
`declaration include my opinions, and the bases for those opinions, regarding the
`
`’265 Patent.
`
`3.
`
`I have been asked by Reynolds to provide my opinion as to whether
`
`certain claims of the ’265 Patent were disclosed in certain prior art patents and
`
`publications that predate the ’265 Patent. This declaration contains my opinions and
`
`explains how I arrived at those opinions.
`
`4.
`
`I am being compensated for my work on this matter at a rate of $400
`
`per hour. My compensation is in no way dependent on the outcome of this inter
`
`partes review. The opinions expressed in this declaration are my own.
`
`II. QUALIFICATIONS
`5. My technical background and experience are summarized in my
`
`resume in EX1011 to the petition. In summary, I earned a Bachelor of Science in
`
`Applied Mathematics, Engineering, and Physics (AMEP) from the University of
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`Wisconsin in 1980. I earned a Master of Science in Engineering Mechanics from
`
`the University of Wisconsin in 1981, and a Doctorate in Engineering Mechanics
`
`from the University of Wisconsin in 1985.
`
`6.
`
`I am currently employed as a Quina Distinguished Professor and
`
`Department Chair at the Department of Mechanical Engineering at Auburn
`
`University in Auburn, Alabama. I have been on the faculty at Auburn University
`
`since 1985. I am a member of the American Society for Mechanical Engineers
`
`(ASME) and the Institute of Electrical and Electronics Engineers (IEEE), the
`
`Surface Mount Technical Association (SMTA), and the International
`
`Microelectronics and Packaging Society (IMAPS), and also currently serve on
`
`several boards.
`
`7. My experiences cover a broad technology base across a diverse set of
`
`industries, including in the areas of mechanical engineering, electrical engineering,
`
`electronic product design and reliability, and semiconductor packaging. I have over
`
`30 years of experience in each of these fields. For example, I have extensive
`
`experience in electronics assembly, packaging technologies and processes, stress and
`
`strain analysis of electronic products, thermal analysis of electronic products, on-
`
`chip silicon sensors, heater design, solder joint reliability, material testing and
`
`mechanical behavior of solders and microelectronic encapsulants, and finite element
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`modeling (FEA) and reliability modeling of electronic products. I have regularly
`
`taught undergraduate-level and graduate-level courses in various area of engineering
`
`over the past 30 years, including courses on electronic product design and reliability,
`
`and electronics packaging. I have published and presented over 550 technical papers
`
`in various international journals and conferences. In addition, I have co-authored a
`
`text book titled “Mechanical Design of Electronic Systems,” published in 2008 by
`
`College House Enterprises.
`
`8. My primary areas of expertise and research are in the design and
`
`reliability of electronic systems, which includes the mechanics and thermal
`
`management of electronic products and semiconductor packaging. I have over 30
`
`years of experience in each of these fields. I co-founded the Center for Advanced
`
`Vehicle Electronics or “CAVE” in 1998. This organization has been continuously
`
`funded for the past 22 years by the National Science Foundation and over 50
`
`member companies. The CAVE Center specializes in the design, assembly,
`
`packaging, mechanics, thermal, and reliability aspects of electronic products in harsh
`
`environments such as automotive and aerospace electronics, computer servers,
`
`flexible electronics, battery technology, cellular phones and portable electronics,
`
`among other devices. I served as Center Director of CAVE from 2002-2008, and
`
`Center Associate Director from 1998-2008. I have continued to direct multiple
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`CAVE research projects on the mechanics, thermal, and reliability issues in
`
`electronic products since being promoted in 2008 to Department Chair of the
`
`Department of Mechanical Engineering at Auburn University.
`
`9.
`
`I have received over 125 contracts and grants to support my research,
`
`the bulk of which is focused on various aspects of the mechanics and thermal
`
`performance of electronic products and electronics packaging. In particular, I have
`
`obtained research support from the National Science Foundation, Semiconductor
`
`Research Corporation, NASA, Department of Defense - Army, Air Force, Navy, and
`
`over 50 companies including Texas Instruments, ST Microelectronics, Freescale
`
`Semiconductor, NXP, Cookson Electronics, Henkel Corporation, Schlumberger,
`
`John Deere Electronics, Chrysler Corporation, Continental Automotive, Siemens,
`
`LG, General Dynamics Corporation, and others. I have received several awards
`
`including being elected a Fellow of the American Society of Mechanical Engineers,
`
`as well as receiving the Electronic Packaging Division Mechanics Research Award
`
`from the same society.
