Filed on behalf of: Philip Morris Products S.A.
`
`Entered: August 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`PHILIP MORRIS PRODUCTS S.A.,
`Patent Owner.
`_______________________
`Case IPR2021-00826
`Patent 9,814,265
`______________________
`
`DECLARATION OF HAROLD J. WALBRINK IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Philip Morris Products, S.A.
`Exhibit 2001
`RJR v. PMP
`IPR2021-00826
`
`Ex. 2001-001
`
`
`
`Entered: August 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`PHILIP MORRIS PRODUCTS S.A.,
`Patent Owner.
`_______________________
`Case IPR2021-00826
`Patent 9,814,265
`______________________
`
`DECLARATION OF HAROLD J. WALBRINK IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Philip Morris Products, S.A.
`Exhibit 2001
`RJR v. PMP
`IPR2021-00826
`
`Ex. 2001-001
`
`
`
`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`Page
`Introduction and Qualifications ....................................................................... 1
`I.
`II. Materials Considered ....................................................................................... 3
`III. Understanding of Governing Law ................................................................... 4
`IV.
`The Level of Ordinary Skill in The Art and Perspective Applied in
`This Declaration ............................................................................................... 6
`Claim Construction .......................................................................................... 7
`V.
`VI. Ground 1: Alarcon Alone or Alarcon in view of Rabin .................................. 7
`VII. Ground 2: Alarcon Alone or Alarcon in view of Harwig .............................. 14
`VIII. Conclusion ..................................................................................................... 19
`
`i
`
`Ex. 2001-002
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`
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`IPR2021-00826 (USP 9,814,265)
`
`I.
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by Latham & Watkins on behalf of Philip Morris
`
`
`
`Products, S.A. (“Philip Morris”) to provide an analysis of U.S. Patent No. 9,814,265,
`
`the prior art, and certain issues raised in IPR2021-00826.
`
`2.
`
`As indicated in my curriculum vitae, attached as Exhibit 2002, I am the
`
`Founder and Chief Executive Officer of Xinetix, Inc. in Laguna Niguel, California.
`
`Xinetix is a business and technology development consulting company providing
`
`product development services to startup and mid-tier medical device companies. As
`
`the Chief Executive Officer, I have provided both technical management and product
`
`design services to client companies.
`
`3. My knowledge, experience, and training meet or exceed the level of a
`
`person of ordinary skill in the art for the technical subjects at issue in this litigation
`
`(including but not limited to heat transfer, air flow, condensate flow, heating, heating
`
`wires, evaporation, condensation, and capillary forces).
`
`4.
`
`I received my Bachelor of Science degree in engineering from
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`California State University, Fullerton, with an emphasis on electrical engineering. I
`
`later took coursework towards a certificate in microprocessor systems engineering
`
`at the University of California, Irvine.
`
`1
`
`Ex. 2001-003
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`
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`IPR2021-00826 (USP 9,814,265)
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`5.
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`From 2007 to 2010, I served as a senior partner in Business Catalytics,
`
`
`
`LLC in Laguna Hills, California. In this role, I headed up the research and
`
`development and manufacturing process focused activities.
`
`6.
`
`I served in a variety of electrical engineering roles from 1971-83. These
`
`roles were focused in the areas of communications, control systems, and imaging
`
`with several aerospace and commercial companies.
`
`7.
`
`From 1983-1999, I served as the director of research and development
`
`for surgical instrumentation at Alcon Surgical in Irvine, California. In this role I
`
`designed and developed innovative ophthalmic surgical instrumentation, devices,
`
`and disposable products.
`
`8.
`
`From 1990-1995, I worked in various roles at Birtcher Medical Systems
`
`in Irvine, California. I managed product design activities for a diverse range of
`
`product technologies including radiofrequency electrosurgical, video endoscopy,
`
`surgical instruments, electrocardiogram, Doppler ultrasound, and physical therapy
`
`devices.
`
`9.
`
`From 1999-2003, I worked as the Chief Operating Officer, Executive
`
`Vice President, and General Manager of Newport Medical Instruments in Costa
`
`Mesa, California. In this role I developed an advanced generation critical care
`
`ventilator product platform.
`
`2
`
`Ex. 2001-004
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`
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`IPR2021-00826 (USP 9,814,265)
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`10.
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`I have also served in a variety of interim management positions between
`
`
`
`1995 and 2016. These included several research and development roles and senior
`
`leadership roles for a variety of medical technology companies.
