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`UNITED STATES INTERNATIONAL TRADE COMMISSION
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`WASHINGTON, D.C.
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`IN THE MATTER OF
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`CERTAIN VAPORIZER DEVICES,
`CARTRIDGES USED THEREWITH,
`AND COMPONENTS THEREOF,
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`:
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`~
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`CONFIDENTIAL BUSINESS INFORMATION -
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`SUBJECT TO PROTECTIVE ORDER
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`OUTSIDE ATTORNEYS' EYES ONLY
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`VIDEOTAPED STENOGRAPHIC DEPOSITION OF
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`JOSEPH C. MCALEXANDER, III
`
`ATLANTA, GEORGIA
`
`FRIDAY, MARCH 1, 2024
`
`REPORTED BY:
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`TANYA LL. VERHOVEN-PAGE,
`CCR-B=179.0
`
`FILE NO.
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`J10933954
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`Z ESQUIRE
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`DEPOSITION SOLUTIONS
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`JLI Ex. 2052, Page 1 of 97
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`JLI Ex. 2052, Page 1 of 97
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
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`WASHINGTON, D.C.
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`IN THE MATTER OF
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`CERTAIN VAPORIZER DEVICES,
`CARTRIDGES USED THEREWITH,
`AND COMPONENTS THEREOF,
`
`:
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`~
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`CONFIDENTIAL BUSINESS INFORMATION -
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`SUBJECT TO PROTECTIVE ORDER
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`OUTSIDE ATTORNEYS' EYES ONLY
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`VIDEOTAPED STENOGRAPHIC DEPOSITION OF
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`JOSEPH C. MCALEXANDER, III
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`ATLANTA, GEORGIA
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`FRIDAY, MARCH 1, 2024
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`REPORTED BY:
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`TANYA LL. VERHOVEN-PAGE,
`CCR-B=179.0
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`FILE NO.
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`J10933954
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`Z ESQUIRE
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`DEPOSITION SOLUTIONS
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`JLI Ex. 2052, Page 1 of 97
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`JLI Ex. 2052, Page 1 of 97
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`1 March 1, 2024
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`2 9:04 a.m.
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` Videotaped stenographic deposition
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`3 4
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`5 of JOSEPH C. MCALEXANDER, III, held at the
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`6 offices of Hunton, Andrews, Kurth, LLP,
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`7 600 Peachtree Street, Atlanta, Georgia before
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`8 Tanya L. Verhoven-Page, Certified Court
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`9 Reporter and Notary Public of the State of
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`10 Georgia.
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`JLI Ex. 2052, Page 2 of 97
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`1 APPEARANCES OF COUNSEL
`
` On behalf of the Complainants:
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`2
`
`3
`
` QUINN EMANUEL URQUHART & SULLIVAN, LLP
`4 51 Madison Avenue
` 22nd Floor
`5 New York, New York 10010
` (212) 849-7000
`6 BY: JOHN T. MCKEE, ESQ.
` e-mail: johnmckee@quinnemanuel.com
`
`7
`
` QUINN EMANUEL URQUHART & SULLIVAN, LLP
`8 1300 I Street, N.W.
` Suite 900
`9 Washington, D.C. 20005
` (202) 538-8000
`10 BY: COURTNEY KASUBOSKI, ESQ.
` e-mail: courtneykasuboski@quinnemanuel.com
`11
` QUINN EMANUEL URQUHART & SULLIVAN, LLP
`12 555 Twin Dolphin Drive
` 5th Floor
`13 Redwood Shores, California 94065
` (605) 801-5000
`14 BY: JOSHUA PARZIVAND, ESQ.
` e-mail: joshua.parzivand@quinnemanuel.com
`15
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`16
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`17
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`18
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`19 On behalf of the Respondents:
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`20 WEIL, GOTSHAL & MANGES, LLP
` 201 Redwood Shores Parkway
`21 Redwood Shores, California 94065
` (650) 802-3000
`22 BY: ANNE M. CAPPELLA, ESQ.
` e-mail: anne.cappella@weil.com
`23
`
`24
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`25
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`JLI Ex. 2052, Page 3 of 97
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`
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`1 APPEARANCES OF COUNSEL
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`2 3
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` On behalf of the United States International Trade
` Commission:
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`4
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` UNITED STATES INTERNATIONAL TRADE COMMISSION
`5 500 E Street, N.W.
` Washington, D.C. 20436
`6 (858) 792-6773 $$
` BY: MONISHA DEKA, ESQ.
