Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 1 of 7 PageID# 32103
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`v.
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and Counterclaim Defendants,
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`
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
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`Defendants and Counterclaim Plaintiffs.
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`Case No. 1:20-cv-00393-LO-TCB
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`REYNOLDS’S OPPOSITION TO MOTION TO LIMIT THE NUMBER OF PRIOR ART
`REFERENCES AND PRIOR ART COMBINATIONS FOR THE ’911 PATENT
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 2 of 7 PageID# 32104
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`INTRODUCTION
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`In its March 21 Order, the Court instructed Altria and Philip Morris to identify a
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`reasonable number of claims to be presented at trial, and Reynolds to thereafter identify a
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`reasonable number of prior art references and combinations to be presented at trial. See Dkt.
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`1157. The parties then filed a joint submission on April 20, 2022, identifying those claims and
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`prior art references and combinations. See Dkt. 1197. The Court’s review of that submission
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`remains pending. See Dkt. 1157 (stating that, after reviewing the parties’ joint submission, “the
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`Court will decide how to proceed and whether any further limitations to the claims and/or pieces
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`of prior art is necessary before trial”).
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`PM/Altria’s motion “to limit the number of prior art references and prior art
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`combinations for the ’911 patent”—specifically, the prior art and combinations for claim 2 of the
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`’911 patent—fails to respect the Court’s Order and process,1 and offers no justification for the
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`motion. PM/Altria instead offers only its bald assertion that Reynolds’s “6 references and 6
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`combinations for a single asserted claim is neither realistic nor reasonable.” Mot. Memo. at 1.
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`This is divorced from the relevant facts: the limitations of claim 2, the other claims of the ’911
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`patent that PM/Altria continues to assert, and the asserted references and combinations—none of
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`which PM/Altria even sets forth in its motion.
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`Moreover, Reynolds already has limited its prior art references and combinations twice.
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`First, in its expert report on invalidity of the ’911 patent, Reynolds’s expert relied on far fewer
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`1 As Exhibit 1 to its Motion, PM/Altria attached an incomplete email chain that improperly
`suggests that Reynolds was unwilling to meet and confer with PM/Altria. See Dkt. 1211-1. The
`complete record shows, however, that Reynolds did meet and confer with PM/Altria to discuss
`the requested clarification of Reynolds prior art references and combinations for the ’911 patent.
`See Exhibit 1 to Reynolds’s Opposition. PM/Altria did not thereafter raise any concern about the
`references and combinations for claim 2 of the ’911 patent until it filed the instant motion on
`Friday, April 29, 2022. See Exhibit 2 to Reynolds’s Opposition.
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 3 of 7 PageID# 32105
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`references and combinations than Reynolds had previously identified in its invalidity
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`contentions. Then, on April 20, Reynolds further reduced the number of prior art references and
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`combinations in response to PM/Altria’s court-ordered reduction of claims, eliminating two
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`primary prior art references in their entirety and eliminating all of the obviousness combinations
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`based on those two references. PM/Altria is still asserting three different claims from the ’911
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`patent, each with different limitations. For these three still-asserted ’911 patent claims, Reynolds
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`has already narrowed its invalidity case to combinations based on three primary prior art
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`references and three secondary prior art references. Thus, as directed by the Court, Reynolds has
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`already narrowed the prior art to a reasonable number to present at trial, and PM/Altria’s motion
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`should be denied.
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`ARGUMENT
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`PM/Altria’s motion asks the Court to view the prior art references and combinations
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`Reynolds identified on asserted claim 2 of the ’911 patent in a vacuum. The Court should
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`decline to do so. While PM/Altria correctly states that Reynolds identified multiple prior art
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`combinations against claim 2 (Mot. Memo. at 1), it ignores that the references and combinations
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`are similar to and overlap with those identified as invalidating claims 11 and 12 of the ’911
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`patent—and PM/Altria does not seek any reduction of references or combinations for claims 11
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`or 12. Specifically, Reynolds identified four references (Xia, Cho, and Han as primary
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`references in combination with Shizumu) applicable to all three asserted claims of the ’911
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`patent (claims 2, 11, and 12) and added two additional references (Murphy or Egilmex,
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`highlighted below) to show the additional “capillary material” limitation recited in claim 2:
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`-2-
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 4 of 7 PageID# 32106
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`See Dkt. 1197 at 2. After choosing to assert dependent claim 2, which requires a “capillary
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`material” limitation not recited in any of the other asserted claims, PM/Altria should not be
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`surprised Reynolds identified prior art references disclosing that specific limitation. Indeed,
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`PM/Altria’s request to limit Reynolds to three prior art references and two prior art combinations
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`against claim 2 would unfairly restrict Reynolds’s ability to show the “capillary material”
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`limitation recited in claim 2 was known in the prior art and claim 2 is invalid.