`
`11.
`
`I have over 40 years of product design and development within the
`
`healthcare, commercial, and aerospace industries. My experience ranges from
`
`company chairman to hands-on engineering. I am a recognized authority on medical
`
`device design in the areas of ophthalmology, electrosurgery, and respiratory care.
`
`12.
`
`I have completed over fifty new product design and development
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`projects. I am a named inventor on nine U.S. medical device patents.
`
`13. Additional
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`information regarding my education and
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`technical
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`experience is included in my Curriculum Vitae, which is attached to this Report as
`
`Exhibit A.
`
`II. MATERIALS CONSIDERED
`14. All of the opinions contained in this Declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. In forming
`
`the opinions expressed in this Declaration, while drawing on my experience, I
`
`reviewed the following documents:
`
`Ex.
`1001
`
`1009
`
`’265 patent
`
`’265 patent File History
`
`Description
`
`3
`
`Ex. 2001-005
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`
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`IPR2021-00826 (USP 9,814,265)
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`Declaration In Support of
`Patent Owner’s Preliminary Response
`1002 U.S. Patent No. 9,439,455 (Alarcon)
`
`
`
`1003 U.S. Patent No. 7,920,777 (“Rabin”)
`
`1004 U.S. Patent No. 6,909,840 (Harwig)
`
`1005 U.S. Patent Application Publication No.
`2012/0193343 (“Johnson”)
`
`1006 U.S. Patent No. 5,649,554 (“Sprinkel”)
`
`1007 U.S. Patent Application Publication No. 2002/0078951
`(“Nichols”)
`
`1008 U.S. Patent Application Publication No. 2011/0155153
`(“Thorens”)
`
`1010 Declaration of Dr. Jeffrey Suhling.
`
`15. My opinions are additionally guided by my appreciation of how a
`
`person of ordinary skill in the art would have understood the claims of the ‘’265
`
`patent at the time of the alleged invention, which I have been asked to assume is
`
`September 27, 2012.
`
`III. UNDERSTANDING OF GOVERNING LAW
`16.
`I am not an attorney and do not have formal legal training.
`
`Consequently, I offer no opinion on the law itself. The following understanding of
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`law has been provided to me by counsel. I have applied this understanding in my
`
`analysis.
`
`17.
`
`I understand that a patent claim is unpatentable if it is anticipated or
`
`obvious in view of the prior art. I further understand that a claim is unpatentable if
`
`4
`
`Ex. 2001-006
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`
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`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`it is anticipated or obvious from the perspective of a person of ordinary skill in the
`
`
`
`relevant art (“POSITA”) at the time the invention was made.
`
`18.
`
`I have been informed and understand that a POSITA is a hypothetical
`
`person who is presumed to be aware of all pertinent prior art, things along
`
`conventional wisdom in the art, and is a person of ordinary creativity.
`
`19.
`
`I understand that anticipation of a claim requires that every element of
`
`the claim be disclosed expressly or inherently in a single prior art reference, arranged
`
`as in the claim. In analyzing obviousness in light of the prior art, I understand that
`
`it is important to understand the scope of the claims, the level of skill in the relevant
`
`art, the scope and content of the prior art, the differences between the prior art and
`
`the claims, and any secondary considerations.
`
`20.
`
`It is my understanding that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the invention
`
`was made to a POSITA. I also understand that the obviousness analysis takes into
`
`account factual inquiries, including the level of ordinary skill in the art, the scope
`
`and content of the prior art, and the differences between the prior art and the claimed
`
`subject matter.
`
`21.
`
`I have been informed that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`5
`
`Ex. 2001-007
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`
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`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`of the claimed subject matter. I understand that several of these rationales are: 1)
`
`
`
`combining prior art elements according to known methods to yield predictable
`
`results; 2) simple substitution of one known element for another to obtain predictable
`
`results; 3) use of a known technique to improve a similar device (method, or product)
`
`in the same way; 4) applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results; 5) choosing from a finite
`
`number of identified, predictable solutions, with a reasonable expectation of success,
`
`6) and some teaching, suggestion, or motivation in the prior art that would have led
`
`one of ordinary skill to modify the prior art reference or to combine prior art
`
`reference teachings to arrive at the claimed invention. Such a teaching, suggestion,
`
`or motivation to combine the prior art references may be explicit or implicit in the
`
`prior art, or may be found in other evidence of the level of skill and knowledge of
`
`the ordinary artisan.