`7 e-mail: monisha.deka@usitc.gov
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`8 9
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`10
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`11
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`12 THE VIDEOGRAPHER: Josh Minyard
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`13
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`14 - - -
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`JLI Ex. 2052, Page 4 of 97
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`1 I N D E X
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` WITNESS: JOSEPH C. MCALEXANDER, III
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` Examination Page
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`2 3
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`4 5
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`6 BY MR. MCKEE 9
` BY MS. DEKA 131
`7 BY MR. MCKEE 165
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`JLI Ex. 2052, Page 5 of 97
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`1 EXHIBITS:
`
`2 McAlexander
` Deposition
`3 Exhibit Description Page
`
`4
`
` Exhibit 1 Expert Report of
`5 Joseph C. McAlexander,
` III 9
`
`6
`
` Exhibit 2 Rebuttal Expert Report
`7 of Joseph C. McAlexander,
` III 9
`
`8
`
` Exhibit 3 United States Reissued
`9 Patent
` Patent Number:
`10 US RE49,114 E 9
`
`11 Exhibit 4 United States Patent
` Patent No.:
`12 US 10,130,123 B2 9
`
`13 Exhibit 5 Declaration of Joseph
` C. McAlexander, III,
`14 in Support of Patent
` Owners Preliminary
`15 Response to Corrected
` Petition for IPR of
`16 U.S. Patent No. 9646182
` in IPR 2022-01375 29
`17
` Exhibit 6 Coffee cup 128
`18
` Exhibit 7 Handwritten drawing 142
`19
` Exhibit 8 Document bearing Bates
`20 numbers
` JLI-NJOY-ITC1368-00041327
`21 342 and 343 145
`
`22 Exhibit 9 United States Patent
` Application Publication
`23 Pub. No.:
` US 2015/0245658 A1 183
`24
`
`25
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`JLI Ex. 2052, Page 6 of 97
`
`
`
`1 EXHIBITS:
`
`2 McAlexander
` Deposition
`3 Exhibit Description Page
`
`4
`
` Exhibit 10 International
`5 Publication No.
` WO 2012/142293 to
`6 Levitz 211
`
`7 Exhibit 11 United States Patent
` Application Publication
`8 Pub. No.:
` US 2014/0318559 A1
`9 (Thorens) 224
`
`10 Exhibit 12 United States Patent
` Application Publication
`11 Pub. No.:
` US 2015/0020831 A1
`12 (Weigensberg) 224
`
`13 Exhibit 13 International Patent
` Publication No.
`14 WO 2011/065754 to Cho 265
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`15
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`JLI Ex. 2052, Page 7 of 97
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`
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`1 ATLANTA, GEORGIA; FRIDAY, MARCH 1, 2024
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`2 9:08 A.M.
`
` P R O C E E D I N G S
`
` THE VIDEOGRAPHER: We are now on
`
`3 4
`
`5 6
`
`7 the record. Today's date is March 1st,
`
`8 2024. The time is 9:08 a.m.
`
`9 This is the video deposition of
`
`10 Joseph McAlexander, taken in the matter
`
`11 of Certain Vaporizer Devices, Cartridges
`
`12 used Therewith and Components Thereof.
`
`13 My name is Josh Minyard, your
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`14 videographer. The court reporter is
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`15 Tanya Page, and we represent Esquire
`
`16 Deposition Solutions.
`
`17 Counsel, please introduce
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`18 yourselves for the record, after which
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`19 the witness will be sworn in.
`
`20 MR. MCKEE: John McKee with Quinn
`
`21 Emanuel on behalf of the Complainants,
`
`22 and with me today is Courtney Kasuboski
`
`23 and Joshua Parzivand, also of Quinn
`
`24 Emanuel.
`
`25 MS. CAPPELLA: Anne Cappella with
`
`JLI Ex. 2052, Page 8 of 97
`
`
`
`1 Weil, Gotshal & Manges, representing the
`
`2 Respondents and the witness.
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`3 MS. DEKA: And this is Monisha Deka
`
`4 from the U.S. International Trade
`
`5 Commission.
`
` Thereupon --
`
`6 7
`
`8 JOSEPH C. MCALEXANDER, III,
`
`9 called as a witness, having been first duly sworn,
`
`10 was examined and testified as follows:
`
`11
`
`12 EXAMINATION
`
`13 BY MR. MCKEE:
`
`14 Q Good morning, Mr. McAlexander.
`
`15 A Good morning.
`
`16 (McAlexander Deposition Exhibit
`
`17 Nos. 1 through 4 were marked for the
`
`18 record.)
`
`19 BY MR. MCKEE:
`
`20 Q I have pre-marked a few exhibits for the
`
`21 deposition today. I'm just going to read what they
`
`22 are into the record.
`
`23 You should have in front of you, marked
`
`24 as Exhibit 1, the Expert Report of Joseph McAlexander
`
`25 Regarding Invalidity of U.S. Patent Nos. RE49,114 and
`
`JLI Ex. 2052, Page 9 of 97
`
`
`
`1 10,130,123.
`
`2 The -- as Exhibit 2, the Rebuttal Expert
`
`3 Report of Joseph C. McAlexander, III, Regarding U.S.
