Case 1:20-cv-00393-LO-TCB Document 1228 Filed 05/13/22 Page 1 of 9 PageID# 32310
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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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`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 PM/ALTRIA’S MOTION TO FURTHER AMEND
`THEIR IDENTIFICATION OF CLAIMS FOR TRIAL
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`Case 1:20-cv-00393-LO-TCB Document 1228 Filed 05/13/22 Page 2 of 9 PageID# 32311
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................................................... 1
`BACKGROUND ........................................................................................................................... 1
`ARGUMENT ................................................................................................................................. 2
`CONCLUSION .............................................................................................................................. 4
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`CASES
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`TABLE OF AUTHORITIES
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`Page
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`Certusview Techs., LLC v. S & N Locating Servs., LLC,
`No. 2:13-cv-346, 2014 WL 4930803 (E.D. Va. Oct. 1, 2014) ..................................................2
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`INTRODUCTION
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`PM/Altria’s request to add to its list of patent claims for trial does not comply with the
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`Court’s March 21 Order, and is prejudicially late. As PM/Altria told the Court on May 5, this
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`case is “on the eve of trial.” Dkt. 1220 at 3. Yet, in an about-face the very next day, PM/Altria
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`asked the Court for permission to add to the list of asserted claims it will present at trial. Dkt
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`1221. It is too late for PM/Altria to move the goal posts. The Court’s March 21 Order directed
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`PM/Altria to identify the asserted patent claims for trial on April 5. Relying on PM/Altria’s
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`Court-ordered identification of claims, Reynolds has been actively engaged in trial preparations
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`for over five weeks now. And, as directed by the Court’s March 21 Order, Reynolds already
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`made decisions tailoring its invalidity case to the particular asserted patent claims PM/Altria
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`identified on April 5. See Dkt. 1197. There is no good cause for permitting PM/Altria to expand
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`the asserted patent claims at this late date, long after it was ordered to make its claim selection
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`for trial. Reynolds has relied on that identification and will be prejudiced if a new asserted
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`patent claim is added only three weeks (or less) before the start of trial. PM/Altria’s Motion
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`should be denied.
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`BACKGROUND
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`As recently as two months ago, PM/Altria still was asserting forty-five patent claims
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`across five patents. On March 11, Reynolds moved to limit the number of asserted claims for the
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`June 6 trial, Dkt. 1146, and PM/Altria opposed, Dkt. 1153. Following a hearing, the Court
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`issued an Order on March 21 directing PM/Altria to “choose a reasonable number of claims to be
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`presented at trial” and “to communicate those claims” to Reynolds by April 5. Dkt. 1157.
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`PM/Altria identified nineteen claims across the five asserted patents, including three claims from
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`the ’911 patent. See Ex. 1. Claim 13 of the ’911 patent was not among them. Id. Reynolds, in
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`turn, was directed to identify the prior art references and combinations to be presented at trial
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`based on the particular patent claims selected by PM/Altria, Dkt. 1157, and Reynolds did so on
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`April 20, Dkt. 1197.
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`As also directed by the Court, the parties then filed a joint submission on April 20
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`identifying the asserted patent claims and the prior art references and combinations for trial. Id.
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`Subsequently, PM/Altria asked the Court to further limit the number of prior art references and
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`combinations Reynolds can assert at trial against the ’911 patent “by no later than May 6,”
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`arguing that the approaching June 6 trial meant it was “time to choose” and “time to pick” a
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`reduced number of prior art references and combinations. Dkt. 1211; see also Dkt. 1220 at 3.
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`Reynolds opposed. Dkt. 1213. That motion remains pending.
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`While simultaneously urging the Court to further reduce Reynolds’s invalidity case for
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`trial, PM/Altria now asks the Court for permission to expand its infringement case to add claim
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`13 of the ’911 patent to its list of claims to present at trial. Dkt. 1221. PM/Altria acknowledges
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`that ’911 claim 13 recites additional limitations (including a “toroidal shape” limitation) not
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`found in any of the other ’911 claims identified by PM/Altria on April 5, Dkt. 1222 at 2, but
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`offers no justification for its untimely addition.
