Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 1 of 19 PageID# 30577
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`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 No. 1:20-cv-00393-LO-TCB
`
`
`MEMORANDUM IN SUPPORT OF REYNOLDS’S MOTION TO LIMIT THE
`NUMBER OF ASSERTED COUNTERCLAIM PATENTS AND/OR CLAIMS
`
`
`
`
`
`
`
`

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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 2 of 19 PageID# 30578
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`
`TABLE OF CONTENTS
`
`
`Page
`
` INTRODUCTION ......................................................................................................................... 1
`BACKGROUND ........................................................................................................................... 2
`I.
`OVERVIEW OF THE COUNTERCLAIM PATENTS AND THE PATENT
`CLAIMS CURRENTLY AT ISSUE ................................................................................. 2
`PROCEDURAL HISTORY............................................................................................... 3
`II.
`ARGUMENT ................................................................................................................................. 4
`I.
`THIS COURT SHOULD ORDER PM/ALTRIA TO IDENTIFY, AND LIMIT,
`THE PATENTS AND CLAIMS THAT IT INTENDS TO PURSUE AT TRIAL ........... 5
`A.
`Courts across the country have frequently limited the number of patents
`and/or the number of claims that a party is permitted to assert at trial,
`especially at this stage of the litigation. ................................................................. 5
`Courts in this district have exercised their authority to manage their
`dockets by limiting the number of patent claims asserted at various stages
`of litigation. ............................................................................................................ 9
`Now is the time for PM/Altria to identify—and limit—the number of
`patents and claims that it intends to pursue at trial. ............................................. 11
`CONCLUSION ............................................................................................................................ 12
`
`
`B.
`
`C.
`
`
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`-i-
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 3 of 19 PageID# 30579
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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Acantha LLC v. DePuy Orthopaedics Inc.,
`No. 15-C-1257, 2017 WL 5186376 (E.D. Wis. Nov. 8, 2017) ..................................................8
`
`Apple, Inc. v. Samsung Elecs. Co.,
`No. 12-CV-00630-LHK, Dkt. No. 471 (N.D. Cal. Apr. 24, 2013) ............................................6
`
`BASF Plant Sci., LP v. Commonwealth Sci. & Indus. Rsch. Org.,
`No. 2:17-cv-503, Dkt. No. 276 (E.D. Va. May 3, 2019) .........................................................10
`
`Biedermann Techs. GmbH & Co. v. K2M, Inc.,
`No. 2:18cv585, 2019 WL 8353309 (E.D. Va. June 11, 2019).................................................11
`
`Centripetal Networks, Inc. v. Cisco Sys., Inc.,
`No. 2:18cv94, Dkt. No. 75 (E.D. Va. Oct. 10, 2019) ..............................................................11
`
`Certusview Techs., LLC v. S & N Locating Servs., LLC,
`No. 2:13cv346, 2014 WL 4930803 (E.D. Va. Oct. 1, 2014) .....................................4, 9, 10, 12
`
`Fenster Fam. Pat. Holdings, Inc. v. Siemens Med. Sols. USA, Inc.,
`No. 04-0038 JJF, 2005 WL 2304190 (D. Del. Sept. 20, 2005) .................................................8
`
`Gentherm Canada, Ltd v. IGB Auto., Ltd.,
`No. 13-11536, 2016 WL 1170801 (E.D. Mich. Mar. 25, 2016) ................................................8
`
`Glaukos Corp. v. Ivantis, Inc.,
`No. SACV 18-00620 JVS (JDEx), 2021 WL 4539047 (C.D. Cal. Aug. 11,
`2021) ..........................................................................................................................................7
`
`Hearing Components, Inc. v. Shure, Inc.,
`No. 9:07CV104, 2008 WL 2485426 (E.D. Tex. June 13, 2008) ...............................................8
`
`Honeywell Int’l Inc. v. Rsch. Prods. Corp.,
`No. 17-cv-723-wmc, 2018 WL 9669751 (W.D. Wis. Apr. 17, 2018) .......................................7
`
`Huawei Techs., Co. v. Samsung Elecs. Co.,
`No. 3:16-cv-02787-WHO, Dkt. No. 143 (N.D. Cal. June 2, 2017) ...........................................6
`
`
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`-ii-