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART AND
`PERSPECTIVE APPLIED IN THIS DECLARATION
`22.
`I have been asked to assume that a POSITA at the relevant time (i.e.,
`
`September 27, 2012) would have the level of skill indicated by Petitioner. Pet. at
`
`15.
`
`23.
`
`I would have qualified as a person of at least ordinary skill in the art as
`
`of September 28, 2011, and I have a sufficient level of knowledge, experience, and
`
`6
`
`Ex. 2001-008
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`
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`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`education to provide an expert opinion in the field of the challenged claims of the
`
`
`
`’265 patent.
`
`V.
`
`CLAIM CONSTRUCTION
`24. For purposes of this Declaration, I understand that Petitioner has not
`
`proposed construing any term of the ’265 patent, and therefore, the claim terms
`
`should be given their plain and ordinary meaning to a person of skill in the art.
`
`VI. GROUND 1: ALARCON ALONE OR ALARCON IN VIEW OF
`RABIN
`25. Alarcon alone or Alarcon in view of Rabin fail to disclose at least “a
`
`thermal resistor comprising a metallic foil or a thin sheet” or a “vaporizer membrane
`
`… disposed in contact with the thermal resistor” as required by claims 1 and 17.
`
`Because claims 4-5 and 8 depend from claim 1, Alarcon alone or Alarcon in view of
`
`Rabin also fail to invalidate those claims.
`
`26. Unlike the asserted claims that require the “vaporizer membrane” and
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`“thermal resistor” (or heater) to be “disposed in contact” with each other, Alarcon
`
`discloses that a gap must exist between its “dispensing control device” (what Dr.
`
`Suhling identifies as the “vaporizer membrane”) and “heater 146” (what Dr. Suhling
`
`identified as the thermal resistor). This gap is an important part of the Alarcon
`
`design and necessary to form a “vaporizing compartment” or “vaporizing chamber”
`
`where liquid is selectively dispensed into. In particular, Alarcon teaches that “the
`
`dispensing control device 141 and the heater 146 may be located adjacent to each
`
`7
`
`Ex. 2001-009
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`
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`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`other with a very small gap therebetween.” Ex. 1002 at 6:26-30. The alleged
`
`
`
`“vaporizer membrane” is therefore not “disposed in contact with” the heater because
`
`of the “gap therebetween.”
`
`27.
`
`In fact, each disclosed embodiment of Alarcon depicts this “gap”
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`between the “dispensing control device 141” and “heater 146,” along with the
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`“vaporizing compartment” or “vaporizing chamber” formed by the gap and where
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`liquid is “selectively dispens[ed]” into. Ex. 1002 at 1:59-62; see also id. at 2:36-38
`
`(“a micro liquid screen connected to the liquid compartment to selectively dispense
`
`the smoking liquid from the liquid compartment to the vaporizing compartment”);
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`6:26-30; Figs, 1A, 6. The gap is required to form this “vaporizing compartment” or
`
`“vaporizing chamber” where the heater is located so that “[w]hen the smoking liquid
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`is dispensed from the container 140 and the heater is turned on, the smoking liquid
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`may be … vaporized by the heat from the heater 146 within the vaporizing chamber.”
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`Id. at 6:54-58. This overcomes problems in the prior art recognized by Alarcon,
`
`such as limited “ability to control and monitor the amount of nicotine delivered to
`
`the user.” Id. at 1:34-36. Alarcon’s teaching that the gap must be “very small”
`
`ensures efficient heating because it limits the amount of liquid that is heated in the
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`vaporizing chambers to the “selectively dispense[d]” liquid (and not the bulk liquid
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`held in the liquid compartment).
`
`8
`
`Ex. 2001-010
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`
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`IPR2021-00826 (USP 9,814,265)
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`28.
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`I disagree with Petitioner’s assertion that a “POSITA would understand
`
`
`
`the ‘adjacent’ dispensing control device 141 and heater 146 to be ‘disposed in
`
`contact’ with each other even though ‘a very small gap’ may exist.” This is not only
`
`inconsistent with the express language of Alarcon, but also inconsistent with
`
`Alarcon’s teachings of providing a “vaporizing chamber” where liquid is
`
`“selectively dispense[d]” into to overcome problems with the prior art. Ex. 1002 at
`
`1:55-60. In fact, Alarcon expressly discourages POSITAs from using a wicking
`
`approach, where a material in contact with the heater is also in contact with and
`
`transports bulk liquid to the heater. Ex. 1002 at 1:30-40.