`
`4 Patent Nos. RE49,114 and 10,130,123. As Exhibit 3,
`
`5 U.S. Patent No. RE49,114, and as Exhibit 4, U.S.
`
`6 Patent No. 10,130,123.
`
`7 Do you have those in front of you?
`
`8 A Yes, I do.
`
`9 Q And are Exhibits 3 and 4 the patents that
`
`10 you offered opinions about in connection with your
`
`11 expert reports marked as Exhibits 1 and 2?
`
`12 A Yes, they are.
`
`13 Q Mr. McAlexander, have you been deposed
`
`14 before?
`
`15 A Yes.
`
`16 Q Well, since we have a lot to cover today,
`
`17 I'm just going to jump straight into it.
`
`18 Does that sound okay?
`
`19 A Certainly, sure. Go ahead.
`
`20 Q So I'd like to start with your -- your
`
`21 CV, which I believe is in an appendix at the back of
`
`22 your opening expert report, Exhibit 1, Attachment A.
`
`23 Mr. McAlexander, is Attachment A to your
`
`24 opening expert report an accurate copy of your CV?
`
`25 A As of the time of fourth quarter '23,
`
`JLI Ex. 2052, Page 10 of 97
`
`
`
`1 yes.
`
`2 Q And just to cut straight to it, have you
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`3 ever worked at a vaporizer company?
`
`4 A No, I have not.
`
`5 Q Have you ever worked on an electronic
`
`6 nicotine delivery system or ENDS product?
`
`7 A I have worked on a number of litigation
`
`8 cases that involved those products, yes.
`
`9 Q Other than in your work as a litigation
`
`10 consultant, have you ever worked on an ENDS product?
`
`11 A No, I have not.
`
`12 Q Have you ever designed an ENDS product or
`
`13 a vaporizer?
`
`14 A Components within it, but not the actual
`
`15 vaporizer product, no.
`
`16 Q Now, if I look at your expert -- your CV
`
`17 here, in the first sentence you say you've been
`
`18 recognized as an inventor on 31 U.S. and a number of
`
`19 foreign patents; is that right?
`
`20 A That is correct.
`
`21 Q And do any of those U.S. or foreign
`
`22 patents relate to vaporizers or ENDS technology?
`
`23 A They relate to components that are within
`
`24 those technologies, yes.
`
`25 Q Do any of those patents or foreign
`
`JLI Ex. 2052, Page 11 of 97
`
`
`
`1 patents relate to vaporizer or ENDS devices?
`
`2 A I cannot differentiate that from the
`
`3 first question you just asked me. It's the same
`
`4 thing.
`
`5 I -- I've designed and worked with
`
`6 components that are part of that technology.
`
`7 Q Do any of your patents or foreign patents
`
`8 relate -- describe a vaporizer or ENDS device?
`
`9 A No. Some of the patents describe a
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`10 pressure sensor device that would be used in a vapor
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`11 device.
`
`12 Q Now does your CV reflect the technical
`
`13 expertise that -- that you have developed over the
`
`14 course of your career?
`
`15 A I believe so, yes.
`
`16 Q And so you say you have 48 years of
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`17 experience in microcircuit and semiconductor
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`18 technologies, right?
`
`19 A Correct, probably closer to 50 years now.
`
`20 Q And you have skills in the areas of
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`21 circuit design and analysis, device fabrication and
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`22 assembly, testing, marketing, control system design
`
`23 analysis, manufacturing operations and respective
`
`24 areas of quality, reliability and defect/failure
`
`25 analysis, right?
`
`JLI Ex. 2052, Page 12 of 97
`
`
`
`1 A Correct.
`
`2 Q But other than your work as a litigation
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`3 consulting -- strike that. Otherwise, your work --
`
`4 strike that, as well.
`
`5 Other than your work as a litigation
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`6 consultant, you have not done any work on vaporizer
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`7 devices or ENDS products, right?
`
`8 MS. CAPPELLA: Objection. Form.
`
`9 THE WITNESS: Not on those
`
`10 particular products, no.
`
`11 BY MR. MCKEE:
`
`12 Q And so when you say you have designed and
`
`13 managed development testing and evaluation of
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`14 devices, including DRAMs, SRAMs, CCDs and SRs, none
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`15 of that is for vaporizer or ENDS devices, right?
`
`16 MS. CAPPELLA: Objection. Form.
`
`17 THE WITNESS: Each one of those
`
`18 technologies refer to specific types of
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`19 components that would be used in
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`20 vaporize -- vaping devices.
`
`21 BY MR. MCKEE:
`
`22 Q And those are fields in which you believe
`
`23 you are an expert, correct?
`
`24 A Yes.
`
`25 Q You have technical expertise with DRAMs,
`
`JLI Ex. 2052, Page 13 of 97
`
`
`
`1 SRAMs and CCDs, right?
`
`2 A I do, yes.
