`
`Case No. 1:20-cv-00393-LO-TCB
`
`ORAL ARGUMENT REQUESTED
`
`
`
`
`
`
`
`RAI STRATEGIC HOLDINGS, INC. AND
`R.J. REYNOLDS VAPOR COMPANY
`
`
`
`
`
`Plaintiffs and
`Counterclaim Defendants,
`
`v.
`
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.
`
`
`
`
`
`Defendants and
`Counterclaim Plaintiffs.
`
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 1 of 26 PageID# 30143
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF PMI/ALTRIA’S OMNIBUS MOTION IN LIMINE
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 2 of 26 PageID# 30144
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 2 of 26 PagelD# 30144
`
`TABLE OF CONTENTS
`
`Page
`
`L
`
`MIL NO. 1: PRECLUDE RJR FROM RELYING ON NON-COMPARABLE
`
`AGREEMENTS TO SUGGEST THE AMOUNT OF A REASONABLE
`
`ROYALTY ooccoscoscosccssessessessceseestsstsiveseisesisivessesssisivesesisitesivisssssussiissiesesissitesesiteseeeee 1
`
`I.
`
`MIL NO. 2: PRECLUDE RJR FROM VIOLATING ITS STIPULATION
`
`REGARDING THE PRIOR ART ooocesscoscescosecsecsscssesivesssisitesiessesiissiviieitesieesesiesivesesiteseese 3
`
`Il.
`
`MIL NO.3: NOARGUMENT, EVIDENCE, OR TESTIMONY ABOUT PRIOR
`ART INVALIDITY NOT DISCLOSED IN EXPERT REPORTS.o00-c-.ccsscssccssessesssessseeseee 3
`
`IV. MILNO. 4: NO REFERENCE TO PRACTICING THE PRIOR ART AS AN
`ALLEGED NON-INFRINGEMENT DEFENSE...0-----:-s-coscsvecsecsecssessessesisesecsiesivesesseeseessee 5
`
`V.
`
`MIL NO. 5: PRECLUDE RJR’S EXPERT FROM RELYING ON HEARSAY
`CONVERSATIONS WITH UNDISCLOSED THIRD-PARTIES AND
`
`EVIDENCE PRODUCEDIN VIOLATION OF THE COURT’S DISCOVERY
`
`ORDERooo vsesscsscosesscessesssssessvesestsstssvessissisesisisesssiiibessiisitesiesssssiiiissssiietissaveseeseeseesees 5
`
`VL MIL NO. 6: PRECLUDE RJR FROM ARGUING THAT IT LACKS CONTROL
`
`OVER SUPPLIERS OF THE ACCUSED PRODUCTS..eo.ccccssccsecesessessesivesessiesseesessteseevee 8
`
`VII MIL NO. 7: PRECLUDE LAY OPINION TESTIMONY FROM RJR’S FACT
`
`WITNESSES ABOUT ALLEGED NON-INFRINGEMENT OR INVALIDITY ........... 10
`
`VII MIL NO. 8: NO REFERENCE TO RJR’S PATENT INFRINGEMENT
`
`CLAIMS ooocccccccccscesecscsscssessvesecsvesisssssvessssiesesivesssiesisissitssiesivessiistivsieeiesitesissiseeeieeseeeseees ll
`
`IX. MIL NO. 9: NO ARGUMENT.EVIDENCE, OR TESTIMONY ABOUT THE
`PENDING ITC INVESTIGATION OR
`
`
`eee 13
`
`X.
