UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD R.J. REYNOLDS VAPOR COMPANY, Petitioner FONTEM HOLDINGS 1 B.V.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD R.J. REYNOLDS VAPOR COMPANY, Petitioner v. FONTEM HOLDINGS 1 B.V., Patent Owner U.S. Patent 8,893,726 Issue Date: Aug. 10, 2010 Title: Electronic Cigarette Inter Partes Review No DECLARATION OF DR. ROBERT H. STURGES REGARDING U.S. PATENT NO. 8,893,726 R.J. Reynolds Vapor IPR R.J. Reynolds Vapor v. Fontem Exhibit

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 A. Engagement... 1 B. Background and Qualifications... 1 C. Compensation and Prior Testimony... 2 D. Information Considered... 3 II. LEGAL STANDARDS FOR PATENTABILITY... 3 III. OVERVIEW AND BACKGROUND OF THE 726 PATENT A. Overview of the 726 Patent (Ex. 1001) B. Person of Ordinary Skill in the Art IV. CLAIM CONSTRUCTION A. electronic cigarette B. atomizer C. liquid storage body including fiber material D. physical contact V. DESCRIPTION OF THE PRIOR ART THAT FORMS THE BASIS FOR UNPATENTABILITY A. U.S. Patent Nos. 5,144,962 ( Counts ) (Ex. 1007) and 4,981,522 ( Nichols ) (Ex. 1008) B. U.S. Patent No. 5,894,841 ( Voges ) (Ex. 1011) C. U.S. Patent No. 6,155,268 ( Takeuchi ) (Ex. 1012) D. U.S. Patent No. 5,129,409 ( White ) (Ex. 1013) VI. CLAIMS 15 AND 17 OF THE 726 PATENT ARE ANTICIPATED BY COUNTS A. Claim electronic cigarette a housing having an inlet and an outlet i Exhibit

3 3. an electronic circuit board and an atomizer having a heating element, within the housing a battery electrically connected to the electronic circuit board a stream passage within the housing leading from the inlet to the atomizer a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer an aerosol passage from the atomizer to the outlet B. Claim VII. CLAIMS 15 AND 17 OF THE 726 PATENT ARE OBVIOUS A. Counts B. Counts Combined with White VIII. CLAIM 16 OF THE 726 PATENT IS OBVIOUS IX. EX X. CONCLUSION ii Exhibit

4 I. INTRODUCTION A. Engagement 1. I have been retained by the law firm of Brinks Gilson & Lione on behalf of R.J. Reynolds Vapor Company to provide this Declaration concerning the technical subject matter relevant to the inter partes review petition concerning U.S. Patent No. 8,893,726 ( the 726 patent, Ex. 1001). 1 I have been asked to render an opinion regarding the validity of claims (the challenged claims ). B. Background and Qualifications 2. I am currently a Professor in the Departments of Mechanical and Industrial Systems Engineering at Virginia Polytechnic Institute ( Virginia Tech ). From 1987 to 1997, I was first an Assistant Professor and then later an Associate Professor in the Mechanical Engineering Department at Carnegie Mellon University. I have a combined Bachelor of Science and Master of Science degree in mechanical engineering from M.I.T. and a Ph.D. in mechanical engineering from Carnegie Mellon University. 3. In my past work, I have extensively studied and designed various fluid power systems, including a robotic arm and robotic end effectors. In the latter, I 1 I refer to exhibit numbers that correspond to those I understand will be submitted with the Petition for Inter Partes Review. 1 Exhibit

5 applied fluid resistors that rely on porous media to provide resistance to flow. I have also applied heat transfer fundamentals to design and build variations of commercial steam engines used in my undergraduate labs at Carnegie Mellon University and my graduate course in Sustainability at Virginia Tech. In addition, I have taught undergraduate courses focused on fundamental mechanics and the conservation of energy, including basic principles of fluid flow and heat transfer, as described in textbooks such as Mark's Standard Handbook for Mechanical Engineers and Heat, Mass and Momentum Transfer by Rohsenow & Choi. 4. Based on my background, experience, education and professional activities, I consider myself an expert in the fields of mechanical design, mechatronics, and manufacturing, including systems that employ heat, mass and fluid transfer. 5. My Curriculum Vitae, including my publications and patents, is submitted herewith in Appendix A. C. Compensation and Prior Testimony 6. I am being compensated at a rate of $400 per hour for my study and time in this matter. I am also being reimbursed for reasonable and customary expenses associated with my work and time in this investigation. My compensation is not contingent on the outcome of this matter or the specifics of my testimony. 2 Exhibit

6 7. The list submitted herewith in Appendix B identifies my past expert engagements. D. Information Considered 8. My opinions are based on my years of education, research, and experience, as well as my investigation and study of relevant materials. In forming my opinions, I have considered the 726 patent and its prosecution history and the decision in a prior proceeding involving the 726 patent (IPR ), in addition to the materials referred to herein. 9. I may rely upon these materials and/or additional materials to rebut arguments raised by the patent owner. Further, I may consider additional documents and information in forming any necessary opinions including documents that may not yet have been provided to me. 10. I reserve the right to supplement this Declaration in response to additional evidence that may come to light. II. LEGAL STANDARDS FOR PATENTABILITY 11. In expressing my opinions and considering the subject matter of the claims of the 726 patent, I am relying upon certain basic legal principles that counsel has explained to me. 12. It is my understanding that, to anticipate a claim under 35 U.S.C. 102, a prior art reference must teach every limitation of the claim. 3 Exhibit

7 13. I also have been advised that a prior art reference can disclose a claim feature because the feature is expressly described, or because the feature is inherent in the disclosure. I understand that something is inherent in a prior art reference if the descriptive matter must necessarily be present, and it would be so recognized by a person of ordinary skill in the art. I also understand that inherency cannot be established by probabilities or possibilities, and that the mere fact that something may result from a given set of circumstances is not sufficient to show inherency. 14. I also have been advised that a prior art document can disclose a claim feature, and anticipate a claimed invention, if that feature is described in another document that has been incorporated by reference. I understand that, to incorporate by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the incorporated document. I also understand that in making the determination of the extent to which material is incorporated into a host document, the standard of a person skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity. 15. It is also my understanding that a claimed invention is unpatentable under 35 U.S.C. 103 as obvious 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 person having ordinary skill in the art to which 4 Exhibit

8 the subject matter pertains. 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. I understand that a patent claim may be invalid because it was obvious in view of the prior art. The requirements to prove obviousness are contained in 35 U.S.C. 103(a), which is reproduced in pertinent part below: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented 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 person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 35 U.S.C. 103(a). 16. I understand that multiple references may, in some circumstances, be combined to render a patent claim obvious. Possible sources for a reason, suggestion, or motivation to combine references include: the nature of the problem to be solved; the teachings of the prior art; and the knowledge of persons of ordinary skill in the art. 5 Exhibit

9 17. I have further been advised that the following factors may support a conclusion of obviousness: Combining prior art elements according to known methods to yield predictable results; Simple substitution of one known element for another to obtain predictable results; Use of a known technique to improve similar devices (methods, or products) in the same way; Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; Obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; 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. 6 Exhibit

10 18. In determining whether or not a patented invention would have been obvious, I understand that the following factors should be considered: 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 art; and Any evidence of secondary considerations. 19. I understand that combining familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Further, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual applications is beyond his or her skill. 20. I understand that where the claimed invention involves more than the simple substitution of one known element for another, or the mere application of a known technique to a piece of prior art ready for the improvement, it often will be necessary to look to interrelated teachings of multiple patents; 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; all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed. Even in such a case however, the analysis need 7 Exhibit

11 not seek out precise teachings directed to the specific subject matter of the challenged claim; rather, the inferences and creative steps that a person of ordinary skill would employ can be taken into account. 21. I also understand that obviousness is proven where there existed at the time of the claimed invention a known problem for which there was an obvious solution encompassed by the patent s claims. It is not relevant whether the combination was obvious to the inventor, but rather whether it would have been obvious to the person of ordinary skill, and under the correct analysis, any need or problem known in the field, which is addressed by the claimed subject matter, can provide a reason for combining the elements in the manner claimed. 22. I understand that design incentives and other market forces can prompt the combining of different works, either in the same field or a different field and a person of ordinary skill in the art would recognize the value of improvements obtained by combining unless its actual application of the works is beyond his or her skill. Familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. 23. I understand that one of ordinary skill in the art would have been motivated to combine prior art references that disclose similar systems and improve upon them through modifications known to one of ordinary skill. 8 Exhibit

