Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 1 of 28 PageID# 29777
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`
`
`
`
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs and Counterclaim Defendants,
`
`
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LO-TCB
`
`
`
`
`REDACTED
`
`
`
`
`REYNOLDS’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`CERTAIN EXPERT OPINIONS OF JOSEPH C. MCALEXANDER
`
`
`
`
`
`

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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 2 of 28 PageID# 29778
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`
`
`TABLE OF CONTENTS
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`
`Page
`
`II.
`
`B.
`
`C.
`
`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`INTRODUCTION ......................................................................................................................... 1
`REPLY ARGUMENT ................................................................................................................... 2
`I.
`MR. MCALEXANDER, AN ELECTRICAL ENGINEER, CANNOT RELY ON
`A REGULATORY EXPERT TO GIVE REGULATORY OPINIONS ............................ 2
`MR. MCALEXANDER’S NON-TECHNICAL TESTIMONY ON THE
`INVENTION STORY AND SECONDARY CONSIDERATIONS SHOULD BE
`EXCLUDED ...................................................................................................................... 7
`A.
`Expert Testimony Should Not Serve as a Vehicle for the Purely Factual
`Invention Story of the ’374 Patent ......................................................................... 7
`Mr. McAlexander May Not Opine on Industry Skepticism Beyond What
`the Witnesses and Documents Say for Themselves ............................................. 11
`Mr. McAlexander Lacks Expertise and a Methodology to Support His
`Commercial Success Opinions ............................................................................ 12
`III. MR. MCALEXANDER’S DOCTRINE OF EQUIVALENTS OPINIONS LACK
`SUPPORT OR METHODOLOGY SEPARATE FROM HIS LITERAL
`INFRINGEMENT OPINIONS ........................................................................................ 16
`CONCLUSION ............................................................................................................................ 20
`CERTIFICATE OF SERVICE .................................................................................................... 22
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`-i-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 3 of 28 PageID# 29779
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`
`
`
`
`CASES
`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`Am. Key Corp. v. Cole Nat. Corp.,
`762 F.2d 1569 (11th Cir. 1985) .................................................................................................6
`
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014)..................................................................................................3
`
`CardioNet, LLC v. ScottCare Corp.,
`No. CV 12-2516, 2017 WL 4742476 (E.D. Pa. Oct. 19, 2017) .................................................7
`
`Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd.,
`807 F.3d 1283 (Fed. Cir. 2015)..................................................................................................3
`
`Cooper v. Smith & Nephew, Inc.,
`259 F.3d 194 (4th Cir. 2001) ...............................................................................................6, 19
`
`Deutz Corp. v. City Light & Power, Inc.,
`No. 1:05-cv-3313-GET, 2009 WL 2986415 (N.D. Ga. 2009) .................................................14
`
`Dura Auto. Sys. of Ind., Inc. v. CTS Corp.,
`285 F.3d 609 (7th Cir. 2002) .............................................................................................. 5, 14
`
`EMC Corp. v. Pure Storage, Inc.,
`154 F. Supp. 3d 81 (D. Del. Feb. 11, 2016) ...............................................................................3
`
`Engebretsen v. Fairchild Aircraft Corp.,
`21 F.3d 721 (6th Cir. 1994) .....................................................................................................10
`
`Genband US LLC v. Metaswitch Networks Corp.,
`No. 2:14-CV-33-JRG-RSP, 2016 WL 125503 (E.D. Tex. Jan. 9, 2016) ...................................8
`
`In re James Wilson Assocs.,
`965 F.2d 160 (7th Cir. 1992) .............................................................................................10, 14
`
`In re TMI Litig.,
`193 F.3d 613 (3d Cir. 1999).....................................................................................................14
`
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`-ii-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 4 of 28 PageID# 29780
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`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page
`
`
`In re Trasylol Products Liability Litigation,
`709 F. Supp. 2d 1323 (S.D. Fla. 2010) ....................................................................................11
`
`Interwoven, Inc. v. Vertical Computer Sys.,
`No. CV 10-04645 RS, 2013 WL 3786633 (N.D. Cal. July 18, 2013) ...............................18, 19
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014)................................................................................................13
`
`Johnson v. Air & Liquid Sys., Corp.,
`No. 4:18CV132, 2020 WL 11563846 (E.D. Va. Nov. 6, 2020) ..............................................15
`
`Kingston v. Int’l Bus. Machines Corp.,