`
`MIL NO. 10: NO REFERENCE TO WITHDRAWN CLAIMSOR DEFENSES........... 14
`
`MIL NO. 11: NO REFERENCE TO PMI/ATRIA’S DECISION NOT TO SUE
`THIRD PARTIES FOR INFRINGING THE ASSERTED PATENTS.o..-ccccccccceseeseesseeee 15
`
`XII MIL NO. 12: NO REFERENCE TO
`
`WITH
`
`THIRD-PARTYJPATENT NUMBERS oooececccccccscssscssessessessssucesessessesseeseeees 17
`
`XII. MIL NO. 13: PRECLUDE RJR FROM REFERENCING THE ABSENCE OF
`
`CHARLES HIGGINS AT TRIAL .o0...csscssccsscssessessessecsicssesiesesisesicsiesssssivisesieesesseeseseeesee 19
`
`XIV. MIL NO. 14: NO ARGUMENT, EVIDENCE, OR TESTIMONY
`CHALLENGING FDA’S PMT AND MRTP AUTHORIZATIONSFORIQOS............ 19
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 3 of 26 PageID# 30145
`
`CASES
`
`Arctic Cat Inc. v. Bombardier Rec. Prods.,
`950 F.3d 860 (Fed. Cir. 2020) ................................................................................................... 16
`
`AVM Techs. LLC v. Intel Corp.,
`No. 15-cv-33, 2017 WL 2938191 (D. Del. Apr. 19, 2017) ......................................................... 2
`
`Bayer HealthCare LLC v. Baxalta Inc.,
`989 F.3d 964 (Fed. Cir. 2021) ................................................................................................... 17
`
`Berkheimer v. Hewlett-Packard Co.,
`No. 12-cv-9023, 2016 WL 3030170 (N.D. Ill. May 25, 2016) ................................................... 8
`
`Biedermann Techs. GmbH & Co. KG v. K2M, Inc.,
`528 F. Supp. 3d 407 (E.D. Va. 2021) ........................................................................................ 15
`
`Buckman v. Bombardier Corp.,
`893 F. Supp. 547 (E.D.N.C. 1995) ............................................................................................ 10
`
`CertusView Techs., LLC v. S&N Locating Servs., LLC,
`No. 2:13-cv-346, 2016 WL 6915303 (E.D. Va. Mar. 7, 2016) ................................................. 10
`
`E.I. DuPont de Nemours and Co. v. Kolon Indus., Inc.,
`286 F.R.D. 288 (E.D. Va. 2012) .................................................................................................. 9
`
`Electro- Mech. Corp. v. Power Distrib. Prods., Inc.,
`No. 11-cv-71, 2013 WL 1859229 (W.D. Va. Mar. 13, 2013) ................................................... 16
`
`Gen. Elec. Co. v. Joiner,
` 522 U.S. 136 (1997) ................................................................................................................. 18
`
`Henderson v. Corelogic Nat’l Background Data, LLC,
`No. 12-cv-97, 2016 WL 354751 (E.D. Va. Jan. 27, 2016) ........................................................ 10
`
`HVLPO2, LLC v. Oxygen Frog, LLC,
`949 F.3d 685 (Fed. Cir. 2020) ............................................................................................. 10, 11
`
`I/P Engine, Inc. v. AOL Inc.,
`No. 11-cv-512, 2012 WL 12068846 (E.D. Va. Oct. 12, 2012) ........................................... 1, 2, 3
`
`Krippelz v. Ford Motor Co.,
`750 F. Supp. 2d 938, 961 (N.D. Ill. 2010),
`vacated on other grounds, 667 F.3d 1261 (Fed. Cir. 2012) ...................................................... 16
`
`Mfg. Res. Int’l, Inc. v. Civiq Smartscapes, LLC,
`No. 17-cv-269, 2019 WL 4198194 (D. Del. Sept. 4, 2019) ...................................................... 19
`
`ii
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 4 of 26 PageID# 30146
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 4 of 26 PagelD# 30146
`
`MLCIntell. Prop., LLC v. MicronTech., Inc.,
`10 F.4th 1358 (Fed. Cir. 2021) 22... ceccecccccccceccesceescesceescesseesecseesseesecaeesaeeseeeaessaseseseaeenseeeeeaeeaees 18
`
`Open Text S.A. v. Box, Inc.,
`No; [3:¢9504910. 20TS: WE BASTST CD Cal Tait 9 DOU) esecccctceecsecsscecsssercececececeseceaeacscacactas 2
`
`Pfizer Inc. v. Teva Pharma,
`460 F: Sapp-.650 (D92006) sss cscscscscacscucacucacusscusscusscacacacacucatacatucatucacutcutscutetacacacacscatacatuacass 20
`
`Samsung Elecs. Co. v. NVIDIA Corp.,
`NO: 14-602757, 2016 WL "‘TS4347 (ED: Va PODE29, DONG) scciicciccssceicceiisactcasticaetcacccucunsuses 12: 15
`
`Sprint Comme’ns Co. L.P. v. Charter Commce’ns, Inc.,
`No. 17-661 734, 2021 WL. 982730 (D.-DGL. Mat: 16. DOD1 ys cisiicssiccsicsicencesniceacncnsnansuancueuscs 16
`