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 4 of 19 PageID# 30580
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page(s)
`
`
`Jiaxing Super Lighting Elec. Appliance Co. v. Maxlite, Inc.,
`No. LACV 19-4047 PSG (MAAx), 2020 WL 3980122 (C.D. Cal. Mar. 31,
`2020) ..........................................................................................................................................5
`
`Joao Control & Monitoring Sys., LLC v. Ford Motor Co.,
`No. 13-CV-13615, 2014 WL 106926 (E.D. Mich. Jan. 10, 2014) ......................................8, 11
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................4
`
`LG Display Co. v. AU Optronics Corp.,
`686 F. Supp. 2d 429 (D. Del. 2010) ...........................................................................................6
`
`Limelight Networks, Inc. v. XO Commn’ns, LLC,
`No. 3:15-cv-720-JAG, Dkt. No. 208 (E.D. Va. Oct. 31, 2016) .........................................10, 12
`
`Memory Integrity, LLC v. Intel Corp.,
`No. 3:15-cv-00262-SI, 2015 WL 6659674 (D. Or. Oct. 30, 2015) .................................6, 8, 11
`
`Midwest Athletics & Sports All. LLC v. Xerox Corp.,
`545 F. Supp. 3d 16 (W.D.N.Y. 2021) .............................................................................. passim
`
`Midwest Athletics & Sports All., LLC v. Xerox Corp.,
`No. 6:19-CV-06036-EAW-JWF, Dkt. No. 149 (W.D.N.Y. Feb. 3, 2020) ................................6
`
`Oracle Am., Inc. v. Google Inc.,
`No. C 10-03561 WHA, 2011 WL 12209477 (N.D. Cal. May 3, 2011).....................................6
`
`Plastipak Packaging, Inc. v. Premium Waters, Inc.,
`No. 20-cv-098-wmc, 2021 WL 719029 (W.D. Wis. Feb. 24, 2021) .........................................7
`
`Rehrig Pac. Co. v. Polymer Logistics (Israel), Ltd.,
`No. CV 19-4952-MWF, 2019 WL 8161141 (C.D. Cal. Aug. 30, 2019) ...................................7
`
`Rembrandt Social Media, LP v. Facebook, Inc.,
`No. 1:13cv00158, Dkt. No. 178 (E.D. Va. July 12, 2013).......................................................10
`
`Ronald A. Katz, Tech. Licensing LP v. Am. Airlines, Inc.,
`639 F.3d 1303 (Fed. Cir. 2011)............................................................................................4, 10
`
`
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`-iii-
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 5 of 19 PageID# 30581
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page(s)
`
`
`Sherwin-Williams Co. v. PPG Indus.,
`No. 17-1023, 2021 WL 1110568 (W.D. Pa. Mar. 23, 2021) .....................................................7
`
`Straight Path IP Grp., Inc. v. Apple Inc.,
`No. C 16-03582 WHA, 2017 WL 1365124 (N.D. Cal. Apr. 13, 2017) .................................5, 8
`
`Thought, Inc. v. Oracle Corp.,
`No. 12-cv-05601-WHO, 2013 WL 5587559 (N.D. Cal. Oct. 10, 2013) ...................................5
`
`Universal Elecs. Inc. v. Roku Inc.,
`No. SACV 18-1580 JVS (ADx), 2019 WL 1878351 (C.D. Cal. Mar. 14, 2019) ......................6
`
`VLSI Tech. LLC v. Intel Corp.,
`No. CV 18-0966-CFC, 2020 WL 4437401 (D. Del. Aug. 3, 2020) ..........................................5
`
`STATUTES
`
`28 U.S.C.§ 1659 ...............................................................................................................................3
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 1 ...............................................................................................................................4
`
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 6 of 19 PageID# 30582
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`
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`INTRODUCTION
`
`RAI Strategic Holdings, Inc. (“RAI”) and R.J. Reynolds Vapor Company (“RJRV”)
`
`(collectively, “Reynolds”) brought this action against Altria Client Services LLC (“ACS”), Philip
`
`Morris USA, Inc. (“PM USA”), and Philip Morris Products S.A. (“PMP”) (collectively,
`
`“PM/Altria”) on April 9, 2020, alleging that PM/Altria’s IQOS heat-not-burn tobacco system
`
`infringed six patents held by Reynolds. In response, in June 2020, PM/Altria brought
`
`counterclaims alleging, among other things, that Reynolds’s VUSE e-cigarette products, including
`
`the Alto, Ciro, Solo, and Vibe products, infringed fifty-two (52) claims across five (5) patents
`
`owned by PM/Altria. PM/Altria later dropped seven (7) of those claims during the expert
`
`discovery period. Thus, forty-five (45) patent claims remain at issue.