`
`10. As evidenced by my resume attached to this declaration (EX1011), I
`
`am well versed in mechanical engineering, electrical engineering, electronic product
`
`design and reliability, and semiconductor packaging technology, and I have been
`
`working in these fields for over 35 years from 1985-present. In the areas of
`
`
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`electronic product design and reliability, and semiconductor packaging technology, I
`
`have published and presented over 450 technical papers, as well as attending over 60
`
`technical conferences in these fields. I have served as the Conference General Chair
`
`of the 2009 International Conference on Packaging and Integration of Electronic and
`
`Photonic Microsystems (InterPACK), as well as the General Chair of the 2019
`
`Intersociety Conference on Thermal and Thermomechanical Phenomena in
`
`Electronic Systems (ITherm). I have also served in several other leadership roles in
`
`the mechanical and electrical engineering, including my current elected position of
`
`Vice President - Education of the IEEE Electronics Packaging Society, as well as
`
`my recent appointment as Associate Editor for the ASME Journal of Electronic
`
`Packaging, a leading technical journal in the field.
`
`11. My engineering experiences and expertise include the technologies
`
`present in the ’265 Patent. In particular, I have worked extensively in the design and
`
`reliability of portable electronic products that include battery power, heating/cooling
`
`technologies, etc. This includes cellular phones, FitBits, smart watches, tablets,
`
`laptop computers, and similar devices. The e-cigarettes described in the ’265 Patent
`
`are another example in the portable electronic products area.
`
`12. The claims of ’265 Patent include several technologies within my areas
`
`of expertise working on electronic product design and electronics packaging. These
`
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`include heating devices, thermal resistor design, and electrical contact tabs, as well
`
`as the materials selection and geometric layout of these items. In particular, I have
`
`over 30 years of experience working with heating devices used in semiconductor
`
`thermal test chips, discrete thermal resistors, environmental chambers, and thermal
`
`test ovens. This includes heating devices of all sizes from on-chip heaters of just a
`
`few millimeters in size, to larger heating coils used in environmental chambers. In
`
`addition, I have experience with thermal resistive heaters constructed with various
`
`technologies, materials, and form factors, including wires, coils, foils, thin films,
`
`thick films, etc.
`
`13. From the chronological point of view, my experiences with the design,
`
`mechanics, and thermal performance of electronic products and electronics
`
`packaging encompass the September 2012 filing date of the ’265 Patent. I began
`
`working with heating devices in 1985, and continue to work on them today.
`
`14. A more complete description of my qualifications and background is
`
`set forth in my curriculum vitae, which is attached as Exhibit 1011. My curriculum
`
`vitae also includes a list of publications that I have authored or co-authored.
`
`III. LEGAL STANDARDS
`I have been asked to provide my opinion as to whether certain claims
`15.
`
`of the ’265 Patent would have been obvious to a person of ordinary skill in the art at
`
`the time of the invention in view of the prior art.
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`16.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’265 Patent, I am relying upon certain legal
`
`principles that counsel for Reynolds has explained to me, and I have applied them in
`
`forming the opinions set forth in this declaration.
`
`A. Claim Construction
`I understand that a patent’s claims define the scope of the alleged
`17.
`
`invention.
`
`18.
`
`I understand that claim construction is a legal issue to be decided in this
`
`proceeding by the Board. My understanding is that the claim terms should be given
`
`their ordinary and customary meaning as would be understood by a person of skill in
`
`the art at the time of the invention, read in context of the entire claim and the patent
`
`as a whole, including the specification and prosecution history.
`
`19.
`
`I understand that when a claim uses the transition term “comprising”
`
`followed by one or more elements, it means that the claim requires the listed
`
`elements but is open to the presence of other, unlisted elements.
`
`B.
`20.