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`29. A POSITA would not have been motivated to look to Rabin after
`
`reading Alarcon because Rabin is directed to a capillary force vaporizer “designed
`
`to vaporize liquids and release the resulting vapor under pressure” for “applications
`
`in which a pressurized vapor stream is desired.” Such pressurized vapors would not
`
`be desirable in an electronic cigarette because electronic smokers expect to draw
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`smoke through inhalation, like in a conventional cigarette—not have a pressurized
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`vapor jet shot into his or her mouth. Ex. 1002 at 1:22-24; Ex. 1001 at 6:58-61 (“[t]he
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`resultant vapor (i.e., smoke) may be pulled out from the vaporizing chamber” for
`
`“oral inhalation.”). A POSITA would therefore not have been motivated to look to
`
`Rabin after reading about Alarcon’s electronic cigarette.
`
`9
`
`Ex. 2001-011
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`
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`IPR2021-00826 (USP 9,814,265)
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`30.
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`Indeed, Rabin is not directed to electronic cigarettes (which are not
`
`
`
`mentioned in Rabin). This is further confirmed by the fact that other aspects of
`
`Rabin are incompatible with electronic cigarettes. For example, Rabin discloses
`
`exemplary embodiments that use a 200-watt power supply and exterior surface
`
`temperature of 69 degrees Celsius, or over 150 degrees Fahrenheit, at the “top of
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`device.” Id. at 15:53-55; id. at Table 1. An electronic cigarette with an exterior
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`surface temperature this high at any part of the device would burn users on touch
`
`when attempting to hold the device between their fingers to smoke.
`
`31. As stated above, Alarcon’s gap forms the “vaporizing compartment” or
`
`“vaporizing chamber” where the heater is located so that “[w]hen the smoking liquid
`
`is dispensed from the container 140 and the heater is turned on, the smoking liquid
`
`may be … vaporized by the heat from the heater 146 within the vaporizing chamber.”
`
`Ex. 1002 at 6:54-58. This arrangement overcomes the problem of being unable to
`
`“control and monitor the amount of nicotine delivered to the user” by in the prior art
`
`having the liquid “selectively dispens[ed]” by the dispensing control device into the
`
`“vaporizing compartment.” Id. at 2:35-38; see also id. at 6:23-30 (the “dispensing
`
`control device” may “consistently dispense substantially the same amount of
`
`smoking liquid to the vaporizing chamber 124 each time”). A POSITA would have
`
`been discouraged from making the modification Petitioner proposes after reading
`
`Alarcon because it would eliminate the “vaporizing compartment”—an important
`
`10
`
`Ex. 2001-012
`
`
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`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`aspect of the Alarcon device, providing a space where liquid is “selectively
`
`
`
`dispens[ed]” and then vaporized in order to precisely control and monitor the amount
`
`of vaporization.
`
`32. Petitioner’s proposed modification changes Alarcon’s selective
`
`dispensing approach to a “wicking” approach. Ex. 1002 at 1:30-32. The proposed
`
`modification transforms “dispensing control device,” which selectively allows liquid
`
`to enter a “vaporizing compartment,” into a “wick” because, under Petitioner’s
`
`approach, the dispensing control device would be in direct contact with the bulk
`
`liquid and heater, thereby “wicking” (or transporting) liquid from Alarcon’s “liquid
`
`compartment” to the heater through capillary action. Alarcon disparages this very
`
`approach, stating that the “‘wicking’ method of fluid transport,” where “a wick that
`
`transports liquid from a disposable cartridge to the vaporizing element,” is
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`“relatively slow,” “limits the rate at which the user can smoke the cigarette,” and
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`“limits the ability to control and monitor the amount of nicotine delivered to the
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`user.” Id. at 1:30-39.
`
`33. Petitioner provides three reasons for why a POSITA would have been
`
`motivated to modify Alarcon “to arrange heater 146 ‘in direct heat-exchanging
`
`contact with’ dispensing control device 141.” I disagree with each reason provided.