`No. C19-1488 MJP, 2021 WL 1158191 (W.D. Wash. Mar. 26, 2021) .....................................2
`
`Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, Inc.,
`873 F.2d 1422 (Fed. Cir. 1989)................................................................................................18
`
`Lutron Elecs. Co.v. Crestron Elecs., Inc.,
`970 F. Supp. 2d 1229 (D. Utah 2013) ......................................................................................16
`
`Meridian Mfg. v. C&B Mfg.,
`340 F. Supp. 3d 808 (N.D. Iowa 2018) ......................................................................................3
`
`Mfg. Res. Int’l, Inc. v. Civiq Smartscapes, LLC,
`No. CV 17-269-RGA, 2019 WL 4198194 (D. Del. Sept. 4, 2019) .......................................7, 8
`
`Muhsin v. Pac. Cycle,
`No. 2010-060, 2012 WL 2062396 (D.V.I. June 8, 2012) ........................................................14
`
`Nease v. Ford Motor Co.,
`848 F.3d 219 (4th Cir. 2017) ...................................................................................................15
`
`Numatics Inc. v. Balluf, Inc.,
`66 F. Supp. 3d 934 (E.D. Mich. 2014) .....................................................................................15
`
`Paice LLC v. Toyota Motor Corp.,
`504 F.3d 1293 (Fed. Cir. 2007)................................................................................................18
`
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`-iii-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 5 of 28 PageID# 29781
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`
`TABLE OF AUTHORITIES
`(continued)
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`
`
`Page
`
`
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007)................................................................................................11
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013)................................................................................................15
`
`Rambus Inc. v. Hynix Semiconductor Inc.,
`254 F.R.D. 597 (N.D. Cal. 2008) .............................................................................................13
`
`Rose Hall, Ltd. v. Chase Manhattan Overseas Banking Corp.,
`576 F. Supp. 107 (D. Del. 1983) ................................................................................................8
`
`Shire ViroPharma Inc. v. CSL Behring LLC,
`No. 17-cv-414, 2021 WL 1227097 (D. Del. Mar. 31, 2021) .................................................3, 4
`
`TecSec, Inc. v. Adobe Inc.,
`No. 10-cv-115, 2018 WL 11388472 (E.D. Va. 2018) .............................................................15
`
`Texas Instruments Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996)..................................................................................................17
`
`TK-7 Corp. v. Estate of Barbouti,
`993 F.2d 722 (10th Cir. 1993) .............................................................................................6, 14
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012)................................................................................................11
`
`United States v. Tran Trong Cuong,
`18 F.3d 1132 (4th Cir. 1994) .................................................................................................6, 7
`
`Westfield Ins. Co. v. Harris,
`134 F.3d 608 (4th Cir. 1998) .....................................................................................................3
`
`Zellars v. NexTech Ne., LLC,
`895 F. Supp. 2d 734 (E.D. Va. 2012), aff’d (July 17, 2013)....................................................15
`
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`-iv-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 6 of 28 PageID# 29782
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`
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`OTHER AUTHORITIES
`
`Federal Rule of Civil Procedure 26 .................................................................................................1
`
`Federal Rule of Evidence 702 ......................................................................................................1, 2
`
`Federal Rule of Evidence 703 ................................................................................................ passim
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`-v-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 7 of 28 PageID# 29783
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`
`
`INTRODUCTION
`
`PM/Altria’s brief in opposition fails to show that the challenged opinions of Mr.
`
`McAlexander meet the requirements of Federal Rule of Evidence 702 and Federal Rule of Civil
`
`Procedure 26. Mr. McAlexander lacks the qualifications, experience, specialized knowledge, or
`
`even a methodology for offering opinions on the federal regulation of e-cigarettes. While one
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`expert may rely on a second expert to offer opinions within the first expert’s area of specialty,
`
`that’s not what PM/Altria proposes—Mr. McAlexander, a technical expert, relies on a regulatory
`
`expert to offer regulatory opinions. Moreover, Mr. McAlexander’s report and PM/Altria’s brief
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`do not lay the foundation for such reliance under Rule 703, which requires a showing of
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`“reasonable” reliance by “experts in the particular field … in forming an opinion on the subject.”