`Steves & Sons, Inc. v. JELD-WEN, Inc.,
`No; lé-ev=545,/2018 WL 359479: (ED: Va. Jati...10; DOVER) sscssconnnssnnssnassnsoansonnsnanconncounaauneaunes 10
`
`TecSec, Inc. v. Adobe Inc.,
`No. 10-cv-115, 2018 WL 11388472 (E.D. Va. Nov. 21, 2018) .0......ecccecceeeceseeeseeeeeeeeeees passim
`
`TecSec, Inc. v. Adobe Sys. Inc.,
`No. 10-cv-115, 2018 WL 3656370 (E.D. Va. June 8, 2018)..........0.ceecceececeecceeeeeeseeeneeeeeeeeseeeees 18
`
`Tyco Healthcare Grp. LP v. Applied Med. Res. Corp.,
`No. 09-cv-176, 2010 WL 11469880 (E.D. Tex. Feb. 26, 2010) .0.......cceeececececeeecceseeeeeeeteeeees 16
`
`United Realty Advisors, LP v. Verschleiser,
`No. 14-cv-5903, 2019 WL 4889420 (S.D.N-Y. Oct. 3, 2019) ........ccceceececeecceeeceesceesseeeeeeeseeeees 12
`
`United States v. Farrell,
`921 F.3d 116 (4th Cir. 2019) o2o.ccecccecccccccecesccescesccesecsseeseeesecsseesecaececeseceseceaceseeeaeeeateseteneenseees 10
`
`United States v. Graham,
`TETN caesar cecezeceeeacaecaacaaeaacaacaacaaamarraaaracac aaa 10
`
`United States v. Verges,
`No: 132cf-227, 2014 WL.S59573 (ED: Va: Feb: 12,2094)escscscscesscssscusscacacacacscacacecucacscacusscuss 12
`
`Younanv. Rolls-Royce Corp.,
`IN6.09-60-2 136, 2013 WL. 1899919 '(S.D. Cal. MayDOUSJi siicsicsccscaisnesnianianiniususuaiusie 10
`
`STATUTES
`
`BS USB UBD) scccissccsrnccccsanesnnctncrectCR 14
`
`RULES
`
`FEDRoEAO3 caccsnccsccauncoansesnasancaunessnssianesancasnieisncessnsancnantaisntieisnasssnsanatantietsCesSananasanieitnCe SNORT 5, 19
`
`ill
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 5 of 26 PageID# 30147
`
`I.
`
`MIL NO. 1: PRECLUDE RJR FROM RELYING ON NON-COMPARABLE
`AGREEMENTS TO SUGGEST THE AMOUNT OF A REASONABLE ROYALTY
`
`RJR’s response crystallizes two dispositive points: (1) RJR confirms it seeks to use
`
`
`
` Opp. at
`
`3, and (2) RJR ignores this Court’s ruling that parties may not use “[t]he amounts paid” in
`
`undisputedly “not comparable” licenses “to suggest a reasonable royalty rate” at trial. TecSec, Inc.
`
`v. Adobe Inc., No. 10-cv-115, 2018 WL 11388472, at *8 (E.D. Va. Nov. 21, 2018). But “the
`
`Federal Circuit has made clear that non-comparable licensing cannot be used as the basis for
`
`determining a reasonable royalty.” I/P Engine, Inc. v. AOL Inc., No. 11-cv-512, 2012 WL
`
`12068846, at *2 (E.D. Va. Oct. 12, 2012). RJR’s three arguments fail to overcome this law.
`
`First, RJR is wrong that PMI/Altria’s MIL is “premature” because it “does not discuss any
`
`specific” license. Opp. at 1. PMI/Altria told RJR during meet and confer that the subject
`
`agreements are specifically
`
`identified in Section 12.3
`
`of Dr. Sullivan’s rebuttal report. Dkt. 895-1 at 3. PMI/Altria identified these agreements in its
`
`MIL, explaining that the parties’ damages experts rely
`
`at 1 (citing Dkt. 895-3 ¶¶ 229-57). RJR does not dispute these facts and concedes
`
`. Mot.
`
`
`
`
`
` Cf. id. at 3 with Opp. at 1-3.
`
`Second, RJR’s argument that it is “well settled” that non-comparable agreements “may be
`
`relevant” for “other purposes,” such as “cross-examination,” invites legal error. Opp. at 1. RJR’s
`
`sole cited case—which deferred the motion until the pretrial conference (not trial as RJR
`
`suggests)—explains that the opposite is true: “A non-comparable license is irrelevant to prove a
`
`reasonable royalty” and, even if a party “at least proffered some possibly relevant lines of cross-
`
`examination” (RJR has not), “that does not mean that the jury should hear irrelevant evidence.”
`
`1
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 6 of 26 PageID# 30148
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 6 of 26 PagelD# 30148
`
`AVM Techs. LLC v. Intel Corp., No. 15-cv-33, 2017 WL 2938191, at *3 (D. Del. Apr. 19, 2017).
`
`Other courts have held that where, as here, “licenses are non-comparable, they are irrelevant and
`
`simply [have] no place in this case.” Open Text S.A. v. Box, Inc., No. 13-cv-04910, 2015 WL
`
`349197, at *5 (N.D. Cal. Jan. 23, 2015); J/P Engine, 2012 WL 12068846,at *2 (“[I]fan agreement
`
`is non-comparableasto one aspectof the royalty question,it is non-comparableas toall aspects.”).
`
`RJR’s sole remaining argument for admissibility is a vague reference to cross-examination.