12 24. In determining obviousness, I understand that evidence of objective indicia of non-obviousness (also known as secondary considerations ) is also considered and that this is to be done before any ultimate determination of obviousness is made. I have been advised that the following factors may be considered as secondary considerations: (1) a long-felt and unmet need in the art for the invention; (2) failure of others to achieve the results of the invention; (3) commercial success of the invention; (4) copying of the invention by others in the field; (5) whether the invention was contrary to accepted wisdom of the prior art; (6) expression of disbelief or skepticism by those skilled in the art upon learning of the invention; (7) unexpected results; (8) praise of the invention by those in the field; and/or (9) commercial acquiescence (licensing). 25. I also understand that, in order for secondary considerations to be relevant to the issue of obviousness, a patentee must establish a nexus between such secondary considerations and the claimed invention. Stated one way, the nexus requirement means that the secondary consideration is sufficiently derived from merits of the claimed invention, rather than other factors. I understand that if the patentee comes forward with a showing of one or more secondary considerations and the required nexus, then the burden of coming forward with evidence in rebuttal shifts to the party challenging the patent. Additionally, a party asserting invalidity may come forward with evidence of the absence of such 9 Exhibit

13 secondary considerations or nexus. Further, it is my understanding that evidence of secondary considerations does not always overcome a strong showing of obviousness. III. OVERVIEW AND BACKGROUND OF THE 726 PATENT A. Overview of the 726 Patent (Ex. 1001) 26. The 726 patent is titled Electronic Cigarette. The 726 patent describes a device having a shell 14 with a number of air inlets 4 provided on the external wall of the shell 14. Ex at 2: In addition, a LED 1, a cell 2, an electronic circuit board 3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an atomizer 9, a liquid-supplying bottle 11 and a mouthpiece 15 are sequentially provided within the shell 14. Id. at 2: All of these components are illustrated in the following figure (Fig. 1) from the 726 patent: 10 Exhibit

14 battery electronic circuit board air inlet mouthpiece sensor atomizer bottle shell 27. As illustrated in Fig. 11, the 726 patent also describes that a solution storage porous body 28 is provided in the liquid-supplying bottle [11], and can be filled with polypropylene fiber, terylene fiber or nylon fiber. Id. at 3:11-15; Fig Exhibit

15 battery electronic circuit board air inlet mouthpiece sensor atomizer bottle shell The solution storage porous body 28 contacts a bulge 36 on the atomizer 9 so as to supply liquid nicotine solution to the atomizer. Id. at 3: The 726 patent further describes that [w]hen a smoker smokes, the mouthpiece 15 is under negative pressure. Id. at 3: As a result, [a]ir enters the normal pressure cavity 5 through the air inlet 4, passes through the air passage 18 of the sensor and then the through hole in the vapor-liquid separator 7, and flows into the atomization cavity 10 in the atomizer 9. Id. at 3: Airflow into the atomization cavity 10 drives a nicotine solution from a porous body that surrounds the atomization cavity into the atomization cavity. Id. at 3: In addition, the air pressure difference created between the normal pressure cavity 5 and the negative pressure cavity 8 causes the sensor 6 to output an actuating signal and the electronic circuit board 3 connected therewith to go into 12 Exhibit

16 operation so as to turn on the heating element 26 of the atomizer 9. Id. at 3: After the atomization, [d]roplets with small diameters float in stream and form aerosols, which are sucked out via the aerosol passage 12, gas vent 17 and mouthpiece 15. Id. at 3: Claims are the subject of my opinion. Claim 15 is an independent claim, and claims 16 and 17 depend from claim 15. I was asked to limit my analysis to these claims. Claims are reproduced below: 15. An electronic cigarette, comprising: a housing having an inlet and an outlet; an electronic circuit board and an atomizer having a heating element, within the housing; a battery electrically connected to the electronic circuit board; a stream passage within the housing leading from the inlet to the atomizer; a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer; and an aerosol passage from the atomizer to the outlet. 16. The electronic cigarette of claim 15 further including a sensor in the stream passage, with the sensor electrically linked to the electronic circuit board. 17. The electronic cigarette of claim 15 with the heating element comprising a wire coil in a cavity in the atomizer. B. Person of Ordinary Skill in the Art 30. I understand that the 726 patent must be reviewed through the eyes of a person having ordinary skill in the art (i.e., a PHOSITA ). I understand that a PHOSITA is a hypothetical person who is presumed to know the relevant prior art. 13 Exhibit

17 I am advised that that factors that guide the determination of level of ordinary skill in the art may include: the education level of those working in the field, the sophistication of the technology, the types of problems encountered in the art, the prior art solutions to those problems, and the speed at which innovations are made may help establish the level of skill in the art. 31. It is my opinion that relevant and related art for the claims of the 726 patent include electromechanical devices with the ability to atomize liquids and deliver an aerosol to a user. Further, it is my opinion that a PHOSITA for the 726 patent is a person with at least the equivalent of a Bachelor s degree in electrical engineering, mechanical engineering, or biomedical engineering or related fields, along with at least 5 years of experience designing electromechanical devices, including those involving circuits, fluid mechanics and heat transfer. I base my opinions on my review of the 726 patent, the relevant prior art, and my background in designing and developing systems that apply heat transfer and fluid mechanics. For this petition only, I have been asked to assume the invention date for the 726 patent is April 14, 2004, and thus I have applied the perspective of the PHOSITA as of that date. IV. CLAIM CONSTRUCTION 32. It is my understanding that, in an inter partes review proceeding, the terms of the challenged claims should be given their broadest reasonable 14 Exhibit

18 interpretation, as understood by a PHOSITA and consistent with the disclosure of the 726 patent. I understand that, where a patent applicant provides an explicit definition of a claim term in the specification, that definition may control the interpretation of that term in the claim. I also understand that if no explicit definition is given to a term in the patent specification, the claim terms must be evaluated using the ordinary meaning of the words being used in those claims. I also understand that the words in the claims are to be evaluated from the perspective of a PHOSITA. 33. In conducting my analysis, I have considered the terms used in claims of the 726 patent and what they mean to the PHOSITA. A. electronic cigarette 34. The preamble language, which is the language before the word comprising is an electronic cigarette. I understand that preamble language in a claim acts as a claim limitation if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. I also understand that a preamble is not considered a claim limitation where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. 35. In claims 15-17, the preamble does not recite any essential structure necessary or important for the claimed invention. Instead, the body of the claim 15 Exhibit

19 fully recites the structure. In that regard, none of the claim limitations in claims recite or rely in any way on the preamble language for an electronic cigarette. Rather, the claim fully recites the limitations that define the invention and the preamble is not necessary to understand the invention. Upon inspection, the preamble language is not found in the body of claims or any other claim depending from claim 15. Thus, it is my opinion that the preamble language for an electronic cigarette is not a claim limitation. 36. Moreover, I also understand that in the prior proceeding involving the 726 patent, the Board construed the term electronic cigarette as a device for generating liquid droplets for inhalation by a user, where the device functions as a substitute for smoking, e.g., by providing nicotine without tar. Ex at 8-9. Although in my opinion the preamble language for an electronic cigarette is not a claim limitation that requires construction, it is also my opinion that claims are invalid even under the Board s prior construction of electronic cigarette for the reasons stated herein. B. atomizer 37. I understand that the term atomizer in claim 15 was previously construed by the Board as a part of the electronic cigarette that includes components that participate in facilitating atomization. Ex at Since in my opinion the preamble language for an electronic cigarette is not a claim 16 Exhibit

