Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 1 of 6 PageID# 30644
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and Counterclaim
`Defendants,
`
`v.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.
`
`Defendants and Counterclaim
`Plaintiffs.
`
`Civil Action No. 1:20-cv-393-LO-TCB
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`PMI/ALTRIA’S REPLY BRIEF IN SUPPORT OF MOTION REQUESTING TO BE
`HEARD ON PRIOR ART DISPUTE AT MARCH 18, 2022 HEARING
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`PMI/Altria recognize the Court’s determination that “there is a triable issue of fact as to
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`whether the ‘374 Patent is entitled to the earlier June 29, 2010 filing date of the 949 PCT” (Dkt.
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`803 (Aug. 5, 2021 Order) at 2). However, the Court “encouraged [the Parties] to confer with each
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`other to see what action (if any) would be necessary to resolve this issue” of whether the Chinese
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`utility patent (“CN ’667”) qualifies as prior art if a jury finds that the ’374 patent is entitled to the
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`earlier priority date. Dkt. 947 (Feb. 7, 2022 Order) at 5 n.2.
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`PMI/Altria has worked to resolve this issue with RJR without success, despite RJR having
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`already lost this identical issue before the U.S. Patent Office Patent Trial and Appeals Board
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`(“PTAB”). In particular, RJR sought inter partes review (“IPR”) on the same Chinese utility
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`application, CN ’667, but the PTAB denied institution precisely because CN ’667 is not prior art
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`because it has the same inventor as the ’374 patent and is thus not “of another” as the statute
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`Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 2 of 6 PageID# 30645
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`requires. In its October 27, 2021 decision denying IPR institution, the PTAB expressly rejected
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`RJR’s proffer of CN ’667 as prior art, concluding that “that [CN ’667] does not describe a work
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`of another and, as such, does not qualify as prior art under § 102(a).” R.J. Reynolds Vapor
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`Company v. Altria Client Services LLC, IPR2021-00793, Paper 7 at 6 (PTAB Oct. 27, 2021)
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`(Exhibit A); see also id. (“The record evidence persuasively demonstrates that the ’374 patent and
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`[CN ’667] have a common inventive entity.”). PMI/Altria submit that the Court should conclude
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`the same based on the undisputed record and should do so before trial.
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`There is no dispute on the facts, no dispute on the law, and no basis for RJR to continue to
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`dispute that CN ’667 is not statutory prior art. RJR admitted in open court last July that the
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`inventors on the ’374 patent and CN ’667 are the same person:
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`Dkt. 818 (July 16, 2021 Hearing Tr.) at 30:22-23; see also Dkt. 1144-2 at 2 (Feb. 23, 2022 email
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`from RJR outside counsel stating “Reynolds does not dispute that CN 667 has the same inventor
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`as the ’374 patent ….”). The Court’s February 7, 2002 Order recognized that “RJR appears to
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`concede that Mr. Liu is the same person . . . .” Dkt. 947 (Feb. 7, 2022 Order) at 5 n.2.
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`RJR itself recognizes—as it must—that under the statute and governing Federal Circuit
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`precedent, a patent that is not “by another” cannot be prior art under pre-AIA § 102(a). Dkt. 735
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`(RJR’s Opp. to Summary Judgment) at 13 (“PMP and Altria’s cited decisions[] hold that a
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`reference does not qualify as prior art under Section 102(a) unless it came from someone other
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`than the inventor of the challenged patent”); see also Trebro Mfg., Inc. v. Firefly Equip., LLC, 748
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`F.3d 1159, 1169 (Fed. Cir. 2014). As discussed, the PTAB has already so concluded.
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`RJR contends that “PM/Altria forfeited any argument about the common inventorship of
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`2
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`Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 3 of 6 PageID# 30646
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`the ’374 patent and CN ’667” due to alleged discovery infractions. Dkt. 1149 (RJR’s Opp. to
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`Mot.) at 1. No so. As explained in PMI/Altria’s summary judgment briefing, RJR’s argument is
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`both baseless and irrelevant, for at least two reasons. Dkt. 751 (PMI/Altria’s Reply to Summary
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`Judgment) at 12-15. First, as explained above and as the PTAB has already ruled, the undisputed
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`facts foreclose CN ’667 from being pre-AIA § 102(a) prior art as a matter of law. Second, RJR
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`has the burden to establish CN ’667 as prior art. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576
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`(Fed. Cir. 1996) (“By challenging the validity of the [] patent, [the Defendant] bore the burden of
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`persuasion by clear and convincing evidence on all issues relating to the status of the Cook catalog
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`as prior art.”). On this record, just as the PTAB determined in denying RJR’s IPR petition, RJR
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`cannot meet its burden of showing that CN ’667 is prior art under pre-AIA § 102(a) as a matter of
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`law.