`
`That does not establish relevance. The non-comparable agreements remain inadmissible under
`
`Rule 403 because, as RJR’s cited case explains, “[t]here is a real risk of confusion, unfair prejudice,
`
`etc., from having cross-examination about generally urelevant documents.” AVM, 2017 WL
`
`2938191, at *3; J/P Engine, 2012 WL 12068846, at *2. PMI/Altria identified these concerns in its
`
`motion (see Mot. at 1-2), but RJR failed to address them. The Court should not allow RJR to use
`
`the guise of cross examination to present undisputedly irrelevant documents to the jury.
`
`Third, RJR contends that it may use the|
`Pe to suggest a reasonable royalty because both
`
`PRR. 1, Thatis
`
`I 1.96521 16. Then RR oni
`that PMI/Altria’s damages expert considered hellTe
`EE Dkt. 901-1 (Meyer Op.) ¥ 184-90. And RJR’s expert agrees.
`He (comely) testeht
`
`Cf. Ex. 1 (Meyer Op.) §§ 136-73 with id. § 174-90.
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 7 of 26 PageID# 30149
`
` Dkt.
`
`901-3 (Sullivan Dep.) at 49:22-50:8. That both parties’ experts agree that this agreement is not
`
`comparable confirms that it “cannot be used” to “determin[e] a reasonable royalty” and this MIL
`
`should be granted. I/P Engine, 2012 WL 12068846, at *2; TecSec, 2018 WL 11388472, at *8.
`
`II. MIL NO. 2: PRECLUDE RJR FROM VIOLATING ITS STIPULATION
`REGARDING THE PRIOR ART
`
`RJR does not dispute that, to support its IPR petitions, RJR stipulated it would “not argue”
`
`in this case that the ’545 and ’556 Patents “are invalid under sections 102 and 103.” Dkts. 965-6,
`
`965-7. That bars RJR’s experts from testifying at trial about how the prior art allegedly discloses
`
`the asserted claims, regardless of the proffered purpose. It should resolve this MIL.
`
`RJR contends that, despite these stipulations, its experts may use prior art from the ’545
`
`and ’556 IPRs for (i) challenging written description (for the ’545 Patent only) and (ii) damages
`
`purposes. Not so. Doing so requires a presentation of the same analysis and positions that RJR
`
`surrendered by stipulation. See, e.g., Dkt. 965-3 ¶ 67
`
`; Dkt. 901-8 ¶¶ 175-84
`
`
`
`
`
`
`
`
`
`
`
`; Dkt. 965-8 ¶ 132
`
` RJR does not argue
`
`otherwise and cites no case authorizing its proposed end-run-around around its binding stipulation.
`
`That should be dispositive. RJR’s attempt to backtrack on its stipulation should be rejected.
`
`III. MIL NO. 3: NO ARGUMENT, EVIDENCE, OR TESTIMONY ABOUT PRIOR
`ART INVALIDITY NOT DISCLOSED IN EXPERT REPORTS
`
`RJR does not dispute that its
`
`
`
` Instead, RJR argues that this MIL is “a
`
`3
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 8 of 26 PageID# 30150
`
`non-issue” because it will not elicit testimony “not disclosed in its expert reports.” Opp. at 5. If
`
`true, RJR should stipulate that its experts cannot testify that a reference invalidates the asserted
`
`claims unless the expert disclosed such an opinion. RJR refuses, confirming this MIL should be
`
`granted. Rather than meaningfully oppose this MIL, RJR raises two objections to the stipulation
`
`that PMI/Altria proposed and RJR rejected without explanation.2 Id. at 5-6. Both fail.
`
`First, PMI/Altria’s proposed stipulation is not “overbroad” or “unnecessary.” Id. at 6. For
`
`the two patents subject to IPR proceedings, RJR admits that PMI/Altria’s stipulation accurately
`
`reflects RJR’s representation to the PTAB that RJR would not pursue any reference it “raised or
`
`that could have been reasonably raised in the IPR.” Dkts. 895-6, 895-7. For the remaining three
`
`patents, RJR admits that PMI/Altria’s proposed stipulation “specifically-listed [the] patents and
`
`patent publications” that RJR actually disclosed and preserved. Opp. at 6; Dkt. 895-1 at 2-3.
`
`Second, PMI/Altria’s proposed stipulation does not bar RJR from using references to show
`
`“the state of the art.” Opp. at 6. Instead, consistent with PMI/Altria’s position during meet and
`
`confer, it was expressly limited to anticipatory or obviousness references. Dkt. 895-1 at 2. Given
`
`PMI/Altria’s representation that it is not seeking to exclude prior art used to only show the state of
`
`the art, RJR’s objection is moot and the Court should bar RJR’s experts from testifying about prior
`
`art references not disclosed in their expert reports, unless (i) included in their interrogatory and
`
`(ii) used solely to show the state of the art.