`
`3 Q You also have technical expertise with
`
`4 RFID technology, right?
`
`5 A Correct.
`
`6 Q But you do not have any technical
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`7 expertise with vaporizer and ENDS technology,
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`8 correct?
`
`9 MS. CAPPELLA: Objection form.
`
`10 THE WITNESS: I think that question
`
`11 has been asked twice already; but the
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`12 answer is I have technology experience
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`13 and expertise in components that go into
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`14 and part of those type of devices.
`
`15 BY MR. MCKEE:
`
`16 Q Are you a technical expert in fluid
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`17 mechanics?
`
`18 A It depends on what aspect of it. When it
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`19 comes to aspects within fluids, yes. If you're
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`20 asking do I have a degree in fluids mechanics, the
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`21 answer is no.
`
`22 Q What does aspects within fluids mean?
`
`23 A Well, air flow is a fluid type of
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`24 Dynamics. Water flow. Dynamics with regard to
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`25 the -- the vibration and acoustic technology that is
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`JLI Ex. 2052, Page 14 of 97
`
`
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`1 a part of or passes through fluid-type materials.
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`2 That experience, yes, I do have experience.
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`3 Q And which of the -- which of the areas of
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`4 your work that you describe in your CV contribute to
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`5 the expertise that you believe you have in air flow
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`6 as a type of fluid dynamics?
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`7 A MEMS technology is one.
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`8 Q I'm sorry. I didn't catch that.
`
`9 A MEMS, micro-electronic type devices,
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`10 MEMS, M-E-M-S.
`
`11 Q I understand that MEMS sensors can be
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`12 used for a variety of things.
`
`13 What specific expertise do you have with
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`14 MEMS sensors that, in your opinion, makes you an
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`15 expert in air flow?
`
`16 A The design of MEMS sensors.
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`17 Q Is there a difference between a MEMS air
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`18 flow sensor and a MEMS pressure sensor?
`
`19 MS. CAPPELLA: Objection to form.
`
`20 THE WITNESS: The difference is in
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`21 the technology in which it is used. You
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`22 can actually used the same type of MEMS
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`23 sensor in multiple different facets.
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`24 BY MR. MCKEE:
`
`25 Q So a MEMS air flow sensor could be used
`
`JLI Ex. 2052, Page 15 of 97
`
`
`
`1 to sense pressure?
`
`2 A Could, yes.
`
`3 Q And in that context, you would consider
`
`4 it to be a pressure sensor, right?
`
`5 A In that context, yes.
`
`6 Q All right. Now, if you turn to Page 3 of
`
`7 your CV, you list your litigation experience.
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`8 A I disagree.
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`9 Q Sorry. What do you list starting on Page
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`10 3?
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`11 A That's my -- that's my -- that's my
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`12 experience in terms of -- of engineer. That's my
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`13 employment type experience.
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`14 Q Which of these employment experiences
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`15 relate to vaporizer or ENDS technology?
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`16 MS. CAPPELLA: Objection to form.
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`17 THE WITNESS: Well, the experience
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`18 that I have had since 1988 with my own
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`19 company, McAlexander Sound, is -- during
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`20 that period of time is when I developed
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`21 the techniques and the patent -- patented
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`22 technology with regard to MEMS
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`23 technology. So that's one.
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`24 I've also been involved in acoustic
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`25 design, which is also looking at pressure
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`JLI Ex. 2052, Page 16 of 97
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`
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`1 sensors that are based upon a vibration
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`2 or acoustic glaze.
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`3 Also, with regard to my work as a
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`4 managing director in the private limited
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`5 company in Singapore, I have worked with
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`6 manufacturers and assembling houses that
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`7 actually assemble components that are
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`8 used in the manufacturing and technology
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`9 of MEMS sensors.
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`10 The -- the work that I did on Page
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`11 4 with Cochran Consulting as the managing
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`12 consultant for that particular company,
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`13 that was in the design and productization
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`14 of underwater dive computers, which
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`15 included pressure transducers.
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`16 At EPI Technology, I was
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`17 responsible for the testing and the
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`18 physical and chemical analyses of various
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`19 types of components, including
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`20 transducers, which would be pressure
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`21 sensors.
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`22 And at Texas Instruments,
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`23 Incorporated, which shows my experience
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`24 on Pages 5 and 6 that was in the design
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`25 of different types of sensing and logic
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`JLI Ex. 2052, Page 17 of 97
`
`
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`1 and buffer type components that go into
`
`2 vaping type devices.
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`3 Overall, that's, generally
`
`4 speaking, my experience related to the
`
`5 question you asked.
`
`6 BY MR. MCKEE:
`
`7 Q Do you have any experience modeling air
`
`8 flow as a fluid within a device?
`
`9 A Modeling air flow. In some of the
`
`10 technology that I dealt with in terms of MEMS
`
`11 sensors, yes.
