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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`Civil Action No. 1:20-cv-393
`Hon. Liam O’Grady
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`ORDER
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`RAI STRATEGIC HOLDINGS,INC., et. al.,
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`Plaintiffs,
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`V.
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`ALTRIA CLIENT SERVICES, LLC,et. al.,
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`Defendants.
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`Introduction
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`This matter comes before the Court on the Motions in limine filed by both Parties in the
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`present case. The Motionsare listed in the table below. For the sake of convenience, the original
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`Plaintiffs will be referred to as “RAI”and the original Defendants will be referred to as “PMA.”
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`RAI’s MIL 9, Exclude reference to CAD diagram
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`RAI’s MIL 11, exclude evidence regarding the IQOS device
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`RAI’s Daubert motion on Joseph McAlexander
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`PMA’s MIL2, Precludepriorart testimony in RAI’s stipulation
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`PMA’s MIL3, priorart invalidity must be disclosed in expert reports
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`PMA’s MIL4,no reference to practicing prior art as non-infringment
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`PMA’s MIL5, experts cannot rely on hearsay conversations
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`PMA’s MIL6,the Court should find RAI has “control” over its suppliers
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`PMA’s MIL7,limit testimony of RAI’s corporate representative
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`PMA’s MIL8, no reference to RAI’s patent infringement claims
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`PMA’s Motion to exclude expert’s rejected claim constructions
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`PMA’s Daubert motion on David Clissold
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`2
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`The motions have been fully briefed, the Court has heard oral arguments, and the matteris ripe
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`for consideration.
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`Background
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`The Counterclaim Plaintiffs in this case are Philip Morris USA Inc., Phillip Morris
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`Products SA, and Altria Client Services LLC (collectively “PMA”), PMA brings claimsofpatent
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`infringement against
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`the Counterclaim Defendants, RAI Strategic Holdings Inc. and R.J.
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`Reynolds Vapor Company(collectively “RAI”)'. The Parties in this case are corporations who
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`sell electronic cigarette products. Dkt. 199 at 20.
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`PMAasserts five ofits patents against RAI’s VUSESolo, Ciro, Vibe, and Alto products
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`(the “accused products”). These products are electronic cigarettes. The asserted patents all claim
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`different technologies that can be used in electronic cigarettes. The asserted patents are U.S.
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`Patent Numbers 6,803,545 (“the ’545 Patent”), 10,420,374 (“ the °374 Patent”), 9,814,265 (“the
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`265 Patent”), 10,104,911 (“the ’911 Patent”) and 10,555,556 (“the 556 Patent”). Dkts. 65, 66.
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`PMAasserts the °556 against the VUSE and the ’265 Patents against the Alto. PMAasserts the
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`other three patents against all four Accused Products. Dkt. 915 at 8.
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`Discussion
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`1. PMA’s Motion in limine #1
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`PMAargues that Reynolds should be barred from presenting non-comparable licensing
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`agreements as evidence. Dkt. 901 at 7. PMA seeksto preclude the introduction of any agreement
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`In some filings the Parties refer to the group of Counterclaim Defendants as
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`“Reynolds.”
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`that is non-comparable to a hypothetical negotiation between the Parties as evidence of those
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`agreements would not be relevant and would be unfairly prejudicial. Jd. PMA also argues that
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`agreements not identified as comparable in RAI’s interrogatories should be precluded from
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`evidence based on Federal Civil Rule of Procedure 37. /d. at 9. PMA’s broad Motion does not
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`identify a specific agreement, but rather asks the Court to conclude that any agreement, except
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`for the three agreements identified by its expert, are not comparable.
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`A license must be comparable to be relevant to establishing a reasonable royalty rate. See
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`Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011) (‘there must be a
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`basis in fact to associate the royalty rates used in prior licenses to the particular hypothetical
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`negotiation at issue in the case.”) For evidence of a comparable license to be used as proof of
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`damages, that evidence must be tied to “the claimed invention’s footprint in the market place.”
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`ResQNet.com, Inc., v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010) (citations omitted).