`
`34. First, Petitioner asserts that “Rabin teaches that it is advantageous to
`
`apply heat directly to porous member 102 because ‘there is minimal heating of
`
`11
`
`Ex. 2001-013
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`
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`IPR2021-00826 (USP 9,814,265)
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`Declaration In Support of
`Patent Owner’s Preliminary Response
`unnecessary thermal mass.’” Pet. at 33. However, bringing the dispensing control
`
`
`
`device in contact with the heater would result in more thermal mass (the dispensing
`
`control device) to be heated (because the dispensing control device would be heated
`
`as well) thereby decreasing efficiency. Alarcon’s approach already contemplates
`
`minimizing the unnecessary heating of thermal mass, by disclosing that heat is
`
`applied
`
`to “selectively dispense[d]” smoking
`
`liquid
`
`in
`
`the “vaporizing
`
`compartment”; there are no “heat transfer components” between the heating device
`
`and the liquid. Ex. 1002 at 2:30-43. As such, there is no “unnecessary thermal
`
`mass” in Alarcon as there may have been in the prior art capillary force vaporizers
`
`described in Rabin.” If anything, moving the heater to contact the dispensing control
`
`device would render the dispending control device a “thermal mass” that would need
`
`to be heated, which is directly contrary to what Rabin teaches about reducing such
`
`thermal masses.
`
`35. Second, Petitioner asserts that Rabin’s disclosures of “applying heat
`
`directly to porous member 102” results in “the maximum heater temperature” being
`
`“reduced.” Pet. at 46. This is incorrect because the Alarcon heater is already heating
`
`the selectively dispensed amount of liquid that needs to be vaporized (and not
`
`heating another material where the liquid is held in), thereby already minimizing the
`
`heating temperature. Ex. 1002 at Abst. (“a heater located at the vaporizing
`
`compartment … to vaporize the smoking liquid dispensed from the liquid
`
`12
`
`Ex. 2001-014
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`IPR2021-00826 (USP 9,814,265)
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`Declaration In Support of
`Patent Owner’s Preliminary Response
`compartment”); 6:54-58 (“When the smoking liquid is dispensed from the container
`
`
`
`140 and the heater 146 is turned on, the smoking liquid may be mixed with air from
`
`the flow path 122 and vaporized by the heat from the heater 146 within the
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`vaporizing chamber 124”); see also id. at 1:55-65; 2:28-43. Moving the heater in
`
`contact the dispensing control device could actually increase the temperature
`
`required for vaporization because the dispensing control device would be an
`
`additional “heat transfer component” that is heated. See Ex. 1003 at 7:23-27.
`
`36. Third, Petitioner asserts that Rabin teaches that its disclosed
`
`arrangement “increases overall system efficiency.” Pet. at 33 (citing Ex. 1003 at
`
`7:56-58). Petitioner ignores that Rabin is directed to improving efficiency over prior
`
`art “capillary pumps,” not electronic cigarettes like Alarcon. As shown in Rabin, its
`
`invention is compared in terms of efficiency with a prior art capillary pump
`
`described in U.S. Pat. No. 6,634,864” from 2002. Ex. 1003 at 16:1-35; 7:55-58.
`
`The ’864 patent’s “capillary pump” is used for “applications that require pressurized
`
`vapor,” such as to “generate a flame from the released pressurized vapor” (Ex. [’846
`
`patent] at 3:23-27); like Rabin, the ’864 patent is not directed to electronic cigarettes.
`
`There is nothing in Rabin that indicates its disclosures would improve efficiency of
`
`a device like Alarcon’s, which is not a capillary pump (or capillary force vaporizer).
`
`A POSITA would not understand Rabin’s disclosures about “increased overall
`
`efficiency” compared to prior art capillary pumps from 2002 to mean that any of its
`
`13
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`Ex. 2001-015
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`
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`IPR2021-00826 (USP 9,814,265)
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`Declaration In Support of
`Patent Owner’s Preliminary Response
`teachings could increase the efficiency of electronic cigarette devices from 11 years
`
`
`
`later, like Alarcon.
`
`37.
`
`In addition, because a POSITA would not have been motivated to
`
`arrange the Alarcon heater in direct contact with the dispensing control device as
`
`discussed, a POSITA would also not have been motivated to use replace the Alarcon
`
`solid-state heater with the Rabin heater for the reasons that Petitioner alleges,
`
`namely, so that vapor can flow through the heater (which would not be possible with
`
`the Alarcon solid state heater if it were placed in direct contact with the dispensing
`
`control device). In fact, replacing Alarcon’s solid-state heater, which blocks liquid,
`
`with Rabin’s permeable heater without eliminating the “gap” would result in a
`
`device that doesn’t work because the liquid would not be contained within the
`
`“vaporizing compartment” and some liquid would simply flow through the heater.