`
`
`2 While RJR complains that PMI/Altria would not agree to RJR’s proposed stipulation that all
`experts not offer opinions “not previously disclosed in expert reports,” Opp. at 5, that (unneeded)
`stipulation (i) is not relevant to this MIL and (ii) was withdrawn. Ex. 2 (1/6/22 Email).
`
`4
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 9 of 26 PageID# 30151
`
`IV. MIL NO. 4: NO REFERENCE TO PRACTICING THE PRIOR ART AS AN
`ALLEGED NON-INFRINGEMENT DEFENSE
`
`RJR agrees to “not offer a practicing the prior art non-infringement defense.” Opp. at 7.
`
`But RJR’s expert for the ’556 Patent, Mr. Kodama, does exactly that when opining that the accused
`
` and that there are
`
` Dkt. 901-23 ¶ 55.
`
`RJR contends that Mr. Kodama may present such testimony to rebut PMI/Altria’s technical
`
`expert’s damages-related opinion that the ’556 Patent
`
`
`
`Opp. at 8. RJR is wrong. By RJR’s own admission, the damages-related opinions compare the
`
`asserted ’556 Patent to the prior art. Id. By contrast, this MIL seeks to exclude improper opinions
`
`comparing the accused devices to the prior art, which has no bearing on any damages-related issue
`
`and will only confuse the jury by suggesting a practicing-the-prior-art-defense. FED. R. EVID. 403.
`
`RJR attempts to re-cast Mr. Kodama’s improper opinions as damages-related by claiming
`
`(though attorney-argument)
`
`
`
`
`
` Opp. at 8 (citing Dkt. 965-8 ¶¶ 107, 110-11, 121-24). This assertion is meritless.
`
`Indeed, Mr. Kodama does not cite the disputed practicing-the-prior-art opinions (or any of the prior
`
`art discussed therein) in any damages-related paragraph RJR cites in its Opposition. See id.
`
`V. MIL NO. 5: PRECLUDE RJR’S EXPERT FROM RELYING ON HEARSAY
`CONVERSATIONS WITH UNDISCLOSED THIRD-PARTIES AND EVIDENCE
`PRODUCED IN VIOLATION OF THE COURT’S DISCOVERY ORDER
`
`RJR contends that the Court should allow its expert, Dr. Suhling, to rely on (i) hearsay
`
`conversations with undisclosed third parties and (ii) technical evidence produced in violation of
`
`Judge Buchannan’s discovery order for three reasons. All fail.
`
`5
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 10 of 26 PageID# 30152
`
`First, RJR asserts that his “
`
`
`
` Opp. at 9-10. This
`
`is false. These third-party engineers told Dr. Suhling facts that go beyond mere authentication,
`
`See Dkt. 901-9 ¶ 95; see also id. ¶ 87
`
` ¶ 89
`
`, ¶ 91
`
`
`
`
`
`
`
`
`
`
`
`¶¶ 93-94. RJR blocked PMI/Altria from seeking
`
`discovery on these alleged facts which, on their face, go well beyond “authentication.”
`
`Second, RJR argues that its disclosure of the Smoore photo and conversation was “timely.”
`
`Opp. at 10. That is incorrect. RJR admits that Judge Buchannan ordered it to produce responsive
`
`technical documents from its suppliers, including Smoore, by November 13, 2020. Dkt. 263. And
`
`RJR concedes it produced the picture on which Dr. Suhling relies after that deadline, in violation
`
`of Judge Buchannan’s Order. RJR’s production of the picture from Smoore in March 2021 is
`
`indisputably untimely.3 RJR’s assertion that PMI/Altria “similarly relied” on an “undisclosed
`
`foreign witness” is flat wrong (Opp. at 11 n.8): Arno Rinker is a named inventor of an asserted
`
`patent that PMI disclosed as early as its November 2020 initial disclosures.
`
`RJR argues that “[t]he photo did not become relevant until … Dr. Suhling sought to
`
`respond to PM/Altria’s new assertion in its February 24, 2021 [opening] report.” Opp. at 10-11.
`
`This excuse is implausible. RJR has known that
`
`was
`
`
`3 RJR’s opposition provides no justification for its failure to disclose Dr. Xiao, Mr. Liu, or any
`other Smoore employee in (i) its Rule 26 initial disclosures or (ii) in response to PMI/Altria’s
`Interrogatory
`
`
`6
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 11 of 26 PageID# 30153
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 11 of 26 PagelD# 30153
`
`a key feature accused of infringing the ’265 Patent since July 2020, when PMI/Altria included
`
`technical pictures ofP| in its counterclaims. See Dkt. 65 fj 22, 24 (pictures ofzl
`heater). And PMI/Altria repeatedly and specifically sought evidence relatedi
`| component shown in RJR’s late-produced picture—during discovery,
`
`including when moving to compel RJR to produce technical documents fromits suppliers. See,
`
`e.g., Dkt. 219-4 at 2; Dkt. 263. In granting PMI/Altria’s motion, Judge Buchannanwasclear: RJR
`
`mustproduce ai// responsive documents from Smoore by November2020, no exceptions. RJR did
`
`not produce the subject Smoore picture by that deadline. That should be dispositive.
