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`Case 1:20-cv-00393-LO-TCB Document 1113 Filed 02/28/22 Page 1 of 2 PageID# 30415
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`555 Eleventh Street, N.W., Suite 1000
`Washington, D.C. 20004-1304
`Maximilian A. Grant
`Tel: +1.202.637.2200 Fax: +1.202.637.2201
`Direct Dial: +1.202.637.2267
`www.lw.com
`max.grant@lw.com
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`February 28, 2022
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`VIA ECF FILING
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`FIRM / AFFILIATE OFFICES
`Beijing
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`The Honorable Liam O’Grady
`United States District Judge
`Albert V. Bryan U.S. Courthouse
`401 Courthouse Square
`Alexandria, VA 22314
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`Re:
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`RAI Strategic Holdings, Inc. et al. v. Altria Client Services LLC, et al.,
`No. 1:20-cv-393-LO-TCB (E.D. Va.)
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`Dear Judge O’Grady:
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`We write on behalf of Plaintiffs Altria Client Services LLC, Philip Morris USA Inc., and
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`Philip Morris Products S.A. (“PMI/Altria”) to respectfully request the Court’s assistance in
`resolving a dispute between the parties that the Court anticipated in its February 7, 2022 Order
`(Dkt. 947).
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`On February 7, 2022, the Court issued an Order denying PMI/Altria’s motion for summary
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`judgment of no invalidity regarding U.S. Patent No. 10,420,374 (“’374 patent”). Id. In denying
`the motion, the Court recognized a dispute between the parties as to whether the inventor of the
`’374 patent is the same inventor of the Chinese utility patent that Reynolds alleges is prior art. Id.
`at 5, n. 2. This is important because a reference that is not “by another” does not qualify as prior
`art as a matter of law under pre-AIA 35 U.S.C. § 102(a). As the Court stated in its Order, Reynolds
`concedes that the sole inventor of the ’374 patent is also the same sole inventor of the Chinese
`utility patent at issue, but contends that PMI/Altria should be barred from relying on that fact
`because it was allegedly not properly disclosed during discovery. Id. Although the Court found
`it “unnecessary to resolve this dispute in the current Order,” the Court stated that “the Parties are
`encouraged to confer with each other to see what action (if any) would be necessary to resolve this
`issue.” Id.
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`In light of Reynolds’ concession that the Chinese utility patent shares the same sole
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`inventor as the ’374 patent—and therefore is barred by statute from being considered prior art
`under § 102(a) as a matter of law—PMI/Altria provided Reynolds with a proposed stipulation that
`Reynolds will not present the Chinese utility patent at trial as prior art under § 102(a). Ex. A. In
`response, Reynolds again conceded that it “does not dispute that [the Chinese utility patent] has
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`Case 1:20-cv-00393-LO-TCB Document 1113 Filed 02/28/22 Page 2 of 2 PageID# 30416
`February 28, 2022
`Page 2
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`the same inventor as the ’374 patent,” but objected to the stipulation “for the reasons discussed in
`our summary judgment briefing.” Ex. B. As explained in PMI/Altria’s summary judgment
`briefing, Reynolds’ assertions, including its assertion of an alleged discovery failure, lacks merit.
`Dkt. 751 at 12-15.
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`The parties further met-and-conferred on February 25, 2022. PMI/Altria told Reynolds
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`that they believed the dispute should be resolved prior to trial and that they intended to raise the
`issue with the Court at the upcoming March 4, 2022 hearing on the parties’ in limine and Daubert
`motions. Reynolds disagreed that the issue needed to be resolved prior to trial, but stated that they
`had no objections to PMI/Altria raising the issue at the upcoming hearing. Accordingly,
`PMI/Altria respectfully requests that the issue be heard on March 4, along with the parties’ in
`limine and Daubert motions.
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`Sincerely,
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`/s/ Maximilian A. Grant
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`Maximilian A. Grant
`of LATHAM & WATKINS LLP
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