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`PMA argues that RAI’s damages expert, Ryan Sullivan, will present evidence based on
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`non-comparable licenses from both his expert report and deposition testimony. To support this
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`argument, PMA discusses a prior agreement between PMA anda third-party to purchase a
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`European patent application for the technology claimed in the ’265 patent (an asserted patent in
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`this case). Sullivan’s expert report says that “[t]he circumstances surrounding these agreements
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`do notreflect the economic circumstances...” of the negotiations between the Parties. Dkt. 901-2
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`at 28. In his deposition testimony, Sullivan explains that he does not rely on this specific
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`agreement for the valuation of the ‘265 patent. Dkt. 901-3 at 5. However, RAI argues that this
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`does not make the agreement for the purchase of the ‘265 patent
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`irrelevant because the
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`agreement can still be used because the purchaseprice isstill relevant to the valuation of the
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`patent. Dkt. 965 at 8-9,
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`PMAalso argues that Rule 37 should bar the introduction of any specific licenses or
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`agreements not disclosed in response to one oftheir interrogatories. Dkt. 901 at 9. PMA argues
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`that the holding of MLC Intell. Prop, LLC v. Micron Tech., Inc., requires that this evidence
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`should be excluded from trial. 10 F.4th 1358, 1369 (Fed. Cir. 2021). In MEC Jntell. Prop., the
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`Federal Circuit upheld the district court’s ruling that an expert’s testimony was inadmissible
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`because the underlying agreement was not identified in an interrogatory inquiring about the
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`specific basis for an expert report. /d. at 1373. In that case, the district court struck portions of
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`the disputed testimony according to Federal Rule of Civil Procedure 37(c)(1) when the basis for
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`the report was never disclosed. /d. In the present case, the agreement has undisputedly been
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`disclosed and the Parties have been aware of the agreement prior to trial. The Court has not
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`struck any portion of an expert’s report based on a discovery motion. In addition, PMA’s
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`interrogatory was broad and did not seek specific factual information which was subsequently
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`never disclosed. The holding of the MLC Intell. Prop., does not apply to the circumstances of
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`this currentcase.
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`The agreement discussed to purchase the ‘265 patent’s predecessor involves the exact
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`technology at dispute in this case and was an agreement madebyoneofthe Parties in this case.
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`Accordingly, the Court does not find that the agreement has no relevanceto the calculation of
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`damagesandit therefore may be admissible. Federal Rule of Civil Procedure 37(c) does not bar
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`the admission of this agreement because both Parties have been aware of this specific agreement
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`well in advance of the date of trial. Evidence regarding the 265 agreementwill be admissible at
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`trial provided that either Party seeking to introduce this agreement can lay a proper foundation
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`for its relevance. Beyond the agreement regarding the ‘265 patent, PMA’s Motion is overly
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`broad. Specific evidence or testimony can be objected to contemporaneously if there is a proper
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`basis for exclusion. Therefore, PMA’s Motionin limine is DENIED.
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`2. PMA’s Motion in limine #2
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`PMAasserts that RAI is bound by previousstipulations to not raise prior art references to
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`argue obviousness or anticipation as to the ‘545 and ‘556 patents. Dkt. 901 at 9. RAI has
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`petitioned the United States Patent and Trademark Office for Inter Partes Review (“IPR”) of the
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`two patents. Based on this petition, RAI has stipulated that it would not “pursue as to the
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`challenged claims any groundsraised or that could have been reasonably raised in the IPR”for
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`the ‘545 and ‘556 patents. Dkt. 8-6; Dkt. 895-7. Based on the stipulations, PMA wants the Court
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`to “preclude RJR from presenting argument, evidence or testimony at trial based on ‘556 and
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`‘545 Patents allegedly practicing thepriorart.” Dkt. 901 at 11. In response, RAI contendsthatit
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`can rely on the prior art as evidence of invalidity based on the lack of written description (under
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`35 USC §112) and as evidencethat is relevant to the calculation of damages. RAI representsthat
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`its expert witnesses will reference the prior art only to support arguments that are not subject to
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`estoppel.
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`During IPR, a party may challenge a patent “only on a ground that could be raised under
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`section 102 or 103 and only on the basis of prior art consisting of patents or printed
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`publications.” 35 USC §311(b). The Federal Circuit has explained that estoppel based on Inter
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`Partes Review (“IPR”) prohibits the petitioner from raising “all grounds not stated in the petition
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`but which reasonably could have been asserted against the claims included in the petition.” Cal.