20 limitation, it is my opinion that the broadest reasonable interpretation of atomizer is structure for facilitating atomization. See Ex at 2:52-3:10, 3:49-67, 4:11-24; Figs C. liquid storage body including fiber material 38. With regard to the term liquid storage body including fiber material used in claim 15, it is my opinion that this term should be construed as written and no further construction is necessary under the broadest reasonable interpretation standard. D. physical contact 39. I also understand that the term physical contact in claim 15 was previously construed by the Board as separate components in direct contact. Ex at 6-8. I have applied this construction for purposes of my analysis. V. DESCRIPTION OF THE PRIOR ART THAT FORMS THE BASIS FOR UNPATENTABILITY A. U.S. Patent Nos. 5,144,962 ( Counts ) (Ex. 1007) and 4,981,522 ( Nichols ) (Ex. 1008) 40. Counts is titled Flavor Delivery Device. The invention of Counts relates to a non-combustion flavor-generating article that uses electrical energy to power a heating element which heats a flavor-generating medium to a predetermined temperature, which is below the temperature at which burning begins. Ex at Abstract; Col. 1:57-61; Claims 11, 28, 53, 105, 106, 133, Exhibit

21 As Counts notes, smoking articles that use electrical power for heating and thereby releasing flavor from tobacco may have certain advantages over conventional smoking articles, including producing the taste and sensation of smoking without burning of tobacco. Id. at 1: According to Counts, the smoking article must reach operating temperature quickly, it must not overheat, and it must remain at the operational temperature long enough to generate/release designed flavors, vapors, and aerosols (hereinafter flavor components ). Id. at 1: Thus, Counts uses a heating element raises the temperature of a flavor-generating medium to a predetermined temperature, which is below the temperature at which burning begins. Id. at 1: In particular, Counts discloses an electrically-heated smoking article 10 that includes a flavor-generating medium 12 within a tube 20, a heating element 14 in contact with the flavor-generating medium 12, and a power source 16, all of which are surrounded by an outer wrapper 18 (see id. at 3:16-26; 6:51-55) as illustrated in the following figure (Fig. 1) from Counts: 18 Exhibit

22 flavor-generating medium power source outer wrapper heating element 43. The smoking article also includes air holes 26 which are provided in outer wrapper 18 to permit outside air to be drawn through flavor-generating medium 12. The outside air mixes with the flavor components, and the mixture is drawn through front clip 22 and filter 28 when the consumer draws on the article. Id. at 3: Counts further discloses that the heating element 14 may be a resistive wire coil disposed within an insulating tube. Id. at 4:6-12. The power source 16 supplies electrical energy to the heating element 14 for heating the flavorgenerating medium 12 to produce the flavor components, e.g., vapors and aerosols. Id. at 1:21-25; 3: In particular, Counts states that the heating element 14 contacts flavor-generating medium 12 for providing a constant, low-level heating between puffs and a high temperature pulse for each puff. Id. at 6:51-55; Fig Exhibit

23 Flavor-generating medium 12 may placed around heating element 14 or the heating element may surround the flavor-generating medium. Id. at 3: The PHOSITA would have understood from this disclosure that, as illustrated in Fig. 1, the heating element 14 and the flavor-generating medium 12 are separate components in direct contact with each other. 45. In addition, Counts discloses that the flavor-generating medium 12 may include tobacco or tobacco-derived materials and can comprise the flavor pellets shown in Application Ser. No. 07/222,831 filed on July 22, 1988 and issued as U.S. Patent No. 5,144,962 (Nichols (Ex. 1008)), which is incorporated by reference in Counts. Ex at 3:65-4:2; Claim 114; Fig According to Nichols, the flavor pellets comprise a mixture of tobacco material, an aerosol precursor, and a filler material. Ex at Abstract; 2:52-55; Claim 1. Nichols also discloses that [t]he preferred aerosol precursor material is glycerine, preferably U.S.P. grade glycerine, added in a liquid state containing substantially no water. Id. at 4:39-42; see also id. at 5:6-13. Nichols further explains that the aerosol precursor is a material that, during the mixing process, becomes widely dispersed among and absorbed by the tobacco particles. Advantageously, absorption by the tobacco and filler material minimizes migration or wicking of the aerosol precursor so that it remains widely dispersed. The aerosol precursor also serves as a lubricant to facilitate mixing of the components. Id. at 20 Exhibit

24 4: In addition, Nichols discloses that the aerosol precursor forms an aerosol when the flavor pellets are subjected to heat. Id. at 4:32-39; see also id. at 8: Moreover, Nichols teaches that the amount of glycerine stored in the flavor pellets effects the mositure content of the pellets, which may cause the pellets to be soft or sticky. Id. at 6: The PHOSITA would have understood from this disclosure that the flavor pellets disclosed by Nichols (and incorporated by reference in Counts) function as liquid storage bodies for the liquid aerosol precursor. Moreover, since Counts discloses that the heating element 14 heats the flavorgenerating medium 12 comprised of the flavor pellets of Nichols to produce vapor and aerosol (Ex. 1007, at 1:21-25; 3:26-29), the PHOSITA would have understood that the heating element 14 facilitates atomization of the aerosol precursor of the flavor pellets, e.g., it volatilizes the aerosol precursor to generate an aerosol. 47. Nichols further discloses that [t]he tobacco material may be comminuted tobacco selected from the group consisting of bright, burley, oriental, sun-cured, air-cured bright and mixtures thereof, reconstituted tobacco, comminuted stems or tobacco dust or fines. Ex at 4: As the PHOSITA would have understood, it was well known that tobacco is a fibrous material consisting of tobacco fibers. For example, Moonelis discloses use of pure fiber from tobacco stems for making tobacco paper. Ex at 1:10-25; see also id. at 1:39-43 ( the fiber from the stems after removal of all the bodies 21 Exhibit

25 which can be extracted with distilled water seems to be of practically the same quality as the fiber in other portions of the tobacco leaf ). Hind discloses preparing a tobacco product from bright tobacco stems... without deleteriously affecting the fibrous nature of the cellulose and hemi-cellulose in the tobacco being treated. Ex at 1:45-50; see also id. at 3:26-28 (tobacco product made suing a base of ground fiber which had been obtained from bright tobacco stems ). Schoenbaum discloses it was long known that reconstituted tobacco can be produced from the fibrous phase or fibrous constituents of tobacco plant components. Ex at Abstract; 1: Selke discloses producing a reconstituted tobacco product by mixing specially treated tobacco stalk fibers with tobacco fiber material extracted using conventional methods for making reconstituted tobacco. Ex at 1:25-32; 2:16-29; 3:40-4:37. Jenkins discloses a process and apparatus for producing reconstituted tobacco in which bundles of tobacco fibers are reduced to small fiber bundles which are further separated to form a fibrous material. Ex at Abstract; see also id. at 3:15-17 ( fibers are present in the form of naturally occurring bundles [in the case of tobacco] ). Keritsis discloses a reconstituted tobacco sheet made from an insoluble fibrous tobacco portion of burley tobacco stems. Ex at 3:49-60; 10:44-11:1. Thus, the PHOSITA would have understood that the tobacco containing flavor pellets disclosed by Nichols (and incorporated by reference in Counts) would necessarily, 22 Exhibit

26 and inherently, include a fiber material. Further, since these flavor pellets function as a liquid storage body, the PHOSITA would have also understood that the tobacco containing flavor pellets comprise a liquid storage body including fiber material. Finally, because the heating element 14 of Counts facilitates atomization and is separate from and directly contacts the flavor-generating medium 12, the PHOSITA would have understood that an atomizer (i.e., the heating element 14) is separate from and in direct contact with the liquid storage body (i.e., the flavor-generating medium 12 comprising the tobacco containing flavor pellets). 48. Reading Counts further, one finds that the smoking article of Counts may include active control systems to regulate operation and consistently heat the flavor-generating medium 12 using the heating element 14. Ex at 4:31-38; 4:42-46; 6: One type of active control system disclosed by Counts uses a control circuit 46, which is illustrated in the following figure (Fig. 1) from Counts: control circuit flavor-generating medium heating element power source 23 Exhibit

27 49. The control circuit 46 regulates power delivered to the heating element 14 from the power source 16 for controlling the temperature of flavorgenerating medium 12. Id. at 6: In particular, the [c]ontrol circuit 46 has two operating modes for efficient power use: a low power mode for maintaining flavor-generating medium 12 at a predetermined low-level temperature (below the vaporization temperature) between puffs, and a high power mode for rapidly raising heating element 14 to its preferred, higher operating temperature. Circuit 46 typically provides a fixed lock-out time between high power operations to prevent inadvertent over-heating of flavor-generating medium 12 by frequent high power operation. Id. at 6:61-7:4. As a result, the heating element 14 can provide both constant, low-level heating between puffs, and a high temperature pulse for each puff. Id. at 6: Counts discloses that the control circuit 46 includes various integrated circuits, including voltage regulators 56 and 58, timers 64 and 66, and RC networks with resistors and capacitors. Id. at 7:5-7:15; 7:33-8:53; Fig. 8. The various components of the control circuit 46 are illustrated in the following figure (Fig. 8) from Counts: 24 Exhibit