`
`12 Q MEMS is a -- it's a sensor over which air
`
`13 flow might pass, right?
`
`14 MS. CAPPELLA: Objection. Form.
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`15 THE WITNESS: Correct
`
`16 characterization, yes.
`
`17 BY MR. MCKEE:
`
`18 Q Have you ever designed any of the air
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`19 flow pathways in a device that results in that air
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`20 flow being delivered to the MEMS sensors that you're
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`21 talking about?
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`22 A Not in the -- not in the air flow or
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`23 channel area that would -- in terms of the air path,
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`24 no. My development work was with regard to the
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`25 sensor itself.
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`JLI Ex. 2052, Page 18 of 97
`
`
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`1 Q Now, in -- in vaporizer devices like the
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`2 ones we're going to be talking about today, there is
`
`3 also air flow out of the device, right?
`
`4 MS. CAPPELLA: Objection. Form.
`
`5 THE WITNESS: There can be.
`
`6 BY MR. MCKEE:
`
`7 Q
`
`
`
`
`
`
`
`
`
`11 Q Do you have any experience in aerosol
`
`12 generation or vapor formation in electronic device?
`
`13 A No, I do not.
`
`14 Q Do you have any experience with the
`
`15 design of wicking elements in electronic devices?
`
`16 A Not directly with the wicking devices,
`
`17 no.
`
`18 Q And then in terms of your litigation
`
`19 consulting experience, other than the -- other than
`
`20 the Altria, R.J. Reynolds cases that you have
`
`21 included in your CV, do any of the other litigation
`
`22 matters that you've worked on relate to e-cigarettes?
`
`23 A E-cigarettes?
`
`24 Q E-cigarettes.
`
`25 MS. CAPPELLA: I'll just caution
`
`JLI Ex. 2052, Page 19 of 97
`
`
`
`1 the witness not to reveal any
`
`2 confidential information that is not
`
`3 pertinent to this particular
`
`4 investigation.
`
`5 THE WITNESS: Thank you. I have a
`
`6 number of cases other than -- other than
`
`7 the R.J.R., Altria, PMI type cases that
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`8 do relate to pressure sensors, but I'll
`
`9 quote one in particular answering to your
`
`10 question is on Page 29, at the top of the
`
`11 page, VPR versus Jupiter. And that's a
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`12 patent related to flow sensors with
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`13 regard to vaporizers.
`
`14 BY MR. MCKEE:
`
`15 Q What is the earliest filed matter that
`
`16 you have identified here on your CV that relates to
`
`17 e-cigarette technology?
`
`18 A Earliest filed matter?
`
`19 Q Actually, let me ask that again.
`
`20 What is the earliest filed matter that
`
`21 you have listed here on your CV that relates to
`
`22 e-cigarettes?
`
`23 A I'll answer your question specifically,
`
`24 narrowly, because I have a number of cases related to
`
`25 pressure sensors and other things that predate these;
`
`JLI Ex. 2052, Page 20 of 97
`
`
`
`1 but as it directly relates to e-cigarettes or e-type
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`2 vaping devices, I would say probably on Page 24, the
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`3 R.J.R. versus PMI, which I have -- my retention was
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`4 as early as 2020. Now, when the case was filed I do
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`5 not know. I do not recall.
`
`6 Q You have this ordered roughly
`
`7 chronologically, anyway, right?
`
`8 A Roughly, yes.
`
`9 Q All right. So let's -- let's turn if we
`
`10 can -- actually, I don't know that we need to go
`
`11 anywhere quite yet.
`
`12 If you'll pull up Exhibits 3 and 4, the
`
`13 '114, and the '123 patents, and just have them in
`
`14 front of you.
`
`15 The '113 patent -- the '123 patent --
`
`16 excuse me -- is titled Vaporizer Devices with Blow
`
`17 Discrimination, right?
`
`18 A That's correct.
`
`19 Q It's directed to vaporizer devices?
`
`20 MS. CAPPELLA: Objection to form.
`
`21 THE WITNESS: It is.
`
`22 BY MR. MCKEE:
`
`23 Q I didn't hear the answer. I'm sorry.
`
`24 A It is.
`
`25 Q And the '114 patent is titled Electronic
`
`JLI Ex. 2052, Page 21 of 97
`
`
`
`1 Cigarette with Liquid Reservoir, right?
`
`2 A Correct.
`
`3 Q It's also directed to vaporizer devices?
`
`4 MS. CAPPELLA: Objection to form.
`
`5 BY MR. MCKEE:
`
`6 Q Right?
`
`7 A Correct.
`
`8 Q E-cigarettes are vaporizer devices,
`
`9 right?
`
`10 A Yes.
`
`11 Q
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`20 Q And the purposes of an e-cigarette is to
`
`21 be a substitute for a traditional combustible
`
`22 cigarette which burns tobacco to produce nicotine,
`
`23 correct?