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`Inst. of Tech. v. Broadcom Ltd., 2022 U.S. App. LEXIS 3179 at *29 (Fed. Cir. 2022) (The
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`Appeals Court clarified the scope of estoppel based on the statutory text of 35 USC §315(e)(2)).
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`RAI could not have raised an invalidity argument for lack of written description during IPR in
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`accordance with the text of 35 USC §311(b).
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`RAIhas represented that the defenses for obviousness and anticipation as to the ‘556 and
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`‘345 patents will not be presented at trial. Because these defenses will not be argued, the Motion
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`is GRANTED.If RAI wishes to introducea pieceofprior art that would otherwise be precluded
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`by their stipulation or this Order, they may moveattrial to introduce that prior art upon a
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`showing of good cause.
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`3. PMA’s Motion in limine #3.
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`PMAhassought to preclude RAI from introducing “argument, evidence or testimony
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`aboutprior art invalidity not disclosed in expert reports.” Dkt. 901 at 5. RAI believes this motion
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`is vague and would preclude RAI from arguing evidence that is necessary for purposes other
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`than an invalidity argument. Dkt. 965 at 12. PMA also represents that “it is not seeking to
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`excludeprior art used to only show the state of the art.” Dkt. 1101. Neither party has identified
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`any specific prior art that would be affected by the disposition of this motion. Individual exhibits
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`of prior art can be contemporaneously objected to before they are entered into evidence.
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`Therefore, this Motion is DENIED.
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`4. PMA’s Motion in limine #4.
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`PMAwants the Court to preclude RAI from arguing that the accused products are similar
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`to the prior art. Dkt. 901 at 12. PMA makes this Motion based on the expert report of RAI’s
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`technical expert, Kelly Kodama, who will discuss how the accused devices have a similar
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`capillary construction as the prior art (the same prior art that RAI argued should invalidate the
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`‘556 Patent during IPR). RAI onthe other hand contends that Mr. Kodama’s testimony is offered
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`for the sake of rebutting the testimony of PMA’s expert, Dr. Abraham. Dkt. 965 at 14. RAI
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`believes Dr. Abraham will
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`testify (based on his expert report) that the ‘556 Patent offers
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`significant benefits over the prior art. Dkt. 965 at 14 (“Dr. Abraham alleges that the technology
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`of the ‘556 patent provided cost savings due to (1) a reduction of material used; and (2) a
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`reduction of wasted e-liquid.”)
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`It is undisputed by the Parties that there is no ‘practicing the prior-art defense’ to claims
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`of infringement. See Tate Access Floors v. Interface Architectural Res., 279 F.3d 1357, 1366
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`(Fed. Cir. 2002) (“literal infringement is determined by construing the claims and comparing
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`them to the accused device, not by comparing the accused deviceto theprior art.”) (citing Baxter
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`Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1583 (Fed. Cir. 1995) (“Questions of
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`obviousnessin light of the prior art go to validity of the claims, not to whether an accused device
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`infringes.”)) RAI has represented that they will not argue a practicing the prior-art defense. Dkt.
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`965 at 13. Based on the representation that RAI will not attempt to argue that the accused
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`products do not infringe because they are like the prior art,
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`the Court finds that Kodama’s
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`testimony mightstill be relevant for other valid reasons depending on the disposition of PMA’s
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`case in chief. The Court will RESERVE RULING on this Motion until there has been further
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`developmentofthe recordattrial.
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`5. PMA’s Motion in limine #5
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`PMAhas moved the Court to exclude expert testimony that is based on conversations
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`with “undisclosed third-parties” and hearsay evidence. Dkt. 901 at 9. PMA argues that this
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`testimony should be precluded becauseit is inadmissible hearsay and because the disclosure of
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`the third-party witnesses was untimely and did not comply with the Court’s previous orders
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`during discovery. Dkt. /d. at 9-10.