28 51. Counts also discloses that the control circuit 46 is connected to the power source 16 by a double-pole, double-throw switch 48. Id. at 7:5-15. In order to enter the high power mode for delivering the high temperature pulse to the heating element 14 for each puff, the user actuates a switch 50. Id. at 7:16-30 ( To operate smoking article 44, the consumer sets power switch 48 to the on position. Article 44 operates initially in the high power mode. Flavor-generating medium 12 is quickly heated to its preferred, higher temperature, enabling the consumer to puff article 44. When the time interval for the high power mode elapses, control circuit 46 enters the low power mode to maintain flavor-generating medium 12 at a reduced temperature. The consumer is prevented from initiating the high power 25 Exhibit

29 mode for a predetermined lock-out period, to prevent overheating the smoking article. When the lock-out period has elapsed, the consumer may re-enter the high power mode by actuating a switch 50. The cycle is repeated each time switch 50 is actuated. ). 52. In addition, Counts teaches an alternative embodiment of the smoking article that includes a power source 16 having a capacitor 94 and a battery 96 for charging the capacitor. Id. at 10:5-18. Capacitor 94 delivers a predetermined amount of energy to heating element 14 to provide a controlled delivery for a single puff. Id. at 10: In particular, Counts discloses that a control circuit 98 connects capacitor 94, battery 96, and heating element 14 through a control switch 100. Id. at 10: When switch 100 is initially actuated, the battery is connected to the capacitor 94 to charge the capacitor and to the heating element 14 so as to raise the temperature of flavor-generating medium 12 to a standby, low temperature. Id. at 10: In order to puff the smoking article of the alternative embodiment, the consumer may operate the switch 100 to disconnect the battery so that the capacitor 94 can discharge through the heating element 14 and provide the controlled delivery of power for a single puff. Id. at 11:1-6. Further, Counts discloses that [t]he switching operation may be initiated automatically during 26 Exhibit

30 puffing by a pressure or flow sensor that senses the beginning of a puff. Id. at 11:1-5 B. U.S. Patent No. 5,894,841 ( Voges ) (Ex. 1011) 54. Voges is titled Dispenser. Voges discloses a hand held dispenser (cigarette substitute), which is particularly suitable to self-administer physiologically active substances, primarily with reference to nicotine delivery, by inhalation. Ex at 1:4-8 and 3:7-15. The dispenser is illustrated in the following figure (Fig. 2) from Voges: inlet airstream sensor atomizer 55. In particular, Voges discloses a cigarette-shaped hollow tubular body 1 comprising connected body parts 2 and 3, a hollow cylindrical battery 17, a liquid nicotine supply 10 and an atomizer (which includes at least droplet ejection device 14 with droplet ejection orifices 15). Id. at 5:48-6:2. When a person inhales, a stream of air A is drawn into the tubular body vial slots 7 in the body s sidewall. Id. at 6: Exhibit

31 56. Voges also discloses a pressure sensor 19 that detects a change in pressure at mouthpiece 5 due to inhalation for controlling ejection of nicotine droplets from the droplet ejection device 14. Id. at 5:58-65, 6:8-19; Fig. 2. In particular, when the user inhales on the electronic cigarette, the pressure sensor 19 detects a drop in pressure and issues an actuation signal to a control means 16, e.g., a microelectronic circuit, which then responds by issuing a dose signal to the droplet ejection device 14 to control the amount of nicotine-containing liquid ejected. Id. at 5:61-64; 6:52-7:3. As shown in Fig. 2, the pressure sensor 19 is located in the stream of air A leading from the air inlet slots 7 to the droplet ejection device 14. Id. at Fig.2. The nicotine droplets are vaporized and entrained in the inhalation airflow running from the slots 7 towards the outlet, mouthpiece 5. Id. at 6: C. U.S. Patent No. 6,155,268 ( Takeuchi ) (Ex. 1012) 57. Takeuchi is titled Flavor-Generating Device. Takeuchi discloses a flavor generating device for enjoying simulated smoking that operates by heating a liquid flavor source containing tobacco components without relying on combustion. Ex at 1:3-8; 5: The flavor generating device of Takeuchi includes a chamber having an air inlet port and an inhalation port, a gas passageway defined between the air inlet port and the inhalation port, a liquid container, at least one liquid passageway having a first end portion which is in a 28 Exhibit

32 fluid communication with the liquid and a second end portion which is in a fluid communication with the gas passageway, and a heater mounted at the second end portion of the liquid passageway. Id. at 2: More specifically, Takeuchi discloses a flavor generating device 10 which is illustrated in the following figure (Fig. 1) from Takeuchi: airstream sensor inlet atomizer 59. The flavor generating device 10 includes a casing 12 partioned into an upper chamber 121 and a lower chamber 122. Id. at 4: The upper chamber 121 is used as a gas passageway 20 for forming a gaseous stream of a flavor which is to be inhaled by a user. Id. at 4: In particular, the upper chamber Exhibit

33 includes an air inlet port 18 for introducing the air into the upper chamber and an inhalation port 22 through which a user inhales a flavor. Id. at 4:39-43; 4: A capillary tube 36 transports a flavored liquid substance by capillary force from a liquid container 32 to the gas passageway 20 between the air inlet port 18 and the inhalation port 22. Id. at 2:1-13; 4:50-52; 5:28-52; 6:4-7. A heater 42 is mounted at an upper end portion of a capillary tube 36, which is in a fluid communication with the gas passageway 20, for heating and gasifying or evaporating the liquid transported from a liquid container 32. Id. at 2:13-16; 6:4-12; 7:57-8: Takeuchi further discloses a sensor 52 for detecting the inhaling action of the user. Id. at 6: The sensor 52 may be a general pressure sensor for detecting a change in the pressure within the chamber 121 as a change in electrical resistance, as a change in electrical capacitance or as a piezoelectric electromotive force, or a rocking vane type sensor for detecting a gas stream within the chamber 121. Id. at 6: In operation, a control circuit 46 can start up the heater 42 in accordance with the inhaling action of the user based on the signal from the sensor 52 so as to gasify the liquid flavor source 34 at the outlet portion 36b of the capillary tube 36. Id. at 6: According to Takeuchi, the sensor 52 is arranged within the upper chamber 121 of the casing 12, and is positioned between the squeeze plate 24 and the heater 42. Id. at 6:46-49; Fig. 1. The squeeze plate 24 is positioned close to 30 Exhibit

34 the air intake port 18 within the gas passageway 20. Id. at 4: The PHOSITA would have understood from this disclosure that, as shown in Fig. 1, the sensor 52 is in the stream passage leading from the inlet to the atomizer (i.e., the portion of the gas passageway 20 leading from the air inlet port 18 to the heater 42). D. U.S. Patent No. 5,129,409 ( White ) (Ex. 1013) 62. White is titled Extruded Cigarette. White discloses an extruded cigarette capable of providing the user with the pleasures of smoking (e.g. smoke taste, feel, aroma, satisfaction, and the like) by heating without burning tobacco. Ex at 2: The extruded cigarette of White includes a fuel element 10, a physically separate aerosol generating means which comprises a substrate 16 bearing an aerosol forming means, a barrier member 14, and a mouthend piece 18 (id. at 4:45-50), which are illustrated in the following figure (Fig. 1) from White: mouthpiece substrate fuel element 31 Exhibit

35 64. White discloses that the substrate 16 may be in solid form or in particulate form, but is preferably in powdered form, for ease of extrusion. The substrate may be selected from materials such as graphite fibers, glass fibers, alumina pellets, aluminum mesh wire, porous adsorbents or absorbents such as carbon, silica, clays, and the like. The substrate is preferably heat stable as used in the smoking article. Id. at 6: White further discloses that the aerosol forming means may comprise tobacco or a tobacco material to provide tobacco flavor. Id. at 4: Also, the aerosol generating means may include a volatile aerosol forming material, such as propylene glycol, that permeates or coats the substrate material. Id. at 5:67-6:2; 6:48-50; 6:64-7:10; 7: According to White, [d]uring smoking, heat from the burning fuel element is rapidly transferred to the aerosol generating means in the cigarettes of this invention and this heat causes the volatilization of the aerosol forming material contained therein, which in turn is produces to the user a smoke-like aerosol through the mouth end of the article. Id. at 3: VI. CLAIMS 15 AND 17 OF THE 726 PATENT ARE ANTICIPATED BY COUNTS by Counts. 67. It is my opinion that each of claims 15 and 17 are expressly disclosed 32 Exhibit