`
`Although trial is less than three months away, PM/Altria has steadfastly refused to narrow
`
`the issues by identifying the specific patents and claims that it will pursue at trial. Indeed, despite
`
`conceding that it needs to narrow the number of claims it will try, PM/Altria has refused to commit
`
`to doing so, or when. See Exs. A and B. That position finds no support in the relevant case law.
`
`Indeed, courts—including those in this District—frequently require a party to narrow the number
`
`of asserted patents and claims at earlier stages of litigation than here, including prior to a Markman
`
`hearing. With the parties now on the eve of trial, Reynolds respectfully requests that the Court put
`
`an end to PM/Altria’s continued gamesmanship and order it to identify the patents and claims it
`
`intends to present to the jury. Such an order would prevent the Court, and Reynolds, from
`
`expending needless resources preparing to try claims PM/Altria already knows it intends to drop.
`
`
`
`-1-
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 7 of 19 PageID# 30583
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`
`
`I.
`
`BACKGROUND
`
`OVERVIEW OF THE COUNTERCLAIM PATENTS AND THE PATENT
`CLAIMS CURRENTLY AT ISSUE
`
`PM/Altria currently maintains that Reynolds infringes 45 claims across five patents
`
`assigned to PM/Altria. Those five patents are:
`
`• U.S. Patent No. 6,803,545 (the “’545 patent”), entitled Electrically Heated Smoking
`System and Methods for Supplying Electrical Power from a Lithium Ion Power Source;
`
`• U.S. Patent No. 10,420,374 (the “’374 patent”), entitled Electronic Smoke Apparatus;
`
`• U.S. Patent No. 9,814,265 (the “’265 patent”), entitled Permeable Electric Thermal
`Resistor Foil for Vaporizing Fluids from Single-Use Mouthpieces with Vaporizer
`Membranes;
`
`• U.S. Patent No. 10,555,556 (the “’556 patent”), entitled Cartridge for an Aerosol-
`Generating System; and
`
`• U.S. Patent No. 10,104,911 (the “’911 patent”), entitled Aerosol Generating System
`with Prevention of Condensate Leakage
`
`(collectively, the “Counterclaim Patents”). Those patents, which disclose various alleged
`
`inventions, can be grouped into roughly three categories. The first group, which contains the ’545
`
`and ’374 patents, relates to electrically heated smoking apparatuses. The second group, which
`
`contains the ’265 patent, relates to a permeable resistor for vaporizing fluids, which purportedly
`
`allows for smoke-free inhalation of nicotine and/or additives in e-smoking devices The third
`
`group, which contains the ’556 and ’911 patents, relates to container design for aerosol generating
`
`systems.
`
`
`
`PM/Altria asserts Reynolds makes, uses, offers to sell, and/or sells four products that
`
`allegedly infringe one or more of the Counterclaim Patents. Those products, the VUSE Alto,
`
`VUSE Ciro, VUSE Solo, and VUSE Vibe (“the VUSE Products”), are e-cigarette vaping devices.
`
`A chart summarizing the Counterclaim Patents, the currently asserted patent claims, and the VUSE
`
`Products is included here for reference:
`
`
`
`-2-
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`

`

`
`
`Se ee +associatedFlavorPacks po
`556patent
`1,3-8, 15
`+associatedFlavorPacks poe
`ee
`ied
`+associatedFlavorPacks po
`
`VUSEAlto
`
`VUSEVibe
`
`>
`
`;
`
`>
`
`>
`
`>
`
`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 8 of 19 PageID# 30584
`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 8 of 19 PagelD# 30584
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`Counterclaim Patent
`
`Claims
`
`VUSEProducts
`
`Assignee
`
`Sealine
`
`VUSEAlto, Ciro, Solo, Vibe
`+ associated Flavor Packs
`
`Ses
`
`374 patent
`
`1-10, 16-25
`
`VUSEAlto, Ciro, Solo, Vibe
`+ associated Flavor Packs
`
`ACS
`
`VUSEAlto, Ciro, Solo, Vibe
`
`Il.