`
`24 MS. CAPPELLA: Objection to form.
`
`25 THE WITNESS: Say the question
`
`JLI Ex. 2052, Page 22 of 97
`
`
`
`1 again, please.
`
`2 BY MR. MCKEE:
`
`3 Q Sure. The purpose of an e-cigarette is
`
`4 to be a substitute for a traditional combustible
`
`5 cigarette which burns tobacco to produce nicotine,
`
`6 correct?
`
`7 MS. CAPPELLA: Objection to form.
`
`8 THE WITNESS: Generally speaking,
`
`9 I'd say yes.
`
`10 BY MR. MCKEE:
`
`11 Q Otherwise, if an e-cigarette did not
`
`12 provide a similar experience and act as a substitute
`
`13 to a traditional cigarette, then cigarette smokers
`
`14 would simply choose to continue smoking cigarettes,
`
`15 right?
`
`16 MS. CAPPELLA: Objection to form.
`
`17 And scope.
`
`18 THE WITNESS: I'd say that depends
`
`19 on the personality. You're making a
`
`20 general statement to that effect.
`
`21 BY MR. MCKEE:
`
`22 Q The idea, anyway, with e-cigarettes is to
`
`23 capture cigarette smokers and provide them an
`
`24 alternative other than cigarettes, right?
`
`25 MS. CAPPELLA: Objection to form
`
`JLI Ex. 2052, Page 23 of 97
`
`
`
`1 and scope.
`
`2 THE WITNESS: That might be one
`
`3 aspect of it. It may also be used to
`
`4 prevent people from ever getting involved
`
`5 with the standard cigarettes in the first
`
`6 place. Sometimes it's just due to social
`
`7 pressure.
`
`8 BY MR. MCKEE:
`
`9 Q And one of the reasons that you would
`
`10 want to do that is that the combustion of cigarettes
`
`11 has carcinogenic side-effects, right?
`
`12 MS. CAPPELLA: Objection to form
`
`13 and scope.
`
`14 THE WITNESS: It can, yes.
`
`15 BY MR. MCKEE:
`
`16 Q E-cigarettes don't have that same
`
`17 downside, right?
`
`18 MS. CAPPELLA: Same objection.
`
`19 THE WITNESS: Not as I know of.
`
`20 BY MR. MCKEE:
`
`21 Q Because they're not burning anything,
`
`22 right?
`
`23 A Well, you're not getting any carcinogenic
`
`24 effects because of burning, I agree with that, unless
`
`25 you have one that's out of control.
`
`JLI Ex. 2052, Page 24 of 97
`
`
`
`1 Q Are you familiar with the phrase, heat
`
`2 not burn?
`
`3 MS. CAPPELLA: Objection to form.
`
`4 THE WITNESS: Yes.
`
`5 BY MR. MCKEE:
`
`6 Q What is a heat-not-burn product?
`
`7 MS. CAPPELLA: Objection to form.
`
`8 THE WITNESS: It means it vaporizes
`
`9 but it does not create the side-effects
`
`10 that are -- that come from a change in
`
`11 the chemical composition of the material.
`
`12 BY MR. MCKEE:
`
`13 Q And unlike an e-cigarette, a
`
`14 heat-not-burn product uses a solid fuel source,
`
`15 right?
`
`16 MS. CAPPELLA: Objection to form.
`
`17 Scope.
`
`18 THE WITNESS: It can, yes.
`
`19 BY MR. MCKEE:
`
`20 Q It does not use liquid, right?
`
`21 A Most don't, but it can.
`
`22 Q But it does still generate a vapor?
`
`23 A From a solid form?
`
`24 Q Yeah.
`
`25 A Yes.
`
`JLI Ex. 2052, Page 25 of 97
`
`
`
`1 Q Now, you understand that, in an
`
`2 e-cigarette, in order to simulate the experience of
`
`3 smoking a traditional cigarette, there are a number
`
`4 of factors that have to be balanced, right?
`
`5 MS. CAPPELLA: Objection to form.
`
`6 THE WITNESS: I'm not sure what you
`
`7 mean by a number of factors. There are
`
`8 factors that have to be considered, yes.
`
`9 BY MR. MCKEE:
`
`10 Q And those include considerations that
`
`11 relate to air flow, right?
`
`12 MS. CAPPELLA: Objection to form.
`
`13 THE WITNESS: That's one aspect,
`
`14 yes.
`
`15 BY MR. MCKEE:
`
`16 Q These products are designed so that the
`
`17 throat hit in an e-cigarette is similar to the throat
`
`18 hit from a traditional cigarette, right?
`
`19 MS. CAPPELLA: Objection to form.
`
`20 Mischaracterizes.
`
`21 THE WITNESS: Generally, that is
`
`22 part of the design considerations.