36 A. Claim Counts discloses a smoking article that teaches the preamble and all of the limitations of claim electronic cigarette 69. Even if the preamble electronic cigarette is considered a claim limitation, Counts meets this claim element. Specifically, the device of Counts is a non-combustion flavor-generating article that employs an electric heating element powered by electrical energy to heat and thereby release flavor from tobacco. Ex at Abstract; 1: One of the stated advantages of such electrically heated smoking articles is producing the taste and sensation of smoking without burning of tobacco. Id. at 1:9-12. Thus, the device of Counts functions as substitute for smoking. 70. More specifically, Counts discloses an electrically-heated smoking article 10 that includes a flavor-generating medium 12 within a tube 20, a heating element 14 in contact with the flavor-generating medium 12, and a power source 16, all of which are surrounded by an outer wrapper 18. Id. at 3:16-26; 6: The flavor-generating medium 12 may be a packed bed of tobacco containing flavor pellets as described in Nichols (which is incorporated by reference in Counts). Ex at 3:65-4:2; Claim 114; Fig. 1. The flavor pellets of Nichols comprise a mixture of tobacco material, an aerosol precursor that forms an aerosol 33 Exhibit

37 when the flavor pellets are subjected to heat, and a filler material. Ex at Abstract; 2:52-55; 4:32-39; 8:18-19; Claim 1. The power source 16 supplies electrical energy to the heating element 14 for heating the flavor-generating medium 12 to produce the flavor components, e.g., vapors and aerosols. Ex at 1:21-25; 3: As such, the device of Counts generates liquid droplets for inhalation by a user, e.g., the volatilized aerosol precursor. 71. Thus, while not a limitation of claim 15, a PHOSITA would have understood that Counts discloses an electronic cigarette or a device for generating liquid droplets for inhalation by a user, where the device functions as a substitute for smoking. 2. a housing having an inlet and an outlet 72. The smoking article 10 of Counts includes an outer wrapper 18 that forms a housing of the smoking article. Ex at 3:16-29; Figs. 1 and 7. This housing has air holes 26 to permit outside air to be drawn in and an air outlet at the filter 28. Id. at 3: Thus, the first limitation of claim 15, a housing having an inlet and an outlet, is disclosed in Counts. 3. an electronic circuit board and an atomizer having a heating element, within the housing 73. According to one aspect of the invention, the smoking article 10 of Counts includes an electronic control circuit 46. Ex at 6:56-7:15; 7:33-8:53; Figs. 7 and 8. The control circuit 46 may include various integrated circuits, 34 Exhibit

38 including voltage regulators 56 and 58, timers 64 and 66, RC networks with several resistors and capacitors. Id. at 7:5-15; 7:33-8:53; Fig. 8. The PHOSITA would have understood that a control circuit, such as control circuit 46, containing integrated circuits is necessarily implemented on an electronic circuit board, there being no other way to lay out the integrated circuits and connect them to the other components of the control circuit. Indeed, methods for attaching integrated circuits to electronic circuit boards were well known. See, e.g., Ex.1020, Ghosh (a method of attaching a microchip to a circuit board); Ex.1021, Nate (a method for mounting parts on circuit boards). Moreover, established treatises on the packaging of electronic devices and systems taught printed circuit boards (PCB) exclusively for receiving bonded chips and passive components. See, e.g., Ex at 3-5, Thus, the PHOSITA would have understood from the disclosure of Counts that control circuit 46 necessarily, and inherently, includes an electronic circuit board. 74. Further, the heating element 14 of Counts, which may include a resistive wire coil disposed within an insulating tube, can provide both a constant, low-level heating between puffs, and a high temperature pulse for each puff. Ex at 4:6-12; 6:51-55; Fig. 1. Specifically, as I explained above in the description of Counts and Nichols (Section V.A), the heating element 14 facilitates atomization by heating the flavor-generating medium 12 to produce vapors and 35 Exhibit

39 aerosols from the aerosol precursor found in the flavor pellets which form the flavor-generating medium 12. Id. at 1:21-25; 3:26-29; Ex at Abstract; 2:52-55; 4:32-39; 8: As such, the heating element 14 is an atomizer having a heating element. 75. In addition, both the control circuit 46 and the heating element 14, including the resistive wire coil, are located within the outer wrapper 18 that forms the housing. Ex at 3:16-29; Figs. 1 and 7. Thus, the second limitation of claim 15, an electronic circuit board and an atomizer having a heating element, within the housing is disclosed in Counts. 4. a battery electrically connected to the electronic circuit board 76. The power source 16 of Counts comprises a battery that is electrically connected to the control circuit 46 (i.e., the electronic circuit board) by the switch 48. Ex at 3:16-29; 7:5-15; 9:52-65; Figs. 1 and 7. Thus the third limitation of claim 15, a battery electrically connected to the electronic circuit board, is disclosed in Counts. 5. a stream passage within the housing leading from the inlet to the atomizer 77. In the smoking article 10 of Counts, outside air that is drawn through the air holes 26 provided in outer wrapper 18 passes through flavor-generating medium 12 that surrounds the heating element 14. Ex at 3:20-26; 3:29-34; 36 Exhibit

40 Figs. 1 and 7. The following figure (Fig. 1) of Counts illustrates a stream passage (shown in red) for the stream of drawn outside air between the air holes 26 and the the heating element 14: air holes heating element stream passage 78. This stream passage of Counts is within the housing formed by outer wrapper 18, and it leads from the inlet (i.e., air holes 26) to the atomizer (i.e., the heating element 14). Id. at 3:20-26; 3:29-34; Figs. 1 and 7. Thus the fourth limitation of claim 15, a stream passage within the housing leading from the inlet to the atomizer is disclosed in Counts. 6. a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer 79. The flavor-generating medium 12 of Counts may consist of the flavor pellets disclosed in Nichols, which is incorporated by reference in Counts. Ex. 37 Exhibit

41 1007 at 3:65-4:2. As I explained above in the description of Counts and Nichols (Section V.A), a PHOSITA would have understood that the tobacco containing flavor pellets of Nichols are a liquid storage body for storing a liquid aerosol precursor and are separate from and in direct contact with the heating element 14 that forms an atomizer for heating and volatilizing the aerosol precursor. Ex at 3:53-55; 3:65-4:2; 4:5-13; 6:51-55; Figs. 1 and 7; Ex at 2:52-54; 4:11-18; 4:32-43; 5:6-13; 8: Furthermore, the PHOSITA would have understood that the tobacco containing flavor pellets of Nichols (i.e., the liquid storage body) would necessarily, and inherently, include a fiber material since tobacco is a fibrous material consisting of tobacco fibers. 80. Moreover, as Figure 1 of Counts illustrates, the flavor-generating medium 12 comprising the flavor pellets of Nichols is located within the outer wrapper 18 that forms the housing. Counts also teaches that the outer wrapper 18 may have a cylindrical shape. Id. at Figs. 1 and 7. As a result, Counts teaches that the flavor-generating medium 12 consisting of the flavor pellets of Nichols (i.e., the liquid storage body including fiber material) may be located in a cylindrical section of the housing. Thus, the fifth limitation of claim 15, a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer;" is disclosed in Counts. 38 Exhibit

42 7. an aerosol passage from the atomizer to the outlet 81. In the smoking article 10 of Counts, outside air drawn through the air holes 26 passes through flavor-generating medium 12 that surrounds the heating element 14. Ex at 3:20-26; 3:29-34; Figs. 1 and 7. The outside air mixes with the volatilized aerosol precursor and forms an aerosol that is drawn through front clip 22 and filter 28 when the consumer draws on the article. Id. 82. The following figure (Fig. 1) of Counts illustrates an aerosol stream passage (shown in red) for the aerosol drawn from the atomizer (i.e., heating element 14) to the outlet at filter 28: flavor-generating medium power source outer wrapper heating element Thus, the sixth limitation of claim 15, an aerosol passage from the atomizer to the outlet, is disclosed in Counts. 39 Exhibit