`
`PROCEDURAL HISTORY
`
`Reynolds initially brought this action for patent infringement against PM/Altria in April
`
`2020. PM/Altria counterclaimed in June 2020, asserting the Counterclaim Patents. The Court
`
`held a Markman hearing on November18, 2020, and issued its Markman ruling on November24.
`
`See Dkt. No. 360. The Court stayed the case with respect to the Reynolds’s patents.! Fact
`
`discovery on the Altria/PM patents closed in April 2021, and expert discovery in May 2021. The
`
`parties filed their motions for summary judgment in June 2021. The Court issued its rulings on
`
`those motions in August 2021, see Dkt. No. 803, and February 2022, see Dkt. No. 947.
`
`In December 2021, with trial scheduled to begin on April 4, 2022, Reynolds requested that
`
`PM/Altria identify which of the Counterclaim Patents and asserted claims PM/Altria actually
`
`intends to pursueat trial. See Ex. A. In doing so, Reynolds hopedto streamline the issuesfor trial
`
`and minimize the burden on the Court, the jury, and Reynolds.
`
`Jd. Despite conceding that
`
`' Reynolds’s ’238, ’123, and ’915 patents were stayed on June 18, 2020, pursuantto 28
`U.S.C.§ 1659 in view of ITC Investigation No. 337-TA-1199 (Dkt. No. 27); Reynolds’s ’268 and
`°542 patents were stayed on December 4, 2020, pending action before the PTAB (Dkt. No. 426).
`
`-3-
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`

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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 9 of 19 PageID# 30585
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`narrowing would be appropriate, PM/Altria refused to commit to a timeline for doing so. Id. In
`
`view of the trial now beginning on June 6 as well as the lead-up to the March 18 hearing on the
`
`parties’ motions in limine and Daubert motions, Reynolds again asked PM/Altria to identify a
`
`reduced number of claims it intends to present to the jury. See Ex. B at 3. Even while recognizing
`
`the parties are going “to pick a jury soon,” PM/Altria again would not reduce from 45 claims and
`
`did not join the meet and confer call. Id at 1. Thus, despite Reynolds’s efforts to confer on this
`
`issue, there has been no resolution. Having insisted for months that it is ready for trial, PM/Altria
`
`must know now what claims it intends to try. Reynolds requests that the Court order PM/Altria to
`
`tell the rest of us which Counterclaim Patents and claims it intends to try.
`
`ARGUMENT
`
`
`
`Federal courts have long recognized their inherent power “to control the disposition of the
`
`causes on [their] docket[s] with economy of time and effort for [themselves], for counsel, and for
`
`litigants.” See, e.g., Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); see also Fed. R. Civ. P. 1
`
`(encouraging the “just, speedy, and inexpensive determination of every action and proceeding”).
`
`That authority permits district courts to limit both the number of patents,2 as well as the number
`
`of claims,3 asserted by a litigant in cases involving claims of patent infringement.
`
`
`
`The rationale underlying those decisions is simple. Although “[e]ach claim of a patent
`
`defines a separate invention,” “if due process required courts to allow plaintiffs to assert a claim
`
`merely because the claim presented a unique issue of infringement and/or validity,” federal courts
`
`
`2 See, e.g., Midwest Athletics & Sports All. LLC v. Xerox Corp., 545 F. Supp. 3d 16, 19-21
`(W.D.N.Y. 2021), mandamus denied sub nom., In re Midwest Athletics & Sports All. LLC, 858 F.
`App’x 363, 364 (Fed. Cir. 2021).
`3 See, e.g., Certusview Techs., LLC v. S & N Locating Servs., LLC, No. 2:13cv346, 2014
`WL 4930803, at *4 (E.D. Va. Oct. 1, 2014); accord Ronald A. Katz, Tech. Licensing LP v. Am.
`Airlines, Inc., 639 F.3d 1303, 1311-12 (Fed. Cir. 2011).