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`The evidence in question is the expert report of Dr. Jeffrey Schuling, a technical expert
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`on the technology in the ‘265 patent.” See Dkt. 901-9 at 3. Dr. Schuling analyzed a resistor that
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`generates heat in response to an electrical stimulus. /d. at 4. Dr. Schuling analyzed videos and
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`images produced by one of RAI’s suppliers, Smoore, who manufacturers the component in
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`question. /d. Dr. Schuling then “confirms his understanding” of the video with two scientists
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`who work for Smoore and are the third parties identified in this Motion. Dkt. 901-9 at 7. The
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`third-party scientists also had discussions with Dr. Schuling about the manufacturing and design
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`process of the component. Dkt. 901-9 at8.
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`Federal Rule of Evidence 703 will govern the admissibility of this portion of Dr.
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`Schuling’s testimony. Rule 703 allows an expert to rely on facts that they have been “made
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`aware”of. In addition,if “the facts or data would otherwise be inadmissible, the proponent of the
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`opinion may disclose them to the jury only if their probative value in helping the jury evaluate
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`the opinion substantially outweighs their prejudicial effect.” Federal Rule of Evidence 703. The
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`Fourth Circuit? has explained that expert testimony is admissible when that expert personally
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`analyzed the data and cameto an opinion on their own initiative. Huber v. Howard County, 1995
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`U.S. App. LEXIS 12604 at *15 (4th Cir. 1995) (unpublished) (ref, Doe v. Cutter Biological, Inc.,
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`971 F.2d 375, 385-386 (9th Cir. 1992); see also United States v. McLean, 695 Fed. Appx. 681,
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`(4th Cir. 2017) (unpublished)(In a criminal context the test for admission of testimonial hearsay
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`was whether an expert was giving testimony that is their own independent judgment); United
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`States v. Johnson, 587 F.3d 625, 635 (4th Cir. 2009) (An expert must be more than a “conduit for
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`hearsay”).
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`2 The ‘265 patent claims a “permeable electric thermal resistor foil for vaporizing fluids
`from single-use mouthpieces with vaporizer membranes.”
`3 The admissibility of evidence is decided by the law of the regional circuit where a
`district court sits. See Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1465
`(Fed. Cir. 1998).
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`In the current case, Dr. Schuling’s report shows that he applied his own (undisputed)
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`expert knowledge to evaluate the data. Although it appears the third-party witnesses did more
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`than confirm and authenticate Dr. Schuling’s understanding, this is not a basis to find the
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`testimony inadmissible. Dr. Schuling’s credentials are not challenged, and his expert report
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`unequivocally demonstrates the application of empirical knowledge based on facts that were
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`“made known” (through observation of a controlled experiment with scientific equipment). Dkt.
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`901-9 at 4-5. Dr. Schuling’s testimony would be useful to the jury and is admissible evenif it
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`references otherwise inadmissible hearsay. PMA has not demonstrated another exclusionary
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`basis for this part of Dr. Schuling’s testimony.
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`PMAarguesthat the production of the video was not timely because of a previous Order
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`during discovery that directed RAI to produceall responsive technical documents from suppliers
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`by November 13, 2020. Dkt. 304. The currently disputed documents were produced in March
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`2021, before the close of discovery in April of 2021. Dkt. 965 at 16. PMA has been aware of the
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`expert report and the video for over a year and the references within Dr. Schuling’s report have
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`been identified. There is no unfair prejudice from the production and use of this segment of the
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`expert report. In addition, PMA will still be able to challenge Dr. Schuling’s independent
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`conclusions on cross-examination. The Court finds that the testimony is admissible. The Motion
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`in limine is DENIED.
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`6. PMA’s Motion in limine #6.
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`PMA has movedthe Court to preclude RAI from arguing that it lacks control over the
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`suppliers that manufactured the accused products. Dkt. 901 at 15. PMA argues that the Court has
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`already found that RAIhas control over its suppliers based on an Order granting PMA’s previous
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`Motion to Compel during the discovery process. Dkt. 901 at 15 (ref, Dkt. 203).