`
`Third, RJR’s untimely disclosure wasneither substantially justified nor harmless. Forone,
`
`RJR’s argument
`
`that
`
`the late-produced picture is justified because PMI’s technical expert
`
`Po is incorrect. Opp. at 11. As discussed above, RJR’s claimed ignorance
`that a picture of the accused Smoorea would not be “relevant” until after opening
`
`expert reports is baseless, regardless of how PMI/Altria’s expert measured the heating element.
`
`RJR’s assertion that PMI’s infringement contentions did not provide notice as to how he would
`
`measure the heating element is also wrong.
`
`/d. at 11-12. PMI/Altria’s November12, 2020 final
`
`infkingemen!onion
`
`BN<4 (Woltrink Op) 561
`
`That PMI/Altria’s expert “submitted a Supplemental Infringement Report addressing this
`
`evidence” does not excuse RJR’s untimely disclosure. Opp. at 12. The sole paragraph (67) on
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 12 of 26 PageID# 30154
`
`which RJR relies explains that PMI/Altria’s expert had
`
`
`
`
`
` Dkt. 965-12 ¶ 67. This confirms that
`
`RJR’s untimely disclosure harmed and prejudiced PMI/Altria.4 FED. R. CIV. P. 37(c)(1).
`
`RJR’s untimely disclosure is not “harmless.” Opp. at 12-13. That PMI/Altria allegedly
`
`“could have requested to depose Dr. Xiao and Mr. Liu,” id. at 12, is irrelevant because RJR’s
`
`experts cannot rely on untimely evidence and witnesses “as long as the time for taking [its] expert’s
`
`deposition has not yet passed.” Berkheimer v. Hewlett-Packard Co., No. 12-cv-9023, 2016 WL
`
`3030170, at *4 (N.D. Ill. May 25, 2016). Regardless, as RJR knows, Dr. Xiao and Mr. Liu are
`
`employees of third-party Smoore in China. Depositions are illegal in China and PMI/Altria could
`
`not have practically obtained their depositions in the three weeks remaining in fact and expert
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`discovery.
`
`VI. MIL NO. 6: PRECLUDE RJR FROM ARGUING THAT IT LACKS CONTROL
`OVER SUPPLIERS OF THE ACCUSED PRODUCTS
`
`RJR admits it will argue at trial that it lacks control over its suppliers—who undisputedly
`
`. Opp. at 13.
`
`But RJR does not dispute that Judge Buchanan granted PMI/Altria’s motion to compel outright,
`
`rejecting RJR’s arguments that (i) the suppliers are mere
`
` and (ii) RJR’s
`
` Dkt. 146 at 2; Dkt 179. RJR fails to
`
`explain why it may present arguments at trial that directly contradict Judge Buchanan’s findings.
`
`
`4 RJR’s suggestion that this MIL should be denied because PMI/Altria previously “objected to the
`photo and conversations” is incorrect and irrelevant. Opp. at 11, 13. PMI/Altria properly objected
`at the time and is appropriately moving to exclude this evidence from trial at the in limine stage.
`
`8
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`

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`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 13 of 26 PageID# 30155
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`First, RJR’s argument that “[t]here was no finding of generalized control” is wrong. Opp.
`
`at 13. RJR ignores that PMI/Altria’s motion
`
` Dkt. 127 at 3-4, 6
`
`
`
`
`
`
`
` Judge Buchanan
`
`, 7-8
`
`granted that motion outright, expressly finding RJR had “control over the ability to produce the
`
`source code” and “there’s no question [] that the suppliers would turn over the source code” when
`
`asked. Dkt. 203 at 11:21-12:4. Judge Buchanan also found that RJR has “the ability to, essentially,
`
`inspect the source code to make sure that it is compliant with the specifications that [RJR] has
`
`given the supplier.” Id. at 8:15-19. That the specific findings of control were tied to source code
`
`(the discovery at issue) is immaterial; if anything, since source code is “clearly” a “highly sensitive
`
`and valuable trade secret[],” it confirms this MIL should be granted. Id. at 11:8-11.
`
`Second, RJR contends that Judge Buchanan decided a “separate issue” because the
`
`standards for “control” under Rule 34 and inducement/willfulness are “different.” Opp. at 13-14.
`
`That is a red herring. PMI/Altria contends
`
`
`
`Ex. 5 (McAlexander Op.) ¶¶ 630-43; Ex. 6 (Abraham Op.) ¶¶ 313-16 (same). Even if the “object
`
`of control” under Rule 34 “is the document to be produced, not of another entity,” as RJR argues,
`
`Judge Buchanan’s findings were not so limited. Supra at 8-9. Indeed, one factor considered in
`
`evaluating “control” under Rule 34 is “whether … one corporation effectively controls the other.”