43 83. With each and every limitation of claim 15 disclosed in Counts, it is my opinion that that Counts anticipates claim 15 of the 726 patent. B. Claim The heating element 14 of Counts (i.e., the atomizer) may be a resistive wire coil disposed within an insulating tube. Ex at 4:6-12; Fig. 1. The resistive wire coil forms the heating element of the atomizer and the insulating tube forms a cavity in the atomizer. Thus the limitation of claim 17, the heating element comprising a wire coil in a cavity in the atomizer, is disclosed in Counts. 85. With each and every limitation of dependent claim 17 and independent claim 15 disclosed in Counts, it is my opinion that that Counts anticipates claim 17 of the 726 patent. 86. The claim chart below shows where each limitation of claims 15 and 17 is found in Counts. 15. An electronic cigarette comprising: Claim 15 Not a claim limitation. However, Counts nonetheless discloses an electronic cigarette. Methods and apparatus for releasing flavor components from a flavor-generating medium using an electric heating element are provided. A non-combustion flavor-generating article uses electrical energy to power a heating element which heats tobacco or other flavorants. The flavor-generating medium is formed into a packed bed. Energy delivered to the heating 40 Exhibit

44 element is regulated to maintain the flavor-generating medium at a relatively constant operating temperature to ensure a relatively constant release of flavor. Ex at Abstract. This invention relates to electrically-heated flavor-delivery articles, and to methods and apparatus for electrically heating a flavor source in order to derive flavor therefrom. Smoking articles utilizing electrical power for heating and thereby releasing flavor from tobacco and other compounds may have certain advantages over conventional smoking articles. For example, electrically-heated smoking articles produce the taste and sensation of smoking without burning of tobacco. Also, electrically-heated articles do not produce a visible aerosol between puffs. However, there have been various technical problems with electrically-heated articles. It is desirable to maintain the smoking article at a substantially consistent temperature during operation to produce a relatively consistent release of flavor from puff to puff. The smoking article must reach operating temperature quickly, it must not overheat, and it must remain at the operational temperature long enough to generate/release designed flavors, vapors, and aerosols (hereinafter "flavor components"). The article should also be efficient in terms of its power consumption. Ex at 1:5-26. Referring now to the drawings, FIG. 1 shows an article, designated generally by reference numeral 10, which typically includes flavor-generating medium 12, a heating element 14, and a power source 16, which are surrounded by an outer tube or overwrapper 18. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an inner, thermally-insulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Electrical energy from power source 16 is applied to the terminals of heating element 14, which heats the flavor-generating medium to produce flavor components. Ex at 3: Exhibit

45 a housing having an inlet and an outlet; Flavor-generating medium 12 may include tobacco or tobaccoderived materials. Ex at 4:1-2. Ex at Fig. 1. Ex at Fig. 7. Referring now to the drawings, FIG. 1 shows an article, designated generally by reference numeral 10, which typically includes flavor-generating medium 12, a heating element 14, and a power source 16, which are surrounded by an outer tube or overwrapper 18. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an inner, thermally-insulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Electrical energy from power source 16 is applied to the terminals of heating element 14, which heats the flavor-generating medium to produce flavor components. 42 Exhibit

46 Ex at 3: an electronic circuit board and an atomizer having a heating element, within the housing; Air holes 26 are provided in outer wrapper 18 to permit outside air to be drawn through flavor-generating medium 12. The outside air mixes with the flavor components, and the mixture is drawn through front clip 22 and filter 28 when the consumer draws on the article. Ex at 3: Ex at Fig. 1. Ex at Fig Exhibit

47 Ex at Fig. 8; 2:57-58 ( FIG. 8 is an illustrative embodiment of the active control circuit of the article of FIG. 7 ). It is desirable to maintain the smoking article at a substantially consistent temperature during operation to produce a relatively consistent release of flavor from puff to puff. The smoking article must reach operating temperature quickly, it must not overheat, and it must remain at the operational temperature long enough to generate/release designed flavors, vapors, and aerosols (hereinafter "flavor components"). The article should also be efficient in terms of its power consumption. Ex at 1: Referring now to the drawings, FIG. 1 shows an article, designated generally by reference numeral 10, which typically includes flavor-generating medium 12, a heating element 14, and a power source 16, which are surrounded by an outer tube or overwrapper 18. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an 44 Exhibit

48 inner, thermally-insulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Electrical energy from power source 16 is applied to the terminals of heating element 14, which heats the flavor-generating medium to produce flavor components. Ex at 3: In a preferred embodiment, heating element 14 is a resistive wire coil (such as tungsten, tantalum, or an alloy of nickel, chromium, and iron (such as that sold by Driver-Harris Company, Harison, N.J., under the trademark NICHROME ) disposed within an insulating tube which typically may be paper, foil, carbon, plastic, or glass. Ex at 4:6-12. A more preferred embodiment of article 10 includes only a single heating element which contacts flavor-generating medium 12. The heating element provides both the constant, low-level heating between puffs, and the high temperature pulse for each puff. Ex at 6: A second type of active control system, shown in the smoking article 44 of FIG. 7, is an electronic control circuit 46 which regulates power delivered to a single heating element 14. Circuit 46 provides a predictable method for applying voltage and current to heating element 14, and thus for controlling the temperature of flavor-generating medium 12. Control circuit 46 has two operating modes for efficient power use: a "low power" mode for maintaining flavor-generating medium 12 at a predetermined low-level temperature (below the vaporization temperature) between puffs, and a "high power" mode for rapidly raising heating element 14 to its preferred, higher operating temperature. Circuit 46 typically provides a fixed lock-out time between high power operations to prevent inadvertent over-heating of flavor-generating medium 12 by frequent high power operation. Ex at 6:56-7:4. Circuit 46 is connected to power source 16 by a double-pole, double-throw switch 48, which is shown in the "off" position in the drawing. When switch 48 is placed in the "on" position, the positive terminals of power source 16 is connected to the input 45 Exhibit

49 terminals (pin 1) of voltage regulators 56 and 58. Regulators 56 and 58 are standard, commercially available integrated circuits (such as Models 7508 and LM317T, available from Radio Shack, Division of Tandy Corporation, Fort Worth, Tex.). The negative terminal of power source 16 forms a ground reference for the circuit. Ex at 7:5-15. Circuit 46 includes two timing circuits 60 and 62, which are based on standard (low power) integrated circuit (IC) timers 64 and 66 (such as Model TLC555, also commercially available from Radio Shack). Timing circuits 60 and 62 control the low power and high power modes of operation, respectively. Voltage regulator 56, with pin 3 connected to ground, regulates the voltage to the resistor-capacitor (RC) network that determines the duration of the high power lock-out period. Ex at 7: Resistor 68 connects the output and voltage adjust pins (pins 2 and 3, respectively) of voltage regulator 58, causing regulator 58 to function as a current limiter when circuit 46 operates in the low power mode. The output of regulator 58 is bypassed during the high power mode. The regulated output voltage (pin 2) of voltage regulator 56 is connected to the positive power terminal (pin 8) of timer 64 and to an RC network. The negative power terminal (pin 1) of timer 654 is grounded. The RC network includes a variable resistor 70, a fixed resistor 72, and a capacitor 74. The output of timer 64 (pin 3) is controlled by the RC network and is triggered by a negative pulse on pin 2, which in turn, is caused by grounding pin 2 through switch 50. The charging time is determined by the values of resistors 70 and 72, and capacitor 74, which are selected to obtain a charging time which typically may be in the range of about five to about thirty seconds, and preferably between ten and twenty seconds, and most preferably fifteen seconds. Switch 50 is connected to the RC network between resistor 72 and capacitor 74 on one side, and is grounded on the other. Switch 50 discharges capacitor 74 when actuated, resetting the 46 Exhibit