`
`Person of Ordinary Skill in the Art
`I have been informed that certain questions in patent law are assessed
`
`from the perspective of a hypothetical person of ordinary skill in the art to which the
`
`invention pertains. I understand that a person of ordinary skill in the art is a person
`
`with a level of experience, education, or training generally possessed by those
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`individuals who work in the area or field of the invention at the time of the
`
`invention. A person of ordinary skill is also a person of ordinary creativity that can
`
`use common sense to solve problems.
`
`C. No Presumption of Validity
`21. My understanding is that in inter partes review proceedings, there is no
`
`presumption of validity. As a result, the legal standard I have applied for this
`
`Declaration is whether the claims are unpatentable based upon a preponderance of
`
`the evidence. I have applied that standard throughout my analysis in this
`
`Declaration.
`
`D. Obviousness
`I understand that a patent claim is unpatentable and invalid if it would
`22.
`
`have been obvious. I understand that a claim would have been obvious if the
`
`differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious at the relevant point in time to a
`
`person having ordinary skill in the art to which the subject matter pertains.
`
`23.
`
`I understand that obviousness is determined by considering several
`
`factors, including the scope and content of the prior art, the differences between the
`
`prior art and the claims at issue, the level of ordinary skill in the pertinent art at the
`
`relevant time, and additional considerations, if any, that indicate that the invention
`
`was obvious or not obvious.
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`24.
`
`I understand the scope and content of prior art for deciding obviousness
`
`includes at least prior art in the same field as the claimed invention. It also includes
`
`prior art from different fields that a person of ordinary skill in the art would have
`
`considered when trying to solve the problem that is addressed by the invention. A
`
`prior art reference may be considered if it discloses information designed to solve
`
`any problem or need addressed by the patent. A prior art reference may also be
`
`considered if it discloses information that has obvious uses beyond its main purpose
`
`and if a person of ordinary skill in the art would reasonably examine that reference
`
`when trying to solve any problem or need addressed by the patent.
`
`25.
`
`I understand that analyzing the differences between prior art and the
`
`claimed subject matter does not require a precise teaching in the prior art directed to
`
`the subject matter of the claimed invention but may also take into account the
`
`inferences and creative steps that a person of ordinary skill in the art would have
`
`employed in reviewing the prior art at the relevant time. For example, a claimed
`
`invention that combines elements known in the prior art and yields a result that was
`
`predictable to a person of ordinary skill in the art at the relevant time is more likely
`
`to be invalid as obvious. On the other hand, a combination of known elements that
`
`yields unexpected or unpredictable results, or if the prior art teaches away from
`
`combining those known elements, is more likely to not be obvious. As part of this
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`analysis, I am to consider whether a reason existed at the relevant time that would
`
`have motivated a person of ordinary skill in the art in the relevant field to combine
`
`the known elements in the way the claimed invention does. The reason could come
`
`from the prior art, the background knowledge of one of ordinary skill in the art, the
`
`nature of the problem to be solved, market demand, or common sense.
`
`26.
`
`I understand that several rationales may exist for combining references
`
`or modifying a reference to show obviousness of claimed subject matter. These
`
`include combining prior art elements according to known methods to yield
`
`predictable results; simple substitution of one known element for another to obtain
`
`predictable results; a predictable use of prior art elements according to their
`
`established functions; applying a known technique to a known device (method or
`
`product) ready for improvement to yield predictable results; choosing from a finite
`
`number of identified, predictable solutions, with a reasonable expectation of success;
`
`and some teaching, suggestion, or motivation in the prior art that would have led one
`
`of ordinary skill in the art to modify the prior art reference or to combine prior art
`
`reference teachings to arrive at the claimed invention.
`
`27.
`
`I understand that even if a claimed invention involves more than
`
`substitution of one known element for another or the application of a known
`
`technique to a piece of prior art ready for improvement, the invention may still be
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`obvious. I also have been informed and understand that in such circumstances one
`
`may need to look to interrelated teachings of multiple patents and printed
`
`publications; the effects of demands known to the design community or present in
`
`the marketplace; and the background knowledge possessed by a person having
`
`ordinary skill in the art to determine if the claimed invention is obvious. Thus, if the
`
`knowledge or level of ordinary skill in the art would have allowed one to implement
`
`a predictable variation, the invention is obvious. One of ordinary skill in the art
`
`may, facing a particular design need or market pressure, combine options within his
`
`or her technical grasp to solve the problem.