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`Next, Mr. McAlexander proposes to convey purely factual information to the jury on the
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`development of the ’374 patent, purported skepticism about the technology underlying the ’545
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`patent, and the commercial success of the accused products. Because Mr. McAlexander has no
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`expertise to bring to bear on these subjects, it would be inappropriate for him to serve as a
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`mouthpiece for this evidence or as an advocate to explain its significance to the jury. Finally,
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`PM/Altria’s response confirms that Mr. McAlexander’s opinions on the doctrine of equivalents
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`are not admissible. PM/Altria does not attempt to defend his DOE opinions on the ’545 patent,
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`which it expressly abandons. Mr. McAlexander’s opinions on the ’374 patent are similarly
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`deficient: they do not identify a difference between the claimed technology and the accused
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`products but merely restate his literal infringement opinions while reciting the claim limitations.
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`For all these reasons, the Court should limit Mr. McAlexander from offering testimony on these
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`issues at trial.
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`

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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 8 of 28 PageID# 29784
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`
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`I.
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`
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`REPLY ARGUMENT
`
`MR. MCALEXANDER, AN ELECTRICAL ENGINEER, CANNOT RELY ON A
`REGULATORY EXPERT TO GIVE REGULATORY OPINIONS.
`
`Mr. McAlexander is an electrical engineer with no prior experience with e-cigarettes who
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`nonetheless intends to offer opinions about the federal regulation of e-cigarettes and in particular
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`the process for pre-market tobacco product applications (“PMTAs”). Mr. McAlexander lacks the
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`qualification to give such opinions, and he has not employed any methodology to support them.
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`They should therefore be excluded.
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`Tacitly conceding as much, PM/Altria argues that Mr. McAlexander’s opinions are
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`admissible because he relies on another proposed expert, Ms. Ehrlich, who styles herself as an
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`FDA regulatory expert. PM/Altria states that “RJR does not challenge Ms. Ehrlich’s FDA
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`expertise.” Dkt. 1021 at 3. In fact, Reynolds filed a separate motion to exclude Ms. Ehrlich’s
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`testimony under Rule 702, Dkt. 879, including because of her lack of relevant expertise. Dkt. 877
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`at 5, 8-9. Because PM/Altria makes no argument that Mr. McAlexander’s regulatory opinions are
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`independently admissible without his reliance on the opinions of Ms. Ehrlich, the exclusion of Ms.
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`Ehrlich’s testimony should mean that Mr. McAlexander’s regulatory opinions are excluded as
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`well. See, e.g., Kingston v. Int’l Bus. Machines Corp., No. C19-1488 MJP, 2021 WL 1158191, at
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`*1 (W.D. Wash. Mar. 26, 2021) (“Once the Court excludes an expert’s testimony, the party may
`
`not offer that same opinion backdoor through another expert. Rule 703 does not countenance this
`
`result.”). PM/Altria claims that Reynolds ignored the fact that Mr. McAlexander relied on Ms.
`
`Ehrlich for his opinions and ignored the law permitting one expert to rely on another. But
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`PM/Altria is wrong. Reynolds addressed both points in its memorandum. See Dkt. 885 at 13–14.
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`Indeed, it is PM/Altria that ignores the key limitation of Federal Rule of Evidence 703: experts
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`may rely on other experts only if “reasonably rel[ied]” on by “experts in the particular field … in
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 9 of 28 PageID# 29785
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`forming an opinion on the subject.” See also Westfield Ins. Co. v. Harris, 134 F.3d 608, 612–13
`
`
`
`(4th Cir. 1998) (“[T]he rules expressly authorize that such expert opinions may be based, not only
`
`on data and direct observations, but also on the opinions and observations of others ‘[i]f of the type
`
`reasonably relied upon by experts in the particular field in forming opinions or inferences upon
`
`the subject.’”); Dkt. 885 at 13.
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`Thus, the decisions cited by PM/Altria did not and could not adopt a blanket rule of
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`admissibility for “[r]eliance on the opinions of other experts” contrary to the requirements of Rule
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`703. Dkt. 1021 at 7. “Consistent with Rule 703, patent damages experts often rely on technical
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`expertise outside of their field when evaluating design around options or valuing the importance
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`of the specific, infringing features in a complex device,” Apple Inc. v. Motorola, Inc., 757 F.3d
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`1286, 1321 (Fed. Cir. 2014), overruled on other grounds by Williamson v. Citrix Online, LLC, 792
`
`F.3d 1339 (Fed. Cir. 2015), but that is because experts “‘in the particular field [of patent damages]
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`would reasonably rely on those kinds of facts or data in forming an opinion on the subject.’” Id.