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`Willfulness is a question offact for the jury. See Harris Corp. v. Ericsson Inc., 417 F.3d
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`1241, 1258-1259 (Fed. Cir. 2005) (The Appeals Court upheld a jury finding of willfulness that
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`“could reasonably have been based” onthe “particular facts of the case.”) An evidentiary basis is
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`necessary to find direct control of a parent company over a subsidiary. Tegal Corp. v. Tokyo
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`Electron Co., 248 F.3d 1376, 1379 (Fed. Cir. 2001) (“In the absence of evidence showing that
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`the parent company either was an alter ego of the subsidiary or controlled the conduct of the
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`subsidiary, we refused to find direct
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`infringement.”) (citing A. Stucki Co. v. Worthington
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`Industries, Inc., 849 F.2d 593, (Fed. Cir. 1988)). Questions regarding the level and degree of
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`institutional control of a third party are a matter of fact that must be decidedat trial. The Court’s
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`previous Order did not decide this factual question. Accordingly,
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`this Motion in limine is
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`DENIED.
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`7, PMA’s Motionin limine #7.
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`PMAarguesthat the RAI witness, Dr. James Figlar, should be precluded from testifying
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`as an expert witness. Dkt. 901 at 16. PMA wants Dr. Figlar to be prohibited from testifying on
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`issues of non-infringement or invalidity. /d. at 17. In response, RAI argues that Dr. Figlar will
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`not be offered by RAI as an expert witness and will not give testimony as an expert witness. DKt.
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`965 at 14.
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`Both Parties cite to CertusView Techs., LLC v. S&N Locating Servs. LLC, which is
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`instructive on the admissibility of the disputed testimony. 2016 U.S. Dist. LEXIS 178812 at *4
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`(E.D. Va. March 7, 2016). In CertusView Techs., the Court held that an inventor could not give
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`testimony comparingpriorart and the claimsof a patent because the witness was not disclosed as
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`an expert, however the witness could still testify about his own perception of the patented
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`invention.
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`/d. at *4-5. In addition,
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`the Fourth Circuit allows lay witnesses to testify about
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`“particularized knowledge that the witness had by virtue of his position.” United States v.
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`Chapman, Fed. Appx. 253, 265 (4th Cir. 2006) (unpublished) (quoting United States v. Ayala-
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`Pizarro, 407 F.3d 25, 28 (1st Cir. 2005)). However, witnesses testifying under Federal Rule of
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`Evidence 701 cannot base their testimony on “scientific,
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`technical or other specialized
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`knowledge.”
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`The Fourth Circuit has recognized the subtle distinction between testimony under Rule
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`701 and 702. United States v. Johnson, 616 F.3d 286, 293 (4th Cir. 2010) (The admission of a
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`DEAagent’s testimony was improper because the testimony was based on the agent’s experience
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`and training in the DEA andnotpersonal observations) (quoting United States v. Perkins, 470
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`F.3d 150, 155 (4th Cir. 2006) (“the fine line remains” between expert and lay testimony)). Dr.
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`Figlar represents the difficulties in cleanly drawing the line between witness testimony that will
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`fall into either lay or expert testimony. Dr. Figlar has a doctorate in Chemistry and experience
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`with the relevant technology as the Vice President of Scientific and Regulatory Affairs for RAI.
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`Dkt. 901 at 16; Dkt. 965 at 20.
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`Accordingly, Dr. Figlar is precluded from discussing theories of infringement, theories of
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`invalidity, or the patent claims. Dr. Figlar can offer testimony on the relevant technology to the
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`extent that there is an established foundation for that testimony and the testimony is based on Dr.
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`Figlar’s personal knowledgeor perceptions from his work and experience at RAI. The Motionis
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`GRANTEDIN PARTand DENIEDIN PART.
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`8. PMA’s Motion in limine #8.
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`PMAhasasked to Court to prevent RAI from referencing RAI’s claims of infringement
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`against PMA(that are currently stayed by an Order of this Court). Dkt. 901 at 17; see also Dkt.
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`426. PMA wants to exclude reference to these claims because the claims have no relevance and
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`would be unfairly prejudicial. /d. at 17-18. The Court agrees that the infringement claims have
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`no relevance to the accused devicesor the asserted patents. The Motion in limine is GRANTED.