`
`
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`-4-
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`“could not function”—especially because “plaintiffs routinely assert . . . dozens of patents with
`
`dozens of claims” “in hundreds of patent cases each year.” VLSI Tech. LLC v. Intel Corp., No.
`
`CV 18-0966-CFC, 2020 WL 4437401, at *2 (D. Del. Aug. 3, 2020); accord Straight Path IP Grp.,
`
`Inc. v. Apple Inc., No. C 16-03582 WHA, 2017 WL 1365124, at *2 (N.D. Cal. Apr. 13, 2017)
`
`(“Our patent system has descended from a time-honored system wherein a few selected claims of
`
`one or two patents would be asserted to a regime in which entire ‘portfolios’ of patents are hurled
`
`at successful lines of products in the hope that somehow, in some way, at least one of the claims
`
`will stick. The burden this portfolio practice places on judges and juries has become enormous.”).
`
`“Thus, as a practical matter, . . . [if] district courts could never limit the number of claims asserted
`
`by a plaintiff . . . [their] docket[s] would grind to a halt.” VLSI Tech., 2020 WL 4437401, at *2.
`
`I.
`
`THIS COURT SHOULD ORDER PM/ALTRIA TO IDENTIFY, AND LIMIT, THE
`PATENTS AND CLAIMS THAT IT INTENDS TO PURSUE AT TRIAL
`
`A.
`
`Courts across the country have frequently limited the number of patents
`and/or the number of claims that a party is permitted to assert at trial,
`especially at this stage of the litigation.
`
`
`
`In exercising their authority to limit the number of patents or claims asserted by a party,
`
`courts generally “look to the number of patents and claims at issue and the feasibility of trying the
`
`claims to a jury.” See, e.g., Midwest Athletics, 545 F. Supp. 3d at 21; Thought, Inc. v. Oracle
`
`Corp., No. 12-cv-05601-WHO, 2013 WL 5587559, at *2 (N.D. Cal. Oct. 10, 2013).4 Relevant
`
`here, courts have repeatedly emphasized that a defendant is not required to “make a prima facie
`
`showing of duplication in order to require a reduction in the number of asserted claims.” Thought,
`
`
`4 Courts may, but are not required to, also consider secondary factors, including whether
`the asserted claims share common genealogies or are otherwise duplicative. See, e.g., Jiaxing
`Super Lighting Elec. Appliance Co. v. Maxlite, Inc., No. LACV 19-4047 PSG (MAAx), 2020 WL
`3980122, at *1 (C.D. Cal. Mar. 31, 2020); accord Straight Path, 2017 WL 1365124, at *2. That
`issue is not relevant here because none of the Counterclaim Patents share common genealogies.
`
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`Inc., 2013 WL 5587559, at *2; accord Universal Elecs. Inc. v. Roku Inc., No. SACV 18-1580 JVS
`
`(ADx), 2019 WL 1878351, at *3 (C.D. Cal. Mar. 14, 2019); Memory Integrity, LLC v. Intel Corp.,
`
`No. 3:15-cv-00262-SI, 2015 WL 6659674, at *3 (D. Or. Oct. 30, 2015).