50 charging time of circuit 60 to zero, and generating an output at pin 3 of timer 64. When the voltage on capacitor 74 exceeds two-thirds of the supply voltage, the high power lock-out period elapses, and the consumer may again cause the circuit to enter the high power mode (to generate flavor components). Pin 2 (regulated output voltage) of regulator 56 connects to timing circuit 62 through the normally-open contacts of relay 76., When the output from pin 3 of timer 64 is high, the coil of relay 76 is energized, and the relay contact is closed. Power is then supplied to timing circuit 62. Timing circuit 62 includes timer 66 and a second RC network which includes variable resistor 78, fixed resistor 80, and capacitor 82. The charging time of the second RC network is determined by the values of resistors 78 and 80, and capacitor 82, which are selected to obtain a charging time which typically may be in the range of about 0.2 to about 4.0 seconds, preferably between 0.5 and 2.0 seconds, and most preferably between 1.2 and 1.6 seconds. This charging time controls the duration of the high power mode. The output of timer 66 (pin 3) is controlled by the second RC network, and becomes high when the voltage at pin 2 of timer 66 drops below one-third of the supply voltage. Pin 7 of timer 64 provides a discharge path for capacitor 82, to trigger the output at pin 3 of timer 66 and to reset timing circuit 62. Variable resistors 70 and 78 permit adjustment of the charging time for timing circuits 60 and 62, respectively. In an alternative embodiment, resistors 70 and 72 and resistors 78 and 80 are replaced with a respective one of a single, fixed resistor. If the desired charging times are known and fixed, it is advantageous to use a single, fixed resistor for each pair, to reduce the size and complexity of circuit 46. The output of timer 66 (pin 3) is connected to the coil of relay 86, and therefore controls the voltage across the coil of relay 88. Relay 88 controls whether heating element 14 is heating in the low power or high power mode, by controlling the voltage across output terminals 90. Relay 88 switches either the regulated current output of voltage regulator 58 (low power mode) or the positive voltage of power source 16 (high power 47 Exhibit

51 mode) to output terminal 90. The contact of relay 88 is normally switched to terminal a, which is connected to the regulated current output (pin 2) of regulator 58. Terminal b of relay 88 is connected to the positive terminal of power source 16, through power switch 48. When relay 86 is energized, current flows from power source 16 and through relay 86, energizing the coil of relay 88. The contact of relay 88 then switches to terminal b. LED 54 connects the common contact of relay 88 with series resistor 92 (the resistor's second terminal is grounded). Resistor 92 is selected such that LED 54 is illuminated only during the high power mode. Ex at 7:43-8:53. a battery electrically connected to the electronic circuit board; Ex at Fig. 1. Ex at Fig. 7. Circuit 46 is connected to power source 16 by a double-pole, 48 Exhibit

52 double-throw switch 48, which is shown in the "off" position in the drawing. When switch 48 is placed in the "on" position, the positive terminals of power source 16 is connected to the input terminals (pin 1) of voltage regulators 56 and 58. Regulators 56 and 58 are standard, commercially available integrated circuits (such as Models 7508 and LM317T, available from Radio Shack, Division of Tandy Corporation, Fort Worth, Tex.). The negative terminal of power source 16 forms a ground reference for the circuit. Ex at 7:5-15. Power can be supplied to the articles of this invention in a variety of ways. Broadly classified, power source 16 may be an internal or an external source. Internal power sources are disposed within the article (see FIG. 1), creating a selfcontained system. External sources are disposed exterior to the article, and typically are connected to the article (FIG. 2) via connecting pins 30. Ex at 9: a stream passage within the housing leading from the inlet to the atomizer; Internal power sources 16 typically are rechargeable nickel cadmium (NiCd) batteries, because NiCd batteries discharge power relatively consistently throughout the discharge cycle. However, power source 16 may be any rechargeable or disposable battery, such as a rechargeable lithium manganese dioxide battery or a disposable alkaline battery. Ex at 9: Exhibit

53 Ex at Fig. 1. Ex at Fig. 7. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an inner, thermallyinsulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Ex at 3: a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer; and Air holes 26 are provided in outer wrapper 18 to permit outside air to be drawn through flavor-generating medium 12. The outside air mixes with the flavor components, and the mixture is drawn through front clip 22 and filter 28 when the consumer draws on the article. Ex at 3: Ex at Fig Exhibit

54 Ex at Fig. 7. Referring now to the drawings, FIG. 1 shows an article, designated generally by reference numeral 10, which typically includes flavor-generating medium 12, a heating element 14, and a power source 16, which are surrounded by an outer tube or overwrapper 18. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an inner, thermally-insulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Electrical energy from power source 16 is applied to the terminals of heating element 14, which heats the flavor-generating medium to produce flavor components. Ex at 3: Flavor-generating medium 12 typically is placed around heating element 14. Alternatively, the heating element may surround the flavor-generating medium. Ex : Flavor-generating medium 12 may be similar to the flavor pellets shown in commonly assigned U.S. patent application Ser. No. 07/222,831, filed Jul. 22, 1988, hereby incorporated by reference in its entirety. Flavor-generating medium 12 may include tobacco or tobacco-derived materials. Ex at 3:65-4:2. A more preferred embodiment of article 10 includes only a single heating element which contacts flavor-generating medium 12. The heating element provides both the constant, low-level heating between puffs, and the high temperature pulse 51 Exhibit

55 for each puff. Ex at 6: Relevant disclosure from Nichols that is incorporated by reference: The pellets preferably comprise a mixture of about 15 to 95% tobacco material, 5 to 35% aerosol precursor, and 0 to 50% filler material. Ex at 2: The pellets of this invention comprise a thermally releasable flavorant material produced by an extrusion process that provides for the homogeneous mixture of the components and a substantially uniformly sized end product. Thus, high speed mass production apparatus and techniques can be used to make and process the pellets and form thermally releasable flavor generators for smoking articles. Ex at 4: The aerosol precursor forms an aerosol upon being subjected to heat. It is a material that, during the mixing process, becomes widely dispersed among and absorbed by the tobacco particles. Advantageously, absorption by the tobacco and filler material minimizes migration or wicking of the aerosol precursor so that it remains widely dispersed. The aerosol precursor also serves as a lubricant to facilitate mixing of the components. The preferred aerosol precursor material is glycerine, preferably U.S.P. grade glycerine, added in a liquid state containing substantially no water. Ex at 4: When glycerine is used as the aerosol precursor, the proportion of glycerine in the pellets effects the equilibrated OV content of the pellets because of the known propensity for glycerine to absorb water. Thus, at higher glycerine levels, e.g., at about 30 wt. % glycerine, the equilibrated OV level may be at about 18% and that might cause the pellets to be soft or sticky after they have equilibrated. In such case, the residence time of the pellets in the ambient atmosphere may be controlled so that the still hard pellets can be packaged and stored in, for example, sealed containers, prior to equilibration or significant water absorption. At lower glycerine levels, e.g., 5 wt. %, the equilibrated OV content will be at about 12%, which is sufficiently dry to permit 52 Exhibit

56 longer residence times and may permit storage in non-airtight containers in all but the more humid of environments. Ex at 6: Conventional product feed apparatus may be provided for controlling the rate at which the liquid or finely divided ingredients of the pellets are added to obtain the desired proportions. For example, metering pump 350 may be used for metering the flow of a liquid aerosol precursor from supply reservoir 341 into the extruder barrel at port 342 at a rate of about 20 lbs per hour. Ex at 5:6-13. an aerosol passage from the atomizer to the outlet. When the pellets are subjected to heat, the aerosol precursor will form an aerosol.... Ex at 8: Ex at Fig. 1. Ex at Fig. 7. Air holes 26 are provided in outer wrapper 18 to permit 53 Exhibit

57 17. The electronic cigarette of claim 15 with the heating element comprising a wire coil in a cavity in the atomizer. outside air to be drawn through flavor-generating medium 12. The outside air mixes with the flavor components, and the mixture is drawn through front clip 22 and filter 28 when the consumer draws on the article. Ex at 3: Claim 16 Ex at Fig. 1. In a preferred embodiment, heating element 14 is a resistive wire coil (such as tungsten, tantalum, or an alloy of nickel, chromium, and iron (such as that sold by Driver-Harris Company, Harison, N.J., under the trademark NICHROME ) disposed within an insulating tube which typically may be paper, foil, carbon, plastic, or glass. Ex at 4:6-12. VII. CLAIMS 15 AND 17 OF THE 726 PATENT ARE OBVIOUS A. Counts 87. It is my opinion that each of claims 15 and 17 is obvious based on Counts alone. As discussed above, Counts inherently discloses an electronic circuit board as part of her control circuit 46. However, even if Counts were 54 Exhibit