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`9. PMA’s Motion in limine #9
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`PMAhasasked the Court to preclude the introduction of evidence or argumentrelated to
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`proceedings between the Parties before the ITC and any other pending investigations into the
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`acquisition of JUUL Labs, Inc. (another manufacturer of electronic cigarettes). Dkt. 901 at 17-
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`18. RAI argues that materials from the FTC and ITC investigations may be relevant for
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`impeachment purposes. Dkt. 965 at 27. Based on the representations made bythe Parties atoral
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`argument, the Court
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`is confident that any relevant and admissible documents from a prior
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`proceeding can be introduced by either Party without unfairly prejudicing PMA.Tothe extentit
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`becomes necessary, RAI may introduce documents or prior statements and refer to them as
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`coming from “another proceeding” or as “prior testimony.” RAI will not make statements
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`referencing any of the actual investigations into PMA,referencesto the ITC,or referencesto the
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`FTC. The Motion in limine is GRANTED. RAI will not make any reference to any
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`investigations into PMA, but documents and testimony from those proceedings maystill be
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`introduced attrial provided there is no unfairly prejudicial reference to their origin.
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`10. PMA’s Motion in limine #10
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`PMA has asked the Court
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`to prohibit RAI from introducing evidence that certain
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`electronic cigarette products were not marked by PMAaspatented because this evidence would
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`not be relevant. Dkt. 901 at 20. PMA argues that because RAI withdrew the affirmative defense
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`of failure to mark under 35 USC §287 (in response to PMA withdrawingtheir claim for pre-suit
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`infringement damages), any reference to marking should not be presented to the jury.’ /d. In
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`contention, RAI argues that not marking certain devices is probative of the claims for willful
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`_
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`infringement. Dkt. 965 at 28-29 (citing Bayer Healthcare LLCv. Baxalta Inc., 989 F.3d 964, 988
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`(Fed. Cir. 2021) (“To establish willfulness, the patentee must show the accused infringer had a
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`specific intent to infringe at the time of the challenged conduct.”)
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`In Artic Cat Inc. v. Bombardier Rec. Prods., the Federal Circuit explains the distinction
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`between the evidence required to support a finding of willfulness and a finding to support pre-
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`suit damages under 35 USC §287. 950 F.3d 860, 866 (Fed. Cir. 2020) (“...willfulness, as an
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`indication that an infringer knew ofa patent and of its infringement, does not serve as actual
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`notice as contemplated by §287.”) In Artic Cat, the Federal Circuit held that a finding of
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`willfulness is based on the knowledgeofthe infringer. /d. In contrast, to prove damages under
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`§267 it is required to show that the patentee either provided actual notice of infringement or
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`constructive notice through marking a product with an indicator that the product practices the
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`asserted patent. Jd. Despite this distinction, the Appeals Court did not hold that evidence a
`patentee did not mark a patented product
`is
`irrelevant evidence for a claim of willful
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`infringement.
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`RAI references a series of cases that found that either the marking or non-marking of
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`products was probative of an accused infringers willfulness. WBIP, LLC v. Kohler Co., 829 F.3d
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`1317, 1341 (Fed. Cir. 2016) (Evidence of a marked patented product supported a finding that
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`substantial evidence existed for a jury verdict of willful
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`infringement); Biedermann Techs.
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`GmbH & Co. KG v. K2M, Inc., 528 F. Supp. 3d 407, 427-428 (E.D. Va. 2021) (Thedistrict court
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`4 PMA also contends that RAI admits it had knowledge of the ‘545 patent before the
`devices were sold and would have been marked, therefore the marking does not have any
`bearing on willfulness, Dkt. 1101 at 19. This admission is not cited in the supporting
`memorandum and doesnot affect the disposition of this Motion.
`
`14
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`held, in dicta, that facts such as an infringer copying a marked product could be circumstantial
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`evidence to support a reasonable inference the infringer was aware of the asserted patents);
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`Centripetal Networks, Inc. v. Cisco Sys, Inc., 492 F. Supp. 495, 601 (E.D. Va. 2020) (The fact
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`that “Centripetal has marked its RuleGate product with a notice indicating the patents practiced
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`by the device” supported a finding of willful infringement). It is consistent with rulings of the
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`Federal Circuit and other courts in this district® that evidence of the presence or absence of
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`markingis probative of willful infringement.
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`The touchstone of enhanced damages for willful
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`infringement
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`is that the defendant
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`possessed “knowledge ofthe patent alleged to be willfully infringed.” WBIP, 829 F.3d at 1341
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`(citing Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016) (“But culpability is
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`generally measured against the knowledgeofthe actor at the time of the challenged conduct.”))