`
`
`
`Instead, courts routinely employ “[c]ase narrowing orders, whether through the reduction
`
`of claims which indirectly reduce the number of patents or through the direct reduction of
`
`patents, . . . where the number of asserted patents and claims make the case impracticable to
`
`manage.” Midwest Athletics & Sports All., LLC v. Xerox Corp., No. 6:19-CV-06036-EAW-JWF,
`
`Recommendation of Special Master, Dkt. No. 149, at 14 (W.D.N.Y. Feb. 3, 2020). That rationale
`
`is echoed in decisions across the country, in which courts have ordered a party reduce the number
`
`of asserted patents and claims. See, e.g., Midwest Athletics, 545 F. Supp. 3d at 19-21 (adopting
`
`the Special Master’s recommendation, and ordering the plaintiff to reduce the number of patents
`
`from twenty to eight at the dispositive motion stage, and to further reduce the number of patents
`
`to four prior to trial); Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2011 WL 12209477,
`
`at *1 (N.D. Cal. May 3, 2011) (emphasizing that plaintiff’s attempt to assert 132 claims from seven
`
`patents was “too much,” and ordering plaintiff to reduce the number of claims to three—thereby
`
`reducing the number of patents by at least four—to “ensure that only a triable number of these
`
`items . . . are placed before the jury”); LG Display Co. v. AU Optronics Corp., 686 F. Supp. 2d
`
`429, 434 & n.1 (D. Del. 2010) (highlighting that the court ordered “the parties to reduce the number
`
`of patents and claims asserted to a total of four patents and seven claims per side” to streamline
`
`the case); see also Huawei Techs., Co. v. Samsung Elecs. Co., No. 3:16-cv-02787-WHO, Order
`
`Regarding Case Mgmt. Proposals, Dkt. No. 143, at 2 (N.D. Cal. June 2, 2017) (ordering parties to
`
`reduce the number of asserted patents to five per side, and the number of claims to ten per side,
`
`one week after close of expert discovery); Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-00630-
`
`
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`LHK, Case Mgmt. Order, Dkt. No. 471, at 2 (N.D. Cal. Apr. 24, 2013) (requiring the parties to
`
`limit the number of asserted patents to five per side, and the number of claims to five per side, to
`
`streamline the case for a twelve-day jury trial). In issuing such orders, each of those courts has
`
`recognized the practical difficulties associated with requiring a lay jury to grapple with several
`
`complex patents in a single trial.
`
`
`
`Courts consistently also have adopted a similar approach concerning the number of
`
`asserted patent claims, including by ordering parties who assert an unworkable number of claims—
`
`like PM/Altria does here—to reduce those claims in advance of trial (and, in many cases, even
`
`prior to the close of fact or expert discovery). See, e.g., Glaukos Corp. v. Ivantis, Inc., No. SACV
`
`18-00620 JVS (JDEx), 2021 WL 4539047, at *2 (C.D. Cal. Aug. 11, 2021) (ordering the plaintiff,
`
`in a two-patent case, to reduce the number of claims from twenty-three to ten prior to trial);
`
`Sherwin-Williams Co. v. PPG Indus., No. 17-1023, 2021 WL 1110568, at *5-6 (W.D. Pa. Mar. 23,
`
`2021) (ordering the plaintiff, in a five-patent case, to reduce the number of claims from twenty-
`
`four to ten, and acknowledging “the practical difficulties involved in addressing [24 claims] within
`
`the time allotted for trial”); Plastipak Packaging, Inc. v. Premium Waters, Inc., No. 20-cv-098-
`
`wmc, 2021 WL 719029, at *1 (W.D. Wis. Feb. 24, 2021) (requiring the plaintiff, in a twelve-patent
`
`case, to reduce the number of claims from seventy-one to twenty-one prior to the filing of
`
`dispositive motions); Rehrig Pac. Co. v. Polymer Logistics (Israel), Ltd., No. CV 19-4952-MWF
`
`(RAOx), 2019 WL 8161141, at *5-6 (C.D. Cal. Aug. 30, 2019) (ordering plaintiff, in a five-patent
`
`case, to reduce the number of claims from sixty-eight to fifteen, even prior to the start of
`
`discovery); Honeywell Int’l Inc. v. Rsch. Prods. Corp., No. 17-cv-723-wmc, 2018 WL 9669751,
`
`at *1-2 (W.D. Wis. Apr. 17, 2018) (ordering the plaintiff, in an eight-patent case, to reduce the
`
`number of asserted claims from seventy-one to sixteen, prior to the close of expert discovery);
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`-7-
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`Acantha LLC v. DePuy Orthopaedics Inc., No. 15-C-1257, 2017 WL 5186376, at *4 (E.D. Wis.
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`Nov. 8, 2017) (ordering the plaintiff to reduce the number of asserted claims, from sixty-eight to
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`ten, prior to the close of fact discovery); Straight Path, 2017 WL 1365124, at *2 (requiring the
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`plaintiff, in a five-patent case, to reduce the number of asserted claims from thirty-eight to ten);
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`Gentherm Canada, Ltd v. IGB Auto., Ltd., No. 13-11536, 2016 WL 1170801, at *2 (E.D. Mich.