58 silent about an electronic circuit board, it would have nonetheless been obvious to place Counts control circuit on an electronic circuit board. 88. I understand that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results to the PHOSITA. Counts discloses that her control circuit 46 includes integrated circuits, including voltage regulators 56 and 58 and timers 64 and 66, and RC networks. Circuit boards for implementing various electronic circuits having integrated circuits were conventional components of small electronic devices decades prior to See, e.g., Ex.1020, Ghosh (a method of attaching a microchip to a circuit board); Ex.1021, Nate (a method for mounting parts on circuit boards). Therefore, and it would have been obvious to place the control circuit 46 of Counts on a circuit board to achieve the predictable result of supporting and electrically connecting components of the control circuit All of the other limitations of claims 15 and 17 are disclosed in Counts for the reasons discussed above (Section VI.). With each and every limitation of claims 15 and 17 disclosed in a modified Counts alone, it is my opinion that that claims 15 and 17 of the 726 patent would have been obvious. B. Counts Combined with White 90. It is my opinion that each of claims 15 and 17 is obvious based on Counts in combination with White. As discussed above, Nichols (which is 55 Exhibit

59 incorporated by reference in Counts) teaches flavor pellets that comprise a mixture of tobacco material, an aerosol precursor, and a filler material. Ex at Abstract; 2:52-55; 4:39-42; 5:6-13; Claim 1. The PHOSITA would have understood that tobacco is a fibrous material consisting of tobacco fibers, and thus Nichols tobacco containing flavor pellets would necessarily, and inherently, include a fiber material. However, even if Counts (including Nichols) were silent about the use of fibers in the flavor pellets, it would have nonetheless been obvious to include a fiber material in the flavor pellets as taught by White. 91. As noted above, I understand that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results to the PHOSITA. I also understand that a claimed invention may be obvious if the simple substitution of one known element for another yields predictable results to the PHOSITA. 92. Nichols discloses that the filler material aids in controlling the dessication and pyrolization of the pellets by presenting a thermal load to the heat source and may be selected from inert fillers, e.g., alumina. Ex at 4: Even if Nichols were silent about the use of fiber material in its flavor pellets (which, as noted above, is not the case since it teaches use of fibrous tobacco material), it would have nonetheless been obvious to construct the filler material of the flavor pellets from fiber material. 56 Exhibit

60 93. White discloses a filler material that includes fiber materials. Specifically, White discloses an aerosol generating means comprising a heat stable substrate 16 bearing an aerosol forming means. Ex at 4: The aerosol forming means includes tobacco or a tobacco material and a volatile aerosol forming material, such as propylene glycol, that permeates or coats the substrate material. Id. at 4:50-57; 5:67-6:2; 6:48-50; 6:64-7:10; 7: Heat is transferred to the aerosol generating means and causes volatilization of the aerosol forming material to produce a smoke-like aerosol. Id. at 3: According to White, the heat stable substrate may be selected from materials such as graphite fibers, glass fibers, alumina pellets.... Id. at 6: Thus, the PHOSITA would have understood that the fiber-containing substrate of White functions as as a filler material that presents a thermal load to the heat source when heat is transferred to the aerosol generating means. The fiber-containing substrate of White would not change the manner in which the filler material of Nichols acts a a thermal load. According to Nichols, the pellets may be subjected to gas temperatures above the ignition temperature, yet the pellets will not heat up to ignition temperature. Ex at 4: Similarly, White teaches that the heat stable substrate is not decomposed upon exposure to the heat generated by the burning fuel element of the cigarette. Ex at 6: Exhibit

61 95. Thus, the combination of the tobacco material and the aerosol precursor from Nichols flavor pellets and the fiber-containing substrate materials of White is the combination of prior art elements to yield the predicted result of presenting a thermal load to a heat source. Further, substituting the fibercontaining substrate materials of White for the filler material of Nichols is merely the substitution of one known element for another known element to achieve a predictable result, namely, presenting a thermal load to the heat source. 96. The claim chart below identifies where the limitation a liquid storage body including fiber material of claim 15 is shown in the prior art. a liquid storage body including fiber material in a cylindrical section of the housing, with the liquid storage body in physical contact with the atomizer; and Ex at Fig Exhibit

62 Ex at Fig. 7. Referring now to the drawings, FIG. 1 shows an article, designated generally by reference numeral 10, which typically includes flavor-generating medium 12, a heating element 14, and a power source 16, which are surrounded by an outer tube or overwrapper 18. Flavor-generating medium 12 typically may be formed in a packed bed or as an extruded rod disposed around heating element 14, and is then typically encased in an inner, thermally-insulating tube 20. Flavor-generating medium 12 is captured within tube 20 by perforated front and rear clips 22 and 24, respectively. Electrical energy from power source 16 is applied to the terminals of heating element 14, which heats the flavor-generating medium to produce flavor components. Ex at 3: Flavor-generating medium 12 typically is placed around heating element 14. Alternatively, the heating element may surround the flavor-generating medium. Ex : Flavor-generating medium 12 may be similar to the flavor pellets shown in commonly assigned U.S. patent application Ser. No. 07/222,831, filed Jul. 22, 1988, hereby incorporated by reference in its entirety. Flavor-generating medium 12 may include tobacco or tobacco-derived materials. Ex at 3:65-4:2. A more preferred embodiment of article 10 includes only a single heating element which contacts flavor-generating medium 12. The heating element provides both the constant, low-level heating between puffs, and the high temperature pulse for each puff. Ex at 6: Exhibit

63 Relevant disclosure from Nichols that is incorporated by reference: The pellets preferably comprise a mixture of about 15 to 95% tobacco material, 5 to 35% aerosol precursor, and 0 to 50% filler material. Ex at 2: The pellets of this invention comprise a thermally releasable flavorant material produced by an extrusion process that provides for the homogeneous mixture of the components and a substantially uniformly sized end product. Thus, high speed mass production apparatus and techniques can be used to make and process the pellets and form thermally releasable flavor generators for smoking articles. Ex at 4: The aerosol precursor forms an aerosol upon being subjected to heat. It is a material that, during the mixing process, becomes widely dispersed among and absorbed by the tobacco particles. Advantageously, absorption by the tobacco and filler material minimizes migration or wicking of the aerosol precursor so that it remains widely dispersed. The aerosol precursor also serves as a lubricant to facilitate mixing of the components. The preferred aerosol precursor material is glycerine, preferably U.S.P. grade glycerine, added in a liquid state containing substantially no water. Ex at 4: Conventional product feed apparatus may be provided for controlling the rate at which the liquid or finely divided ingredients of the pellets are added to obtain the desired proportions. For example, metering pump 350 may be used for metering the flow of a liquid aerosol precursor from supply reservoir 341 into the extruder barrel at port 342 at a rate of about 20 lbs per hour. Ex at 5:6-13. When the pellets are subjected to heat, the aerosol precursor will form an aerosol.... Ex at 8: Exhibit

64 Ex at Fig. 1. During smoking, heat from the burning fuel element is rapidly transferred to the aerosol generating means in the cigarettes of this invention and this heat causes the volatilization of the aerosol forming material contained therein, which in turn is produces to the user a "smoke-like" aerosol through the mouth end of the article. Ex at 3: Referring now in detail to the drawings, the illustrated embodiments of the present cigarette (as shown in FIG. 1) typically have a fuel element 10, a physically separate aerosol generating means which comprises a substrate 16 bearing an aerosol forming means, a barrier member 14, and a mouthend piece 18. Preferably, the aerosol forming means comprises tobacco or a tobacco material such as cut filler, reconstituted tobacco, puffed tobacco, tobacco paper, extruded tobacco, a tobacco aroma oil, a tobacco essence, a spray dried tobacco extract, a freeze dried tobacco extract, tobacco dust, or the like, or a combination thereof, in order to provide tobacco flavor. Ex at 4: Barrier member 14 divides the interior of the cigarette into two spaces or regions, i.e., the space inside the tube and the annular space between the tube and the insulating layer 20. In the first of these spaces there is disposed the aerosol generating means which preferably includes the heat stable substrate 16 and at least one volatile aerosol forming material. The other space defined by barrier member 14 and layer 20 contains the fuel element 10. Ex at 5:64-6:4 61 Exhibit