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`(quoting Rule 703). The other decisions cited by PM/Altria confirm the non-controversial point
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`that damages experts can rely on technical experts to give an opinion on damages.1 By contrast,
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`PM/Altria cites no decision permitting a technical expert to rely on a regulatory expert to give an
`
`opinion on regulatory matters. The closest it comes is Shire ViroPharma Inc. v. CSL Behring
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`LLC, No. 17-cv-414, 2021 WL 1227097 (D. Del. Mar. 31, 2021), another case where a damages
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`expert relied on information supplied by another expert—this time, on an FDA decision—to give
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`an opinion on damages. Id. at *28-29. The court specifically noted that the damages expert “does
`
`
`
` 1
`
` Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1303 (Fed. Cir. 2015);
`Meridian Mfg. v. C&B Mfg., 340 F. Supp. 3d 808, 845 (N.D. Iowa 2018); EMC Corp. v. Pure
`Storage, Inc., 154 F. Supp. 3d 81, 115 (D. Del. Feb. 11, 2016).
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`-3-
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 10 of 28 PageID# 29786
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`not attempt to offer any independent regulatory opinions beyond his area of expertise. Rather, he
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`
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`simply notes his ‘understanding’ that the FDA’s grant of ODE [Orphan Drug Exclusivity] to
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`Haegarda was based on its subcutaneous administration attribute,” the patented feature at issue.
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`Id. at *29.
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`Mr. McAlexander, however, plainly intends to give opinions on regulatory matters at trial,
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`not limited to the technical aspects of the ’545 patent. He specifically opines that “the ’545
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`patented inventions have significant regulatory importance” to FDA. Dkt. 885-1 at ¶ 81 (emphasis
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`added). He gives an opinion on what the FDA will consider relevant in the PMTA process. See
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`id. ¶ 82 (“[T]he technology claimed in the ’545 Patent directly relates to the guidance the FDA
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`provides for electronic nicotine delivery systems.”); id. ¶ 78. He then offers an opinion on the
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`weight FDA will give to certain features of the ’545 technology. “In particular,” he states,
`
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`
`
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`only that, he described
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` Not
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`
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`Dkt. 885-2 at 97:18-23. He further characterizes “the technology claimed in the ’545 Patent [as]
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`incredibly valuable” because it “has relevance and importance from a regulatory perspective . . .
`
`to a company such as RJR
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`
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`Dkt. 885-1 at ¶ 788.2 His ultimate opinion, then, is no surprise—that “a device would likely not
`
`
`
` 2
`
` Not only is Mr. McAlexander’s proposed opinion outside his area of expertise, but such testimony
`is also misleading. Mr. McAlexander improperly suggests that the power management system, in
`particular the pulse width modulation technique, set forth in the ’545 patent is a novel aspect of
`the patent. Not so. Power management systems were well known at the time of the ’545 patent.
`Indeed, the very pulse width modulation technique described in the ’545 patent was imported from
`the prior art. See ’545 patent col 5, ll 57-61) (“Commonly assigned U.S. Pat. No. 6,040,560
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`be approved by the FDA without the technology in the ’545 Patent.” Dkt. 885-2 at 276:12-15.
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`
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`These are self-evidently opinions on federal regulation, not electrical engineering.
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`An expert cannot bootstrap from the opinions of another expert to offer testimony on the
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`other expert’s area of expertise. In Dura Auto. Sys. of Ind., Inc. v. CTS Corp., 285 F.3d 609 (7th
`
`Cir. 2002), the Seventh Circuit considered a similar issue and affirmed the exclusion of opinions
`
`by an expert hydrologist who relied on mathematical models of groundwater flow prepared by
`
`others with expertise beyond the hydrologist’s area of specialization. Id. at 615. The court
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`observed that “[a]n expert witness is permitted to use assistants in formulating his expert opinion,
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`and normally they need not themselves testify,” but that the “[a]nalysis becomes more complicated
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`if the assistants aren’t merely gofers or data gatherers but exercise professional judgment that is
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`beyond the expert’s ken.” Id. at 612-13. The court concluded that a “scientist, however well
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`credentialed he may be, is not permitted to be the mouthpiece of a scientist in a different specialty.”