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`Mar. 25, 2016) (ordering the plaintiff, in a seven-patent case, to reduce the number of asserted
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`claims to fourteen, and emphasizing that limiting the plaintiff “to two claims per patent is both
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`reasonable and within standard practice of other district courts”); Memory Integrity, 2015 WL
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`6659674, at *3 (requiring the plaintiff, in a five-patent case, to reduce the number of asserted
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`claims from 112 to 15, where the plaintiff had “more than a year to conduct discovery” and the
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`defendant had provided to the plaintiff “its invalidity contentions and an explanation of its non-
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`infringement positions”); Joao Control & Monitoring Sys., LLC v. Ford Motor Co., No. 13-CV-
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`13615, 2014 WL 106926, at *3-4 (E.D. Mich. Jan. 10, 2014) (ordering the plaintiff, in a five-patent
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`case, to limit the number of asserted claims to fifteen, and emphasizing that “limiting the number
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`of asserted claims to one to three claims per patent would be consistent with the approaches of
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`various district courts”); Hearing Components, Inc. v. Shure, Inc., No. 9:07CV104, 2008 WL
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`2485426, at *1 (E.D. Tex. June 13, 2008) (requiring the plaintiff, in a three-patent case, to limit
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`the number of claims to “no more than three (3) representative claims from each patent”—i.e., no
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`more than nine claims total—“for claim construction and trial”); Fenster Fam. Pat. Holdings, Inc.
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`v. Siemens Med. Sols. USA, Inc., No. 04-0038 JJF, 2005 WL 2304190, at *3 (D. Del. Sept. 20,
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`2005) (ordering the plaintiff, in an eight-patent case, to reduce the number of asserted claims from
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`ninety to ten, and acknowledging that while its decision was “obviously arbitrary,” “it is
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`appropriate from the viewpoint of the typical patent litigation”).
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 14 of 19 PageID# 30590
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`
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`Here, it is simply not feasible for PM/Altria to try all 45 asserted claims across the five
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`Counterclaim Patents in the time allotted for the trial in this case—a fact not even PM/Altria
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`denies. See Ex. A. Indeed, given their technical nature, the 5 Counterclaim Patents and 45 asserted
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`claims are beyond “what a court can and should place before a jury.’” Midwest Athletics, 545 F.
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`Supp. 3d at 21 (citation omitted).
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`B.
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`Courts in this district have exercised their authority to manage their dockets
`by limiting the number of patent claims asserted at various stages of litigation.
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`
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`Courts in this District have similarly limited the number of patent claims a party can assert
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`at trial. In Certusview, for example, the plaintiff filed a patent infringement action alleging that
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`the defendant infringed sixty-eight claims across five patents. See 2014 WL 4930803, at *1. Prior
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`to claim construction, the defendant “filed a motion to limit the number of asserted claims to . . . 32
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`before claim construction and [to] 10 after claim construction.” Id. at *1 (internal quotation marks
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`and citation omitted). The court denied that motion, but emphasized that “it would ‘gladly
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`entertain a renewed motion by Defendants’ if Plaintiff failed to ‘adequately limit its claims within
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`a timely manner after receiving the relevant discovery to which it is entitled.’” Id. (citation
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`omitted).
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`
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`Several months after the claim construction hearing—but prior to the close of fact and
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`expert discovery—the Certusview defendant again requested that the plaintiff agree to limit the
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`number of claims being asserted. Id. at *2. After the parties were unable to reach agreement, the
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`defendant renewed its motion. Id. In opposition, the plaintiff asserted that it was “too early for
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`[the plaintiff] to reasonably limit the number of claims it will assert because [the plaintiff] ha[d]
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`not had ‘sufficient discovery concerning the accused product and [the defendant’s] positions on
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`infringement and validity.’” Id. at *3 (citation omitted).