`
`28.
`
`I understand that a claimed invention may have been obvious based on
`
`a single prior art reference or a combination of prior art references. I understand that
`
`the prior art itself may provide a suggestion, motivation, or reason to combine or
`
`modify the teachings of the prior art, or that such a reason may come from other
`
`sources, such as the knowledge of a person having ordinary skill in the art, common
`
`sense, or market forces. I understand that the following rationales, among others,
`
`may support a conclusion of obviousness:
`
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`(a) The combination of familiar elements according to known methods to
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`yield predictable results;
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`(b) The simple substitution of one known element for another to obtain
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`predictable results;
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`(c) The use of known techniques to improve similar methods or
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`apparatuses in the same way;
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`(d) The application of a known technique to a known method or apparatus
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`ready for improvement to yield predictable results;
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`(e) The choice of a particular solution from a finite number of identified,
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`predictable solutions with a reasonable expectation of success;
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`(f) The use of known work in one field of endeavor in either the same field
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`or a different one based on design incentives or other market forces, if the variations
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`are predictable to one of ordinary skill in the art; and
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`(g) The following of some teaching, suggestion, or motivation in the prior
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`art that would have led one of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention.
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`29.
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`I understand that, when determining the level of ordinary skill in the
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`art, I am to consider factors including the level of education and experience of
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`persons actively working in the field at the time of the relevant time, the types of
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`problems encountered in the art at the relevant time, and the sophistication of the
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`technology in the art at the relevant time, including how quickly innovations were
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`made in the art at the relevant time.
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`30.
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`I understand that the additional factors to consider that may indicate
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`that the invention was obvious or not obvious include objective evidence of
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`nonobviousness such as commercial success, long felt but unsolved needs, failure of
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`others to solve the same problem, and unexpected results, and objective evidence of
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`obviousness such as the independent, contemporaneous making of the claimed
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`invention by others in the field.
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`IV. BASES OF OPINIONS AND MATERIALS CONSIDERED
`31. My opinions are based on my review of the ’265 Patent (EX1001), the
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`file history of the ’265 Patent (EX1009), U.S. Patent No. 9,439,455 (“Alarcon”)
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`(EX1002); U.S. Patent No. 7,920,777 (“Rabin”) (EX1003); U.S. Patent No.
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`6,909,840 (“Harwig”) (EX1004); U.S. Patent Application Publication No.
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`2012/0193343 (“Johnson”) (EX1005); U.S. Patent No. 5,649,554 (“Sprinkel”)
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`(EX1006); U.S. Patent Application Publication No. 2002/0078951 (“Nichols”)
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`(EX1007); and U.S. Patent Application Publication No. 2011/0155153 (“Thorens”)
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`(EX1008). I have also considered the other documents, materials, and information
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`discussed in the body of this Declaration. I have based my opinions on my
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`knowledge, education, and experience as a person having the qualifications of a
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`POSITA.
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`V.
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`SUMMARY OF MY OPINIONS
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`32.
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`In this Declaration, I have analyzed claims 1, 3-5, 8, and 17 of the ’265
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`Patent. My understanding is that these are the Challenged Claims of which
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`Reynolds is seeking inter partes review.
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`33. Ground 1: Claims 1, 4-5, 8, and 17 of the ’265 Patent would have been
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`obvious to a POSITA based upon Alarcon in view of Rabin. A POSITA would have
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`been motivated to combine Alarcon with Rabin, with a reasonable expectation of
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`success. Further, the resulting combination would be unsurprising and expected. As
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`a result, claims 1, 4-5, 8, and 17 are unpatentable.
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`34. Ground 2: Claims 1, 3, 5, and 17 of the ’265 Patent would have been
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`obvious to a POSITA based upon Alarcon in view of Harwig. A POSITA would
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`have been motivated to combine Alarcon with Harwig, with a reasonable
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`expec