Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 1 of 7 PageID# 32321
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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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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`v.
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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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`COUNTERCLAIM PLAINTIFFS’ REPLY IN SUPPORT OF THEIR MOTION TO
`FURTHER AMEND THEIR IDENTIFICATION OF CLAIMS FOR TRIAL
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 2 of 7 PageID# 32322
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ...............................................................................................................1
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`ARGUMENT .......................................................................................................................1
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`III.
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`CONCLUSION ....................................................................................................................3
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 3 of 7 PageID# 32323
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`I.
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`INTRODUCTION
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`Reynolds’ opposition needlessly complicates that PMP/Altria should be allowed to include
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`claim 13 of the ’911 Patent for trial while voluntarily withdrawing claim 4 of the ’374 Patent.
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`There will be no increase in the number of asserted claims. There is no prejudice or surprise.
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`Claim 13 has been at issue for nearly two years. PMP/Altria inadvertently omitted claim 13 from
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`the list of asserted claims for just twelve days before notifying Reynolds five weeks before trial is
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`set to begin. See Dkts. 1197, 1213-2. Moreover, claim 13 presents unique infringement issues
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`because it is directed to a particular type of cavity shape (“toroidal”). And Reynolds will have the
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`opportunity to identify a reasonable number of prior art references and combinations for claim 13.
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`See Dkt. 1157. Reynolds can even choose from the prior art references and combinations that it
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`purportedly decided to “forego.” Dkt. 1228 (“Opp.”) at 3. The Court should grant PMP/Altria’s
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`Motion.
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`II.
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`ARGUMENT
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`Reynolds’ unsubstantiated and overwrought assertions of surprise and prejudice fail for
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`four reasons.
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`First, Reynolds argues that PMP/Altria’s request would “expand its infringement case.”
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`Opp. at 2 (emphasis original). That is incorrect. PMP/Altria will voluntarily withdraw claim 4 of
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`the ’374 Patent. The total number of asserted claims is unchanged; it will not increase. There is
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`no “expansion” of the case for trial.
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`Second, Reynolds argues there is no good cause for adding claim 13. That is incorrect. As
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`Reynolds’ cited case confirms, good cause exists when the claim at issue “presents a unique issue
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`with respect to liability or damages.” Certusview Techs., LLC v. S & N Locating Servs., LLC, No.
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`2:13-cv-346, 2014 WL 4930803, at *5 (E.D. Va. Oct. 1, 2014) (emphasis in original). Then “a
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`district court must provide the plaintiff with the opportunity to assert [that] additional, unselected
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 4 of 7 PageID# 32324
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`claim[].” Id. at *4. Claim 13 relates to a part of the e-cigarette device that has a “toroidal shape.”
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`Reynolds admits that this limitation is “not found in any of the other ’911 claims identified” by
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`PMP/Altria. Opp. at 2. The addition of claim 13 implicates “unique issues of infringement . . .
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`for trial.” Id. There is good cause—especially given that claim 13 has been at issue for nearly two
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`years, was inadvertently omitted for just twelve days, and corrected five weeks before trial. See
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`Dkt. 1213-2.
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`Third, Reynolds argues it supposedly “opted to forego two primary references (Yang and
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`Choi), along with all the prior art combinations based on those primary references” as to the other
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`asserted claims of the ’911 Patent. Opp. at 3. Initially, this is a red herring: Reynolds was able to
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`choose whatever references and combinations it wanted. In any event, if the Court grants this
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`Motion, Reynolds will have an opportunity to make a “reasonable” selection of references and
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`combinations for claim 13, including Choi and Yang. See Dkt. 1157. That is because Reynolds’
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`expert relies on the exact same five prior art combinations for claim 13 as for claim 11, which is
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`currently asserted. See Dkt. 1222-1. Reynolds can choose a “reasonable” number of prior art
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`combinations from these five options, just like it did for claim 11.
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`Finally, Reynolds argues that adding claim 13 “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 claim
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`13.” Opp. at 4. That is inaccurate, at best. Claim 13 has always been part of this case. Reynolds
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`took fact and expert discovery on claim 13 for nearly two years, after PMP/Altria filed their
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`counterclaims in June 2020. See Dkts. 39-40. PMP/Altria inadvertently proposed to drop claim
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`13 on April 20, 2022 in response to the Court’s claim reduction order. See Dkts. 1157, 1197. After
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`just 12 days (on May 2, 2022) and a full five weeks before the start of trial, PMP/Altria proposed
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`to correct that inadvertent mistake and swap claim 4 of the ’374 Patent for claim 13 of the ’911
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 5 of 7 PageID# 32325
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`Patent. See Dkt. 1213-2. Thus, Reynolds has not had just five weeks to prepare its defenses to
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`claim 13—it has had nearly two years, only twelve days during which claim 13 was inadvertently
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`not included. Moreover, Reynolds’ expert relies on the exact same five prior art combinations for
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`claim 13 as for asserted claim 11, which is currently asserted. See Dkt. 1222-1. There is no
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`prejudice and there is no surprise.
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`III. CONCLUSION
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`The Court should grant this Motion to (i) add claim 13 of the ’911 Patent, which has been
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`asserted throughout the case, and (ii) in turn voluntarily remove claim 4 of the ’374 Patent
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`(ensuring the total number of claims for trial does not increase).
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`Dated: May 16, 2022
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` Respectfully submitted,
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`By: /s/ Maximilian 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)
`jamie.underwood@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (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
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 6 of 7 PageID# 32326
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`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
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`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
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`Counsel for Defendants-Counterclaim Plaintiffs
`Altria Client Services LLC, Philip Morris USA
`Inc., and Philip Morris Products S.A.
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`Case 1:20-cv-00393-LO-TCB Document 1229 Filed 05/16/22 Page 7 of 7 PageID# 32327
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 16th 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/ Maximilian Grant
`Maximilian A. Grant (VSB No. 91792)
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`Email: max.grant@lw.com
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`Counsel for Defendants-Counterclaim
`Plaintiffs Altria Client Services LLC, Philip
`Morris USA Inc., and Philip Morris
`Products S.A.
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`5
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