`
`E.I. DuPont de Nemours and Co. v. Kolon Indus., Inc., 286 F.R.D. 288, 292 (E.D. Va. 2012).
`
`RJR’s non-infringement arguments belie its alleged lack of control. RJR’s expert for the
`
`’265 Patent obtained materials from Smoore (which
`
`his non-infringement opinions and “confirmed” his observations by speaking
`
`) to “aid”
`
`
`
`9
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`

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`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 14 of 26 PageID# 30156
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` Opp. at 10, 12. Likewise,
`
`
`
` Dkt. 911-4 at 297:17-
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`299:22, 300:17-301:6. That contradicts RJR’s supposed lack of control over its suppliers and RJR
`
`cannot have it both ways. The Court should enforce Judge Buchanan’s order and grant this MIL.
`
`VII. MIL NO. 7: PRECLUDE LAY OPINION TESTIMONY FROM RJR’S FACT
`WITNESSES ABOUT ALLEGED NON-INFRINGEMENT OR INVALIDITY
`
`The Federal Circuit has held trial courts abuse their discretion by allowing “a witness to
`
`testify as an expert on the issues of noninfringement or invalidity” without being “qualified as an
`
`expert in the pertinent art.” HVLPO2, LLC v. Oxygen Frog, LLC, 949 F.3d 685, 689 (Fed. Cir.
`
`2020). Yet RJR asks the Court to defer any determinations on the admissibility of expert testimony
`
`from its retired employee, Dr. Figlar. Opp. at 15-16. RJR’s argument fails for two reasons.
`
`First, RJR contends without citation that Dr. Figlar’s opinions on how “potential [RJR]
`
`technology differs from related patent terms” are supposedly fact testimony based on his
`
`“experience.” Opp. at 16; Dkt. 901-12 at 10:15-22. But this type of noninfringement testimony
`
`is “in the clear purview of experts and lay witness testimony on such issues does not comply with
`
`the Federal Rules of Evidence or Civil Procedure.” HVLPO2, 949 F.3d at 689. RJR cites no case
`
`to the contrary.5 Rather, RJR cites CertusView Techs., LLC v. S&N Locating Servs., LLC (Opp. at
`
`15), in which the court precluded a lay witness from offering opinions “regarding the claims at
`
`issue.” No. 13-cv-346, 2016 WL 6915303, at *1 (E.D. Va. Mar. 7, 2016). In fact, here, Dr. Figlar’s
`
`
`5 None of RJR’s cited cases allow lay witness opinion testimony on invalidity or noninfringement.
`See Younan v. Rolls-Royce Corp., No. 09-cv-2136, 2013 WL 1899919, at *4 (S.D. Cal. May 7,
`2013) (negligence); Steves & Sons, Inc. v. JELD-WEN, Inc., No. 16-cv-545, 2018 WL 359479, at
`*2-3 (E.D. Va. Jan. 10, 2018) (commercial viability); United States v. Farrell, 921 F.3d 116, 144
`(4th Cir. 2019) (legal ethics); Buckman v. Bombardier Corp., 893 F. Supp. 547, 561 (E.D.N.C.
`1995) (operation of watercraft); Henderson v. Corelogic Nat’l Background Data, LLC, No. 12-cv-
`97, 2016 WL 354751, at *4 (E.D. Va. Jan. 27, 2016) (identifiability of class members); United
`States v. Graham, 796 F.3d 332, 364 (4th Cir. 2015) (attributes of cell towers).
`
`10
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`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 15 of 26 PageID# 30157
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`“lay” opinions are nearly identical to RJR’s technical expert’s opinions; both compare the accused
`
`products and prior art to the asserted claims and evidences that Dr. Figlar’s opinions are not
`
`permissible lay opinions but impermissible expert opinions on noninfringement and invalidity.
`
`Second, it would be unfairly prejudicial to defer this MIL until trial. Doing so would force
`
`PMI/Altria to needlessly prepare for Dr. Figlar’s cross-examination on opinions that RJR: (i) first
`
`disclosed during a deposition after discovery closed, (ii) provided without any Rule 26(a)(2)(B)
`
`report or Rule 26(a)(2)(A) identification of Dr. Figlar as providing expert opinion testimony,
`
`(iii) produced no underlying documents on6 and that PMI/Altria (iv) never got the chance to depose
`
`him on. Mot. 10-11; Dkt. 792 at 1-3 (detailing the timing of relevant deposition). Thus PMI/Altria
`
`would be severely prejudiced unless the Court grants this motion before trial. See, e.g., TecSec,
`
`2018 WL 11388472, at *2 (“Adobe’s failure to properly disclose these exhibits has prejudiced
`
`TecSec by denying [it] the opportunity to examine the documents and depose Adobe’s witnesses
`
`on them.”); HVLPO2, 949 F.3d at 690 (finding prejudice where party was deprived of ability to
`
`“test[]” lay witness’ invalidity opinions). The Court should grant this MIL.