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 15 of 19 PageID# 30591
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`
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`The court disagreed. See id. at *5. In ordering the plaintiff to reduce the number of asserted
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`claims, it emphasized that “the parties do not dispute the appropriateness of limiting the number
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`of claims that [the plaintiff] may assert at trial. Rather, [the parties] dispute the number of claims
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`[the plaintiff] should be allowed to assert and the timing of when [the plaintiff] should be required
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`to limit its claims.” Id. (internal citation omitted). Finding that the plaintiff “had the benefit of
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`[the] Court’s Markman Opinion” for more than four months, and a “substantial opportunity to
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`obtain discovery regarding [the defendant’s] invalidity and non-infringement contentions,
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`including [the defendant’s] expert report on invalidity,” the court ordered the plaintiff to select
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`fifteen representative claims. Id.5
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`
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`Other courts in this District have echoed that approach. See, e.g., Rembrandt Social Media,
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`LP v. Facebook, Inc., No. 1:13cv00158, Order, Dkt. No. 178, at 1 (E.D. Va. July 12, 2013)
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`(ordering plaintiff, in a two-patent case, to reduce the number of claims from twenty-five to nine
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`approximately one month after Markman hearing, and underscoring that “[p]rior to trial, the
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`number of claims will be reduced further to [three or four] claims per patent at most”); Limelight
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`Networks, Inc. v. XO Commn’ns, LLC, No. 3:15-cv-720-JAG, Order, Dkt. No. 208, at 1-2 (E.D.
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`Va. Oct. 31, 2016) (ordering the “parties to limit their claims to ten (10) per side” approximately
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`two months after the Markman hearing because the parties “had ample opportunity to determine
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`which claims they wish to assert,” in light of the “extensive discovery” that had taken place); BASF
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`Plant Sci., LP v. Commonwealth Sci. & Indus. Rsch. Org., No. 2:17-cv-503, Order, Dkt. No. 276,
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`5 Notably, and “in accordance with the Federal Circuit’s decision in Katz,” the Certusview
`court underscored that the plaintiff was permitted to move “for leave to assert any unselected
`claims upon a showing of good cause.” Id.; see also id. at *4 (“[T]he Federal Circuit has held that
`a district court may limit the number of patent claims a plaintiff may assert without depriving the
`plaintiff of due process of law as long as the court provides the plaintiff with the ability to assert
`additional claims upon a showing of good cause.”).
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`Case 1:20-cv-00393-LO-TCB Document 1148 Filed 03/11/22 Page 16 of 19 PageID# 30592
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`at 2 (E.D. Va. May 3, 2019) (ordering plaintiffs-counterclaimants, in a sixteen-patent case, to limit
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`the number of patent claims to ten just days after the court issued its Markman order, thereby
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`necessarily reducing the number of patents at issue by at least six). Indeed, several courts in this
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`District have required a party to reduce the number of asserted claims in the early stages of
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`discovery, even prior to a Markman hearing. See, e.g., Biedermann Techs. GmbH & Co. v. K2M,
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`Inc., No. 2:18cv585, 2019 WL 8353309, at *2 (E.D. Va. June 11, 2019) (ordering plaintiff, in an
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`eleven-patent case, to reduce the number of claims from one hundred forty-eight to forty prior to
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`the Markman hearing, and emphasizing that the case would “not go to the jury with forty claims,”
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`with “the Court anticipat[ing] a significant further reduction in claims . . . after further discovery
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`and issuance of the Court’s Markman opinion”); Centripetal Networks, Inc. v. Cisco Sys., Inc.,
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`No. 2:18cv94, Order, Dkt. No. 75, at 1 (E.D. Va. Oct. 10, 2019) (ordering plaintiff, in a five-patent
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`case, to reduce the number of asserted claims from one hundred forty-one to ten approximately
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`three months prior to Markman hearing).
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`C.
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`Now is the time for PM/Altria to identify—and limit—the number of patents
`and claims that it intends to pursue at trial.
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`
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`Proceeding to trial asserting 45 patent claims, as PM/Altria is here, is unworkable.
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`PM/Altria knows this. Now is the time for PM/Altria to layout, identify, and limit the claims it
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`plans to present to the jury. Courts are understandably hesitant to allow a party to try an
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`unworkable number of patents and patent claims to a lay jury, especially where—as here—the
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`patents and technology at issue are technical and require multiple expert witnesses. See, e.g.,
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`Midwest Athletics, 545 F. Supp. 3d at 21; see also Memory Integrity, 2015 WL 6659674, at *2;
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`Joao Control, 2014 WL 106926, at *3. PM/Altria has tried to tie its own responsibility to limit
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`the number of claims it will present to the jury to a reduction in the number of prior art references
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`and combinations Reynolds will rely on at trial. See Ex. B. This is a faulty premise. First, a