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`Id. at 614. Assuming, arguendo, that Ms. Ehrlich is qualified to give regulatory opinions about
`
`how FDA would apply PMTA criteria to the products containing the ’545 technology, Mr.
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`McAlexander cannot use her expertise as a foundation for his own regulatory opinions—opinions
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`derived from “a different specialty.”
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`Even if that were permissible, PM/Altria still makes no showing that “experts in the
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`particular field” of electrical engineering would rely on someone with asserted expertise in FDA
`
`regulation “in forming an opinion on the subject.” Fed. R. Evid. 703. As the proponent of Mr.
`
`McAlexander’s testimony, PM/Altria bears the burden of making this foundational showing.
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`
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`describes a system and method for delivering the same amount of energy to the electrical resistance
`heater between chargings of the battery, and is hereby incorporated by reference in its entirety.”)
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 12 of 28 PageID# 29788
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`Cooper v. Smith & Nephew, Inc., 259 F.3d 194, 199 (4th Cir. 2001). Mr. McAlexander nowhere
`
`
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`states that he regularly or reasonably relies on FDA experts in forming opinions within his own
`
`area of expertise. See United States v. Tran Trong Cuong, 18 F.3d 1132, 1143 (4th Cir. 1994) (“In
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`the present record, there is no indication that the medical report of Dr. Stevenson was ‘of a type
`
`reasonably relied upon by experts in a particular field in forming opinions or inferences upon the
`
`subject.’”); Am. Key Corp. v. Cole Nat’l Corp., 762 F.2d 1569, 1580 (11th Cir. 1985) (“Henry’s
`
`affidavit does not state that he, as an economist, would normally base his opinions on information
`
`of the type furnished to him by DeWeese.”). Mr. McAlexander “fail[s] to demonstrate any basis
`
`for concluding that [Ms. Ehrlich’s] opinion . . . was reliable, other than the fact that it was the
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`opinion of someone he believed to be an expert.” TK-7 Corp. v. Estate of Barbouti, 993 F.2d 722,
`
`732 (10th Cir. 1993).
`
`Finally acknowledging these requirements, PM/Altria argues that Mr. McAlexander did
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`independently evaluate Ms. Ehrlich’s regulatory opinions because he also “reviewed FDA
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`guidance documents, discussed their import with Ms. Ehrlich, and opined on the technical aspects
`
`of those documents.” Dkt. 1021 at 9. As shown above, Mr. McAlexander did not limit his opinions
`
`to “technical aspects.” Moreover, Mr. McAlexander has no qualifications for making such an
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`independent assessment, and he offers no methodology for giving weight to the claimed features
`
`of the ’545 patent in the agency’s approval determination—other than his say-so. See Dkt. 885 at
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`11-12. It is simply implausible for PM/Altria to suggest that Mr. McAlexander could lay a
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`foundation for his reliance on Ms. Ehrlich under Rule 703 or provide his own, independent
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`assessment given Mr. McAlexander’s admission that he has no prior experience with e-cigarettes.
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`Dkt. 885-2 at 24:4-9. Mr. McAlexander does not claim to have ever considered the question of
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`federal regulation of tobacco products or e-cigarettes, and opinions developed specifically for the
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`purposes of litigation do not qualify as “‘of a type reasonably relied upon by experts in the
`
`
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`particular field.’” Tran Trong Cuong, 18 F.3d at 1143. For all these reasons, Mr. McAlexander’s
`
`regulatory opinions should be excluded.
`
`II. MR. MCALEXANDER’S NON-TECHNICAL TESTIMONY ON THE
`INVENTION STORY AND SECONDARY CONSIDERATIONS SHOULD BE
`EXCLUDED.
`
`A.
`
`Expert Testimony Should Not Serve as a Vehicle for the Purely Factual
`Invention Story of the ’374 Patent.
`
`Any party would naturally prefer the ease and predictability of introducing evidence
`
`through a professional spokesperson like Mr. McAlexander rather than a fact witness like Mr. Liu,
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`the inventor of the ’374 patent. But factual testimony offered for the truth of the matter asserted
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`must be given by a percipient witness, not an expert. PM/Altria says that Mr. Ripley (one of the
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`’545 inventors) “will testify live” at trial, Dkt. 1021 at 12, and Reynolds acknowledges that Mr.