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`The presence or absence of marking a product tends to make the factual determination of RAI’s
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`knowledge “more or less probable than it would be without the evidence.” Federal Rule of
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`Evidence 401. There will be probative value of evidence that PMA did not mark specific devices
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`that practice the asserted patent. RAI will not introduce the withdrawn defenseto a claim for pre-
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`suit damages under 35 USC §287. Provided a proper foundation is established, RAI will be
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`allowed to introduce the evidence as relevant to a claim for willful infringement by RAI. For
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`these reasons, this Motion is DENIED.
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`11. PMA’s Motionin limine #11
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`> This Court has previously ruled that evidence of a Plaintiff's withdrawn claims as to
`withdrawn asserted patents could not be introducedat trial by the Defendantbecause that
`evidence would not be relevant to a determination of willfulness. TECSEC, Inc. v. Adobe
`Inc., 2018 WL 11388472 at *6 (E.D. Va. November 11, 2018). However,
`the
`circumstances of that case are different than the present case. In the present case, RAI
`seeks to introduce evidencerelevant to an asserted patent (the ‘545 patent) which has not
`been withdrawn and is relevant to a claim of willful infringement that has not been
`withdrawn.
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`

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`PMA’s motion seeks to prevent RAI from referencing the decision of PMAnotto assert
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`claims of infringement against third parties. Dkt. 901 at 23. PMA argues that the Motion should
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`be granted because there is no relevance of this evidence and there is a risk of unfair prejudice
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`from potential confusion. Jd. RAI contends that PMA’s decision not to license their patentsis
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`relevant to a calculation of damages. Dkt. 965 at 30. RAI also argues that the fact that PMA did
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`not assert its accused patents against other Parties is relevant to RAI’s knowledge of whether the
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`accused products infringed PMA’s patents. Id.
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`PMA’s expert Paul Meyer’s report says that Altria Client Services made projected
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`calculations based on licensing the ‘321 patent to the entire industry. Dkt. 965-17 at 3 4 156 n.
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`273. The expert report howeverreflects that this calculation was the upper bound of an economic
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`model and was even considered to be unlikely by the economic forecasters preparing the model.
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`Id. The fact that the ‘321 patent was not licensed at some time in the future has no relevance to
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`the value the Parties in a comparable negotiation had at the time that comparable license was
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`negotiated. Therefore, the evidence that PMA has notasserted or licensed its patents is not made
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`relevant by the testimony of Paul Meyer.
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`RAI argues that evidence the PMApatents have not beenassertedin litigation or licensed
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`is relevant to the knowledge RAI had that it was infringing the asserted patents. The casesthat
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`RAIcites to for support of this argument are not relevant to the current Motion; both of those
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`cases involve the district courts addressing the relevance ofpast litigation between the adverse
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`parties in those cases. See Tyco Healthcare Grp. LP v. Applied Med. Res. Corp., 2010 WL
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`11469880, at *3 (E.D. Tex. Feb. 26, 2010) Sprint Comme ’ns Co. L.P. v. Charter Comme’ns, Inc.,
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`2021 WL 982730, at *2 (D. Del. Mar. 16, 2021), In the present case, any argument that PMA did
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`not assert its patents and therefore RAI had less knowledge they infringed the patents, is an
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`

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`argumentthat presupposesthat somethird-party products infringe PMA’s asserted patents. There
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`is no factual basis to show that PMA could haveasserted their patents. To allow RAI’s use of
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`this evidence to show thatit didn’t have knowledge that it was infringing would invite improper
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`comparisonsto third party products that are not relevant to any issue to be decided in this case.
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`Therefore,
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`this evidence is unfairly prejudicial under Federal Rule of Evidence 403.
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`Accordingly, RAI cannot argue that they did not have knowledge RAI infringed the asserted
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`patents because PMAhad not sued anotherparty for infringement of those samepatents.
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`The decision of PMA whetherto bring infringement claims against any third-party is not
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`relevant to an issue to be decided at trial,
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`is misleading and may potentially be needlessly
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`confusing. For these reasons, the Motion in limine is GRANTED.
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`12. PMA’s Motion in limine #12
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`PMA hasargued