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`This should end the inquiry. However, RJR has made an untimely, post-discovery claim
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`that “even if the priority date of the ’374 patent is in 2010, as PM/Altria alleges, CN ’667 qualifies
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`as prior art under 35 U.S.C. §102(d) (pre-AIA).” Dkt. 1149 (RJR’s Opp. to Mot.) at 2. But once
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`again, RJR’s position runs afoul of long-settled, controlling Federal Circuit precedent. And
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`contrary to RJR’s assertion, PMI/Altria has not “abandon[ed]” the contention that § 102(d) does
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`not apply.1
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`As explained in PMI/Altria’s summary judgment briefing, the pre-AIA § 102(d) bar only
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`applies when the invention patented in the foreign country and the invention patented in the United
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`States is the “same invention.” Dkt. 751 (PMI/Altria’s Reply to Summary Judgment) at 15-16;
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`1 RJR’s Opposition does not assert that CN ’667 is prior art under pre-AIA §§ 102(b) or (e), but to
`extent it tries to pursue these baseless arguments, they are (also) without merit and contrary to
`settled law for the reasons explained in PMI/Altria’s prior briefing. Dkt. 696 (PMI/Altria’s Memo.
`in Support of Summary Judgment) at 23.
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`3
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`

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`Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 4 of 6 PageID# 30647
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`see also In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993); MPEP § 2135. Consistent with that
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`requirement, the Federal Circuit explained that the § 102(d) bar can “cause[] an inventor to lose
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`the right to a patent by delaying the filing of a patent application too long after having filed a
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`corresponding patent application in a foreign country.” OddzOn Prods., Inc. v. Just Toys, Inc.,
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`122 F.3d 1396, 1402 (Fed. Cir. 1997) (emphasis added). RJR does not dispute that CN ’667 and
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`the ’374 patent are not the same invention. Indeed, RJR does not argue that CN ’667 anticipates
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`the ’374 patent, but rather that it in combination with other references renders it obvious. See
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`Dkt. 694 (PMI/Altria Sealed Memo. ISO Mot. for Summary Judgment) at 20-21 (summarizing
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`evidence). Consequently, CN ’667 is not a bar to the ’374 patent under pre-AIA § 102(d). And
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`this interpretation of pre-AIA § 102(d) is not, as RJR wrongly suggests, inconsistent with § 103,
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`as the Federal Circuit has made clear that pre-AIA § 102(d) is a “loss-of-right” provision, not a
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`“prior art” provision and has “no relation to § 103 and no relevancy to what is ‘prior art’ under §
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`103.” OddzOn, 122 F.3d at 1402 (internal citations omitted).
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`PMI/Altria respectfully submits that the Court should resolve this issue prior to trial. If the
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`jury determines that the ’374 patent is entitled to its earlier priority date, there is no need for the
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`jury to further address any arguments based on CN ’667, as it is not prior art as a matter of law.
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`Dated: March 17, 2022
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`Respectfully submitted,
`
`1
` /s/ W. Sutton Ansley
`W. Sutton Ansley (VSB No. 80085)
`sutton.ansley@weil.com
`Robert T. Vlasis III (pro hac vice)
`robert.vlasis@weil.com
`Stephanie Adamakos (pro hac vice)
`stephanie.adamakos@weil.com
`WEIL, GOTSHAL & MANGES LLP
`
`1
`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`Lawrence J. Gotts (VSB No. 25337)
`lawrence.gotts@lw.com
`Matthew J. Moore (pro hac vice)
`matthew.moore@lw.com
`Jamie Underwood (pro hac vice)
`
`4
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`

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`Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 5 of 6 PageID# 30648
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`2001 M Street, NW, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000; Fax: 202-857-0940
`
`Elizabeth Stotland Weiswasser (pro hac vice)
`elizabeth.weiswasser@weil.com
`Anish R. Desai (pro hac vice)
`anish.desai@weil.com
`WEIL, GOTSHAL & MANGES LLP
`767 5th Avenue
`New York, NY 10153
`Tel: (212) 310-8000; Fax: 212-310-8007
`
`Adrian C. Percer (pro hac vice)
`adrian.percer@weil.com
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000; Fax: 850-802-3100
`
`Counsel for Plaintiffs Altria Client Services LLC
`and Philip Morris USA Inc.
`
`jamie.underwood@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (202) 637-2201
`
`Clement J. Naples (pro hac vice)
`clement.naples@lw.com
`LATHAM & WATKINS LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200; Fax: (212) 751-4864
`
`Gregory K. Sobolski (pro hac vice)
`Greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Tel: (415) 391-0600; Fax: (415) 395-8095
`
`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Tel: (312) 876-7700; Fax: (312) 993-9767
`
`Counsel for Plaintiffs Altria Client Services
`LLC, Philip Morris USA Inc., and Philip Morris
`Products S.A.
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`5
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`Case 1:20-cv-00393-LO-TCB Document 1155 Filed 03/17/22 Page 6 of 6 PageID# 30649
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of March, 2022, a true and correct copy of the
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`foregoing was served using the Court’s CM/ECF system, with electronic notification of such
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`filing to all counsel of record.
`
`1
`/s/ W. Sutton Ansley
`W. Sutton Ansley (VSB No. 80085)
`WEIL, GOTSHAL & MANGES LLP
`2001 M Street, NW, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000
`Fax: 202-857-0940
`Email: sutton.ansley@weil.com
`
`Counsel for Plaintiffs Altria Client Services
`LLC and Philip Morris USA Inc.
`
`6
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