`
`23 BY MR. MCKEE:
`
`24 Q And these products are designed so that
`
`25 the draw resistance in an e-cigarette is similar to
`
`JLI Ex. 2052, Page 26 of 97
`
`
`
`1 the draw resistance in a traditional cigarette,
`
`2 right?
`
`3 MS. CAPPELLA: Objection to form.
`
`4 THE WITNESS: That's one of the
`
`5 goals, yes.
`
`6 BY MR. MCKEE:
`
`7 Q And the throat hit and the draw
`
`8 resistance are both, at least in part, a function of
`
`9 the air flow through the device, right?
`
`10 MS. CAPPELLA: Objection to form.
`
`11 THE WITNESS: In part. It's more a
`
`12 function of the puff itself, but air flow
`
`13 does contribute to it, yes.
`
`14 BY MR. MCKEE:
`
`15 Q If you could open your opening report and
`
`16 turn it to Page 6, Paragraph 22. Are you there?
`
`17 A Yes.
`
`18 Q And in Paragraph 22, you provide your
`
`19 definition for a person of ordinary skill in the art
`
`20 for the '123 and '114 patents, right?
`
`21 A I don't provide a definition in Paragraph
`
`22 23.
`
`23 Q In Paragraph 22?
`
`24 A Twenty-two. Thank you. Excuse me.
`
`25 Q No problem.
`
`JLI Ex. 2052, Page 27 of 97
`
`
`
`1 A Yes, sir, that's correct.
`
`2 Q Do you meet this definition?
`
`3 A Yes.
`
`4 Q As of when?
`
`5 A I would say as of the 1980s, 1990s.
`
`6 Q In the subsequent paragraphs, 23 and 24,
`
`7 however, you do not say that you're a person of skill
`
`8 in the art as of the claimed priority dates for the
`
`9 '123 and '114 patents, right?
`
`10 A Paragraph 24, I said: Based on my
`
`11 education, training and experience, it is my opinion
`
`12 that I can accurately represent the views of a POSITA
`
`13 as of these priority dates.
`
`14 Q That you can represent the views of a
`
`15 POSITA, not that you are a POSITA as of those
`
`16 priority dates, right?
`
`17 A As of --
`
`18 MS. CAPPELLA: Object to form.
`
`19 THE WITNESS: Excuse me.
`
`20 As of that priority date, I was
`
`21 more than the experience of a POSITA, but
`
`22 I at least met that.
`
`23 BY MR. MCKEE:
`
`24 Q You've been an expert in a number of
`
`25 cases involving patents, right?
`
`JLI Ex. 2052, Page 28 of 97
`
`
`
`1 A Yes.
`
`2 Q And in many of those cases, you provide
`
`3 paragraphs similar to this one where you define a
`
`4 person of skill in the art and then indicate whether
`
`5 you are or are not a person of skill with respect to
`
`6 those patents, right?
`
`7 A Certainly.
`
`8 Q And in those other cases when you
`
`9 qualified as a person of skill in the art, you said
`
`10 that you did, right?
`
`11 MS. CAPPELLA: Objection to form.
`
`12 THE WITNESS: I believe in each
`
`13 case I -- when I represent in any matter
`
`14 as an expert, I at least meet the
`
`15 qualifications of a person of ordinary
`
`16 skill in the art.
`
`17 MR. MCKEE: I'm going to mark an
`
`18 exhibit once we find it.
`
`19 (McAlexander Deposition Exhibit No.
`
`20 5 was marked for the record.)
`
`21 BY MR. MCKEE:
`
`22 Q I've marked as Exhibit 5 the Declaration
`
`23 of Joseph C. McAlexander, III, in Support of Patent
`
`24 Owners Preliminary Response to Corrected Petition for
`
`25 IPR of U.S. Patent No. 9646182 in IPR2022-01375.
`
`JLI Ex. 2052, Page 29 of 97
`
`
`
`1 Do you see that?
`
`2 A I see that.
`
`3 Q This is your declaration, right?
`
`4 A Yes, that's correct.
`
`5 Q And if you could turn to Paragraph 2, you
`
`6 say, I am a technical expert in the subject matter
`
`7 areas relevant to the topics you're opining on in
`
`8 this declaration, right?
`
`9 A Yes, that's what it says.
`
`10 Q You say you're a technical expert in the
`
`11 design and testing of RFID systems, right?
`
`12 A Yes.
`
`13 Q Okay. You don't say in the Person of
`
`14 Skill in the Art section of your expert report that
`
`15 you're a technical expert in the design and testing
`
`16 of vaporizer systems, right?
`
`17 A If you're asking in the expert report on
`
`18 Exhibit 1?
`
`19 Q In your --
`
`20 A You didn't qualify.
`
`21 Q In your expert reports in this case.
`
`22 Exhibit 1, you don't say in the entire Person of
`
`23 Skill in the Art section that you are a technical
`
`24 expert in the design and testing of vaporizer or ENDS
`
`25 systems, right?