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`ARGUMENT
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`PM/Altria should not be permitted to add claim 13 of the ’911 patent more than five
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`weeks after the Court’s deadline for PM/Altria to select the asserted patent claims to be
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`presented at trial because it offers no good reason for doing so. See Certusview Techs., LLC v. S
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`& N Locating Servs., LLC, No. 2:13-cv-346, 2014 WL 4930803, at *4 (E.D. Va. Oct. 1, 2014)
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`(recognizing good cause required to assert additional, unselected claims). Indeed, PM/Altria
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`does not identify any unique issues of infringement or damages for trial implicated by claim 13.
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`See id. (grounding good cause to add claims for trial on a showing by the patentee that the
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`additional claims “present unique issues of liability or damages”). To the contrary, PM/Altria
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`accuses the same Reynolds products (Ciro, Solo, and Vibe) of infringing claim 13 as it does the
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`already-asserted claim 11 of the ’911 patent. PM/Altria thus fails to show good cause to include
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`’911 claim 13 to the fast-approaching June 6 trial.
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`Practically, PM/Altria took a “free look” at Reynolds’s selection of prior art for the
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`particular ’911 claims PM/Altria properly identified (as ordered by the Court) on April 5, and
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`PM/Altria now want to add a different ’911 patent claim—with different limitations—after
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`Reynolds has already narrowed and committed to certain prior art positions across the full set of
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`claims asserted for trial. PM/Altria argues claim 13 “has been at issue since the inception of the
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`case” and intimates Reynolds would suffer no prejudice because its expert opined on the same
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`prior art combinations for claim 11 as for claim 13 that PM/Altria seeks to add. Dkt. 1222 at 1-2.
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`But this argument misses the point. PM/Altria since narrowed its list of claims for trial, on
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`April 5. That list included only claims 2, 11, and 12 of the ’911 patent, not its claims 1, 9, or 13
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`(or other patent claims). Thus, when Reynolds, on April 20—in response to that list—identified
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`the prior art references and combinations it may present at trial to show claims 2, 11, and 12 are
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`invalid as obvious, Reynolds relied on PM/Altria’s April 5 choice not to assert claims 1, 9, and
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`13 at trial. Dkt 1197. For example, in selecting prior art for trial based on PM/Altria’s April 5
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`claim identification, Reynolds opted to forego two primary references (Yang and Choi), along
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`with all the prior art combinations based on those primary references. See Dkt. 1222-1 at TOC.
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`Had PM/Altria included claim 13 in its Court-ordered April 5 disclosure of asserted claims,
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`Reynolds may have chosen different prior art references or combinations in the subsequent
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`Court-ordered April 20 submission. Dkt. 1197. Instead, Reynolds sacrificed certain prior art
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`references and combinations in reliance on PM/Altria’s April 5 disclosure of the ’911 patent
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`claims that would be asserted at the June 6 trial.
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`PM/Altria suggests its requested relief is simply a matter of swapping in claim 13 of the
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`’911 patent while swapping out claim 4 of the ’374 patent. Dkt. 1222 at 2. Not so. True,
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`PM/Altria’s proposed “amendment” would maintain the total number of patent claims for trial at
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`nineteen. But permitting PM/Altria to add claim 13 of the ’911 patent now, when the Court
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`ordered the patent claim selection to be made by April 5, will have deprived Reynolds of crucial
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`time—more than five weeks—to prepare its non-infringement and invalidity cases for trial on
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`claim 13. In that regard, PM/Altria concedes that claim 13 includes additional and different
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`limitations not found in any of the asserted ’911 claims PM/Altria identified to Reynolds over
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`five weeks ago, on April 5. See Dkt. 1222 at 2.
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`As for ’374 patent claim 4, PM/Altria’s proposal to remove that claim from its
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`identification of asserted claims merely demonstrates that PM/Altria is prepared to go to trial
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`without that claim. Reynolds does not object to withdrawal of ’374 claim 4 from the list of
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`claims to be presented at trial.
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`CONCLUSION
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`It is simply too late, with trial set to start in about three weeks, for PM/Altria to expand
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`the case and belatedly add to its list of asserted patent claims. PM/Altria’s motion should be
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`denied.
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`Case 1:20-cv-00393-LO-TCB Document 1228 Filed 05/13/22 Page 8 of 9 PageID# 32317
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`Dated: May 13, 2022
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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
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`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
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`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
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`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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`Case 1:20-cv-00393-LO-TCB Document 1228 Filed 05/13/22 Page 9 of 9 PageID# 32318
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th 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
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`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
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