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`McAlexander can offer opinions based on testimony admitted at trial. But PM/Altria apparently
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`seeks to present testimony and information from Mr. Liu solely through the expert testimony of
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`Mr. McAlexander. That is improper. See Dkt. 885 at 15-16.
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`PM/Altria cites decisions applying Rule 703 that an expert “may base an opinion on facts
`
`or data in the case that the expert has been made aware of or personally observed.” But the rules
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`make a distinction between opinions and disclosure of the underlying facts and data supporting
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`those opinions. See Fed. R. Evid. 703, 705. PM/Altria’s cases address the admissibility of the
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`expert’s opinion, but say nothing about allowing the expert to disclose the underlying facts through
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`a narrative recitation to the jury. See Mfg. Res. Int’l, Inc. v. Civiq Smartscapes, LLC, No. CV 17-
`
`269-RGA, 2019 WL 4198194, at *6 (D. Del. Sept. 4, 2019) (declining to exclude “opinions
`
`regarding secondary considerations”); CardioNet, LLC v. ScottCare Corp., No. CV 12-2516, 2017
`
`WL 4742476, at *6 (E.D. Pa. Oct. 19, 2017) (“question before the Court is whether the expert
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`testimony … should be excluded because it is unreliable” based on argument that it was solely
`
`
`
`based on testimony of inventor, who was expected to testify at trial); Genband US LLC v.
`
`Metaswitch Networks Corp., No. 2:14-CV-33-JRG-RSP, 2016 WL 125503, at *3 (E.D. Tex. Jan.
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`9, 2016) (denying motion to strike expert opinions based on undisclosed discussions with
`
`employees).
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`For example, an expert “may base his opinion” on conversations with others, but “this does
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`not magically render the hearsay evidence admissible”—the “expert opinion … was admitted and
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`this was all [defendant] was entitled to.” Rose Hall, Ltd. v. Chase Manhattan Overseas Banking
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`Corp., 576 F. Supp. 107, 158 (D. Del. 1983). In Manufacturing Resources, one of PM/Altria’s
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`cases, the district court made a point of emphasizing that the expert “does not appear to be
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`uncritically regurgitating the opinions of others.” Mfg. Res. Int’l, 2019 WL 4198194, at *7. Yet
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`here, entire passages of Mr. McAlexander’s report do nothing but recount the “Development of
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`the Inventions Claimed in the ’374 Patent,” as described in the heading to paragraphs 549 through
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`555 of his report. Dkt. 885-3 at 182. PM/Altria apparently agrees that this factual recitation is
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`unaccompanied by any independent technical or scientific analysis, because it yet again accuses
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`Reynolds of “ignor[ing]” something that Reynolds’s actually addressed in its motion—a later
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`section of Mr. McAlexander’s report addressing secondary considerations that refers back to the
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`testimony from and conversation with Mr. Liu. See Dkt. 885 at 4, 17 (addressing ¶¶ 984-990). A
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`cursory glimpse of this section of the report confirms that it repeats the substance of the earlier
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`paragraphs under a different heading. Mr. McAlexander again relies almost exclusively on the
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`conversation with and deposition of Mr. Liu (with scattered references to the depositions of two
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`others involved in the development of the ’374 patent).
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 15 of 28 PageID# 29791
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`Mr. McAlexander adds nothing of substance to this analysis. He recounts Mr. Liu’s
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`employment history and his status as the “sole inventor of the ’321 Patent, the parent patent to the
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`’374 Patent.” Dkt. 885-3 at ¶¶ 985-986. Mr. McAlexander states that earlier “devices had known
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`deficiencies with their puff sensors, such as false actuations caused by vibration and external
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`noise,” id. ¶ 988, which merely summarizes Mr. Liu’s testimony
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` Lui
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`Dep. at 119:11-119:24 (Ex. 1); see also Dkt. 885-3 at ¶ 989 (Mr. McAlexander stating that
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`“electronic cigarettes using [earlier] sensors were prone to false triggering caused by
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`environmental vibration or noise” or “if they were dropped on the table or floor”). Mr.