`
`JLI Ex. 2052, Page 30 of 97
`
`
`
`1 MS. CAPPELLA: Objection. Form.
`
`2 THE WITNESS: I didn't use your
`
`3 words. I used the words that I did in my
`
`4 particular expert report that indicated
`
`5 what the person of skill in the art was
`
`6 and that, my training and experience, I
`
`7 could accurately represent.
`
`8 So yes, I'm a technical expert in
`
`9 that area for that particular period of
`
`10 time.
`
`11 BY MR. MCKEE:
`
`12 Q And with RFID systems like the ones that
`
`13 you're opining on in Exhibit 5, you also believe that
`
`14 you are more than a person of skill in the art,
`
`15 right?
`
`16 A For this particular case, yes, I'd say
`
`17 so.
`
`18 Q So if you could turn to Paragraph 19 for
`
`19 me.
`
`20 A Of?
`
`21 Q Of Exhibit 5.
`
`22 A Thank you.
`
`23 Q That's what you say. You said you were
`
`24 prepared to testify as an expert in the field and
`
`25 also as someone who had at least the knowledge of a
`
`JLI Ex. 2052, Page 31 of 97
`
`
`
`1 person with skill in the art, right?
`
`2 A Yeah.
`
`3 Q So when you wanted to say that you had
`
`4 extraordinary experience and were also a person of
`
`5 skill, you knew how to say it in Exhibit 5?
`
`6 MS. CAPPELLA: Object to the form.
`
`7 THE WITNESS: You're comparing two
`
`8 different documents. I said the same
`
`9 thing in different ways. I did not use
`
`10 the same language in both the expert
`
`11 report and the declaration.
`
`12 BY MR. MCKEE:
`
`13 Q Well, you don't say you have
`
`14 extraordinary experience in vaporizer devices, right?
`
`15 A I do not use those words.
`
`16 Q You don't say you have extraordinary
`
`17 experiences with ENDS devices, right?
`
`18 A I did not use those words, but I stated
`
`19 specifically what my training and experience was.
`
`20 Q And in fact, you don't have extraordinary
`
`21 experience. You only have experience with MEMS
`
`22 sensors; that's what you testified earlier, right?
`
`23 MS. CAPPELLA: Objection. Form.
`
`24 THE WITNESS: That's not correct.
`
`25 BY MR. MCKEE:
`
`JLI Ex. 2052, Page 32 of 97
`
`
`
`1 Q I think the testimony speaks for itself.
`
`2 Now, if you could turn to your legal
`
`3 standards in this report, Exhibit 1.
`
`4 A Okay.
`
`5 Q You can put Exhibit 5 aside.
`
`6 And turn to Paragraph 53 for me. And
`
`7 actually, we'll start at Paragraph 51.
`
`8 When you're evaluating obviousness, you
`
`9 understand that the perspective that must be applied
`
`10 is the perspective of a person having ordinary skill
`
`11 in the art to which the subject matter pertains as of
`
`12 the effective filing date of the patent claim, right?
`
`13 A Correct.
`
`14 Q Now, you also understand that you are
`
`15 offering expert opinions on behalf of the party
`
`16 challenging the validity of the '123 and '114
`
`17 patents, right?
`
`18 A Correct.
`
`19 Q And you have to prove patent invalidity
`
`20 by clear and convincing evidence, right?
`
`21 A Correct.
`
`22 Q And for obviousness, you have to show by
`
`23 clear and convincing evidence that a person of
`
`24 ordinary skill in the art would have been motivated
`
`25 to combine the teachings of prior art references to
`
`JLI Ex. 2052, Page 33 of 97
`
`
`
`1 achieve the claimed invention, right?
`
`2 A True.
`
`3 Q And also, that he would have had an
`
`4 reasonableness expectation of success in doing so?
`
`5 A Correct.
`
`6 Q You understand that apparent similarity
`
`7 between prior art references is not enough to provide
`
`8 a motivation to combine those references?
`
`9 A Not in and of itself, that's correct.
`
`10 Q And that it is not enough to support a
`
`11 determination of obviousness that a reference
`
`12 includes a broad generic disclosure and a common
`
`13 utility to that in the prior art references, right?
`
`14 MS. CAPPELLA: Objection to form.
`
`15 THE WITNESS: Also correct.
`
`16 BY MR. MCKEE:
`
`17 Q There must be a specific reason to
`
`18 combine aspects of different references?
`
`19 MS. CAPPELLA: Objection to form.
`
`20 THE WITNESS: One needs to identify
`
`21 a reason, yes.
`
`22 BY MR. MCKEE:
`
`23 Q It's wrong to use an asserted patent as a
`
`24 road map through the maze of prior art references,
`
`25 combining the right references in the right way so as
`
`JLI
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