`
`This would result in unvaporized liquid leaking through the device.
`
`VII. GROUND 2: ALARCON ALONE OR ALARCON IN VIEW OF
`HARWIG
`38. As discussed with respect to Ground I, Alarcon alone does not disclose
`
`“a thermal resistor comprising a metallic foil or a thin sheet” or a “vaporizer
`
`membrane … disposed in direct contact with the thermal resistor.”
`
`39. Regarding the proposed combination of Alarcon and Harwig, Petitioner
`
`asserts that “[i]t would have been obvious to utilize techniques for efficient
`
`vaporization disclosed in Harwig in an electronic cigarette, such as Alarcon’s ESD
`
`14
`
`Ex. 2001-016
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`IPR2021-00826 (USP 9,814,265)
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`Declaration In Support of
`Patent Owner’s Preliminary Response
`100.” Pet. at 52. Petitioner cites Harwig’s disclosure that “surface heating provides
`
`
`
`the most efficient method to transfer heat to surface molecules” and asserts that a
`
`POSITA would have been motivated to arrange the Alarcon heater “in contact with”
`
`the dispensing control device in view of this teaching. Pet. at 53. I disagree that a
`
`POSITA would have been motivated to arrange Alacon’s heater as proposed.
`
`40. Harwig is directed to improving efficiency over prior art vaporizing
`
`devices that apply “constant heat” with a heater “submerg[ed]” in the liquid. Ex.
`
`1004 at 3:26-29; 4:31-32. Harwig overcomes the deficiency in the prior art caused
`
`by heating the bulk liquid by using one approach to “localized heating,” namely,
`
`applying heat to the surface of a “wick” rather than bulk liquid held in a reservoir.
`
`See id. at 9:1-9; see also id. at 12:44-46 (“Fig. 4b illustrates a simple or single
`
`serpentine wire heating element 123b touching the flat emanating surface 124b at
`
`the tip end of ceramic wick 125b.”); 14:2-4 (“Fig. 5e illustrates a thin film heating
`
`element 126e in the form of a thin ribbon deposited on the flat tip end of wick 127e”).
`
`This “minimizes the transfer of heat to bulk liquid” (id. at 4:28-29) because heat is
`
`only applied to the tip of the wick (and therefore only to the liquid held in the tip of
`
`the wick) rather than the liquid in the reservoir.
`
`41. A POSITA reading Alarcon would have recognized that Alarcon
`
`already addressed the problem. The Alarcon device does not heat the bulk liquid,
`
`either. Instead, it avoids the problems associated with heating bulk liquid (also
`
`15
`
`Ex. 2001-017
`
`
`
`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`addressed by Harwig) by avoiding heating of the bulk liquid in a different way. In
`
`
`
`Alarcon, heat is applied only to the liquid that was “selectively dispensed” into the
`
`“vaporization compartment,” (Ex. 1002 at 2:35-40)—i.e., the liquid that is precisely
`
`dosed and “selectively dispense[d]” into the vaporizing compartment, which is
`
`limited because of Alarcon’s teachings that the “gap” between the heater and the
`
`dispensing control device be “very small.” Id. at 6:26-30. The “bulk liquid” remains
`
`in the “liquid compartment” and is not heated. Id. at 2:4-7 (“The liquid compartment
`
`may include an opening connected to the vaporizing compartment, and the
`
`dispensing control device may cover the opening of the liquid compartment.”).
`
`Because of this, Alarcon already avoids the issues Harwig recognized with heating
`
`the “bulk liquid” to “constant and elevated” temperatures, which causes degradation
`
`and other problems identified in Harwig. See Ex. 1004 at 3:26-30. A POSITA
`
`would therefore not have been motivated to apply Harwig’s teachings to the Alarcon
`
`device.
`
`42.