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`McAlexander opines that earlier device sensors were “costly to manufacture,” Dkt 885-3 at ¶ 988,
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`which refers to Mr. Liu’s testimony that
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` Lui Dep. at 120:2 to 120:6. According to Mr. McAlexander,
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`other types of earlier sensors with “mechanical and magnetic components” resulted “in a shorter
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`product life,” Dkt. 855-3 at ¶ 989, again referring to Mr. Liu’s testimony that
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` Liu
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`Dep. at 120:7-120:12. According to Mr. McAlexander, “Prior art puff sensors also lacked
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`sensitivity, requiring a strong puff to activate the device. ” Dkt. 885-3 at ¶ 989. According to Mr.
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`Liu,
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` Liu Dep. 119:11-119:16. Mr. McAlexander:
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`Case 1:20-cv-00393-LO-TCB Document 1087 Filed 02/25/22 Page 16 of 28 PageID# 29792
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`885-3 at ¶ 989. And again, Mr. Liu:
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` Liu
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`Dep. at 120:23-121:2.
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`PM/Altria’s opposition does not attempt to argue that Mr. McAlexander contributes new
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`or different technical opinions to buttress his factual summary of the ’374 invention story drawn
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`from Mr. Liu’s testimony. PM/Altria appears to agree that Reynolds’s cases establish that an
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`expert may not “provide a factual narration of the record evidence divorced from any expert
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`analysis.” Dkt. 1021 at 11. That description fits Mr. McAlexander’s proffered testimony. This is
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`not a problem that can remedied by “cross examination at trial,” id. at 10, because by putting Mr.
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`Liu’s words in the mouth of Mr. McAlexander, PM/Altria would improperly “use an expert
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`witness as a screen against cross-examination.” In re James Wilson Assocs., 965 F.2d 160, 173
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`(7th Cir. 1992).
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`Finally, Mr. McAlexander’s off-the-record conversations with Mr. Liu are unquestionably
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`hearsay. PM/Altria cites no authority for its assertion that the conversations are admissible because
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`“the substance of Mr. McAlexander’s conversations with Mr. Liu overlap with his deposition
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`testimony.” Dkt. 1021 at 12. Reynolds has no way to verify that assertion—according to Mr.
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`McAlexander’s footnote references, his conversation with Mr. Liu took place the day after his
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`deposition. Because these conversations are not independently admissible, the jury may not
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`consider them for the truth of the matters asserted on the development of the claimed technology
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`in the ’374 patent or the long-felt, unmet need for the invention, and the jury should be so instructed
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`if, over Reynolds’s objections, Mr. McAlexander is permitted to refer to them during trial. See,
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`e.g., Engebretsen v. Fairchild Aircraft Corp., 21 F.3d 721, 729(6th Cir. 1994) (“When
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`inadmissible materials are admitted for explanatory purposes, the opposing party is entitled to a
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`limiting instruction to the jury that the evidence may be considered ‘solely as a basis for the expert
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`opinion and not as substantive evidence.’” (quoting Paddack v. Dave Christensen, Inc., 745 F.2d
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`1254, 1262 (9th Cir. 1984))).
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`B. Mr. McAlexander May Not Opine on Industry Skepticism Beyond What the
`Witnesses and Documents Say for Themselves.
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`PM/Altria assures the Court that “Mr. McAlexander will not offer any opinions on state of
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`mind at trial.” Dkt. 1021 at 13 & n.8. PM/Altria does not dispute that an expert witness may not
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`offer testimony on an individual’s or corporation’s state of mind, knowledge, or intent. Nor does
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`it quarrel with the rule that an expert should not be used as a mouthpiece to convey non-technical,
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`factual testimony from those in the industry, which the jury is “fully capable of understanding …
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`without expert assistance.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1354
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`(Fed. Cir. 2007); Dkt. 885 at 20. Yet, as its lead example of the permissible subject matter for Mr.
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`McAlexander’s testimony, PM/Altria cites a section of his report quoting the deposition testimony
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`of Mr. Ripley, who explained that
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` Dkt. 1021-2 at ¶ 109. PM/Altria
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`may certainly seek to admit Mr. Ripley’s testimony and the documentary evidence on which Mr.
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`McAlexander relies and argue to the jury that industry participants expressed skepticism about
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`lithium ion batteries. There is no requirement that such proof be made by expert witnesses. See,
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`e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
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`1352–53 (Fed. Cir. 2012) (“jury’s fact finding was supported by substantial evidence” in the form
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`of “testimony regarding skepticism by two named inventors of the patents-in