`
`VIII. MIL NO. 8: NO REFERENCE TO RJR’S PATENT INFRINGEMENT CLAIMS
`
`RJR states it “has no intention of dwelling at trial on its infringement claims,” which are
`
`stayed and undisputedly have no part in this trial. Opp. at 17. That should be dispositive, but RJR
`
`refuses to stipulate that it will not reference those claims at trial for three reasons. Each fails.
`
`First, this MIL is not “overbroad” and “premature.” Id. PMP/Altria’s MIL identifies the
`
`specific evidence to be excluded—i.e., references to RJR’s stayed infringement claims. It is
`
`“certainly not premature,” as “these are the kinds of issues that are proper subjects of motions in
`
`
`6 RJR’s argument that Dr. Figlar “made preliminary determinations on how potential [RJR]
`technology differs from related patent terms” lacks citation, is unsupported, and uncorroborated
`by any document reflecting Mr. Figlar’s alleged analysis of any asserted patent. Opp. at 16.
`
`11
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`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 16 of 26 PageID# 30158
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`limine” because “there is no good faith basis for examination on [such] subjects.” United Realty
`
`Advisors, LP v. Verschleiser, No. 14-cv-5903, 2019 WL 4889420, at *2-3 (S.D.N.Y. Oct. 3, 2019).
`
`Indeed, this Court and others have excluded evidence of stayed infringement claims because they
`
`are “irrelevant.”7 TecSec, 2018 WL 11388472, at *5; Mot. at 11 (citing cases).
`
`Second, RJR contends that its infringement claims provide “relevant context” about “the
`
`two-way competition” between the parties. Opp. at 17. That is incorrect. RJR’s stayed claims
`
`are irrelevant to whether the parties compete. Indeed,
`
`
`
`
`
`
`
`Third, RJR argues that references to PMI/Altria’s IQOS product opens the door to evidence
`
`of RJR’s infringement claims. Opp. at 18. Not so. As explained in PMI/Altria’s opposition to
`
`RJR’s MIL #11,
`
`
`
`
`
` See Dkt. 1001 at 1-3.
`
`RJR’s mere allegations of infringement are irrelevant to either issue. RJR cites no contrary law.
`
`In any event, any purported probative value is substantially outweighed by the risks of
`
`confusing the issues, misleading the jury, and unfairly prejudicing PMI/Altria. Mot. at 12. Indeed,
`
`RJR confirms it wants to argue that PMI/Altria filed retaliatory counterclaims “[a]fter Reynolds
`
`brought this case.” Opp. at 17. But “a plaintiff’s motive for bringing suit is irrelevant,” Samsung
`
`Elecs. Co. v. NVIDIA Corp., No. 14-cv-757, 2016 WL 754547, at *2 (E.D. Va. Feb. 23, 2016),
`
`and, as RJR represented to this Court, referencing unrelated “infringement proceedings” risks
`
`
`7 RJR’s sole cited case (Opp. at 18) is not a patent case, does not involve stayed claims, and merely
`declined to exclude “testimony” as “unduly cumulative.” United States v. Verges, No. 13-cv-222,
`2014 WL 559573, at *4 (E.D. Va. Feb. 12, 2014).
`
`12
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 17 of 26 PageID# 30159
`Case 1:20-cv-00393-LO-TCB Document 1098 Filed 02/25/22 Page 17 of 26 PagelD# 30159
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`“improperly attributing culpability in this action based on [] unrelated actions.” Dkt. 863 at 3.
`
`RJR also told this Court that referencing PMP’s injunctive relief claim (which PMI/Altria agreed
`
`not to do)is “improper” and “unfairly prejudicial” becauseit is “stayed” and will not be presented
`
`at trial. Dkt. 832 at 3-4. The sameis true of RJR’s infringement claims. Even if RJR’s claims
`
`were relevant to competition (they are not), any such evidence would be cumulative because it is
`
`undisputed that the parties are competitors. And RJR doesnot dispute that fairness would require
`
`PMI/Altria to explain that the PTAB has invalidated certain RJR asserted patents, which would
`
`create even morejuror confusion and an unnecessary mini-trial on ancillary IPR proceedings. RJR
`
`doesnotjustify why it can introduce this complexity and confusion on accountofits stayed claims.
`
`IX. MIL NO.9: NO ARGUMENT, EVIDENCE, OR TESTIMONY ABOUT THE
`
`PENDINGITCINVESTIGATIONcS
`
`RJR