`
`In fact, a POSITA would have been discouraged to apply Harwig’s
`
`teachings to the Alarcon device as Petitioner claims. This is because Alarcon
`
`expressly disparages the wicking method disclosed in Harwig as being “slow,”
`
`“limit[ing] the rate at which the user can smoke the cigarette,” and being unable to
`
`“monitor the amount of nicotine delivered to the user.” Ex. 1002 at 1:30-38. This
`
`is exactly the localized heating approach that Harwig discloses: “Each wick 19, 20
`
`16
`
`Ex. 2001-018
`
`
`
`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`has a lower end received within a reservoir 23, 24, respectively for containing a
`
`
`
`solution of an active such as an insecticide, pesticide or fragrance, and an upper end
`
`having a relatively flat tip across which wire heating elements 21, 22 respectively
`
`extend. Thus, as active is drawn upwardly by capillary action through wicks 19, 20,
`
`the solution is volatized when current is passed through wires 21, 22 resulting in
`
`heating of the solution and vaporization of the active.” Id. at 9:1-9.
`
`43. A POSITA reading Alarcon would therefore be discouraged from
`
`modifying Alarcon in the way Petitioner proposes. This is because Petitioner’s
`
`proposed modification turns Alarcon’s dispensing control device into a wick by
`
`placing one end of the dispensing control device in contact with the “liquid
`
`compartment” and the other end in contact with a heater. Rather than selectively
`
`allowing liquid to pass through into the “gap” contemplated by Alarcon, the
`
`dispensing control device would become a “wick” that transports (“wicks”) liquid
`
`from the liquid compartment to the heater through the use of capillary action. This
`
`is the “wicking approach” that Alarcon disparages, and so a POSITA would have
`
`been discouraged from modifying Alarcon as Petitioner proposes.
`
`44. As discussed, the modification also eliminates the “vaporizing
`
`compartment” altogether, removing the ability to “control and monitor the amount
`
`of nicotine delivered to the user” that Alarcon recognized as problematic in the prior
`
`art. See Ex. 1002 at 1:34-36.
`
`17
`
`Ex. 2001-019
`
`
`
`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`45. Petitioner also asserts that “Harwig discloses other benefits of its
`
`
`
`design, such as improved portability and smaller size.” Pet. at 53. But Alarcon
`
`already discloses a portable, compact electronic cigarette, and a POSITA would not
`
`have thought based on anything in Harwig that its “wicking” approach would make
`
`the Alarcon electronic cigarette any more portable or compact.
`
`46. Petitioner also asserts that “one ‘advantage of a thin film heating
`
`element is that there can be an increase in surface area, which “allows for increased
`
`liquid contact with the heating element to create more efficient thermal transfer and
`
`volatilization of the solution.’” Pet. at 59. The Alarcon solid-state heater, however,
`
`already heats the liquid in the vaporizing chamber (and not liquid held in a wick or
`
`anything else). Petitioner’s proposed modification to use a “thin film heating
`
`element” in contact with the dispensing control device instead of the solid-state
`
`heater of Alarcon could actually reduce “liquid contact” because portions of the
`
`heater thin film heating element would be in contact with the dispensing control
`
`device instead of the liquid.
`
`47. Petitioner asserts that “Harwig’s thin-film heating element is well-
`
`suited for use in Alarcon’s ESD 100 because, when deposited on Alarcon’s
`
`dispensing control device 141, it allows vapor to flow through ESD 100 via the space
`
`not occupied by the heating element.” Pet. at 54. As I discuss above, because a
`
`POSITA would not have been motivated to modify Alarcon to position the
`
`18
`
`Ex. 2001-020
`
`
`
`IPR2021-00826 (USP 9,814,265)
`
`Declaration In Support of
`Patent Owner’s Preliminary Response
`
`dispensing control device in contact with the heater, a POSITA would also not have
`
`been motivated to use Harwig’s thin-film heating element because, like with the
`proposed enpedifivatfion in Ground 1, using Harwig’s heating element with Alarcon’s
`
`“gap” would result in liquid leakage. Unlike Alarcon’s solid-state heater, Harwig’s
`
`heating element is permeable, allowing for liquid to flow between the interspaces of
`
`the heater.
`
`vill. CONCLUSION
`
`48. All statements made herein of my own knowledgeare true, and all
`
`statements made on information and belief are believed to be true. Further, | am
`
`aware that
`
`these statements are made with the knowledge that willful
`
`false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under 18 U.S.C. § 1001. I declare under penalty of perjury that the foregoingis true
`
`and correct.
`
`Executed on August 15, 2021.
`
`
`
`19
`
`Ex. 2001-021
`
`Ex. 2001-021
`
`
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