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`PM/Altria also fails to explain how Reynolds’s presentation of Murphy or Egilmex to
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`show the capillary limitation was known in the prior art would multiply proceedings or confuse
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`the jury.2 To the contrary, considering the still-asserted claims of the ’911 patent, Reynolds’s
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`reliance on three primary and three secondary prior art references to show three claims in a
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`single patent are invalid fits squarely within the bounds of what courts addressing this issue
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`(including in this district) routinely permit. For instance, in Certusview, the court allowed the
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`defendants to maintain up to twenty-five prior art references (without also placing any limits on
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`2 PM/Altria, by contrast, still is asserting nearly twenty claims across five patents, a number that
`remains unworkable for a jury trial. Mindful of the Court’s March 18 Order, however, Reynolds
`has not asked the Court to intervene and will await the Court’s guidance. See Dkt. 1157.
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`-3-
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 5 of 7 PageID# 32107
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`obviousness combinations) after the plaintiff limited its asserted claims to fifteen. Certusview
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`Techs., LLC v. S & N Locating Servs., LLC, No. 2:13cv346, 2014 WL 4930803, at *7 (E.D. Va.
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`Oct. 1, 2014). Similarly, in Unwired, the court found that the number of prior art references the
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`accused infringer could rely on should be a function of the claims asserted by patentee and
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`permitted the defendant to rely on five prior art references per independent claim asserted and
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`eight references per dependent claim for trial. Unwired Planet LLC v. Google Inc., No. 3:12-
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`CV-0504-MMD (VPC), 2013 WL 5592896, at *5 (D. Nev. Oct. 10, 2013); see also Memory
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`Integrity, LLC v. Intel Corp., No. 3:15-cv-00262-SI, 2015 WL 6659674, at *4 (D. Or. Oct. 30,
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`2015) (requiring the accused infringer to limit its prior art references to thirty-five after plaintiff
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`narrowed its asserted claims to fifteen). Thus, courts regularly find that the reasonable number
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`of prior art references to be presented to a jury should be proportional to the number of claims
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`asserted, not micromanaged on a claim-by-claim basis as PM/Altria would have the Court do
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`here. PM/Altria has offered no reason to adopt that practice now.
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`For the foregoing reasons, Reynolds respectfully requests that PM/Altria’s motion be
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`CONCLUSION
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`denied.
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`-4-
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 6 of 7 PageID# 32108
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`Dated: May 4, 2022
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`
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`Stephanie E. Parker
`JONES DAY
`1221 Peachtree Street, N.E.
`Suite 400
`Atlanta, GA 30361
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@jonesday.com
`
`
`Anthony M. Insogna
`JONES DAY
`4655 Executive Drive
`Suite 1500
`San Diego, CA 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Email: aminsogna@jonesday.com
`
`William E. Devitt
`JONES DAY
`110 North Wacker Drive
`Suite 4800
`Chicago, IL 60606
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@jonesday.com
`
`Sanjiv P. Laud
`JONES DAY
`90 South Seventh Street
`Suite 4950
`Minneapolis, MN 55402
`Telephone: (612) 217-8800
`Facsimile: (844) 345-3178
`Email: slaud@jonesday.com
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`Respectfully submitted,
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`
`
` /s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
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`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: (212) 326-3939
`Facsimile: (212) 755-7306
`Email: jjnormile@jonesday.com
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`
`Alexis A. Smith
`JONES DAY
`555 South Flower Street
`Fiftieth Floor
`Los Angeles, CA 90071
`Telephone: (213) 243-2653
`Facsimile: (213) 243-2539
`Email: asmith@jonesday.com
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`Charles B. Molster
`THE LAW OFFICES OF
`CHARLES B. MOLSTER, III PLLC
`2141 Wisconsin Avenue, N.W. Suite M
`Washington, DC 20007
`Telephone: (202) 787-1312
`Email: cmolster@molsterlaw.com
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`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
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`-5-
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`Case 1:20-cv-00393-LO-TCB Document 1213 Filed 05/04/22 Page 7 of 7 PageID# 32109
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 4th day of May, 2022, a true and correct copy of the foregoing
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`was served using the Court’s CM/ECF system, with electronic notification of such filing to all
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`counsel of record.
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`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`
`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
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`