`Case 1:20-cv-00393-LO-TCB Document 1295-1 Filed 06/08/22 Page 1 of 5 PagelD# 33076
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 1295-1 Filed 06/08/22 Page 2 of 5 PageID# 33077
`
`Michalik, John M.
`Tuesday, June 7, 2022 10:02 AM
`Paul.Weinand@lw.com; RJREDVA; cmolster@molsterlaw.com
`pmiedva.lwteam@lw.com; Altria.RJRV@weil.com
`RE: Case No. 1:20-cv-00393-LO-TCB (Trial Disclosure, June 6)
`(2022-06-07 JD edits) Draft Stip re Design Arounds.DOCX
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`Attachments:
`
`Paul ‐ ‐
`
`First, we have slightly revised the original version of the stipulation you sent and removed the language that you raised
`last night and to make clear that this stipulation only relates to the presentation of evidence to the jury, and does not,
`for instance, restrict Reynolds’s ability to present evidence in connection with PMP’s injunction claim.
`
`Second, to resolve the dispute regarding your designation of Mr. Hunt’s deposition at 21:11‐21:13; and 21:20‐22:03, we
`agree to your proposed stipulation with the following addition: The parties stipulate to not challenge the accuracy of
`PX‐028, to the extent it relates to text, figures, and portions of figures apart from the corrected portions of the
`mouthpiece, consistent with the Court’s prior ruling on Reynolds’s MIL 9. We acknowledge that PM has withdrawn its
`designation of Mr. Hunt’s deposition at 23:4‐6 and 23:9‐10.
`
`Third, regarding Mr. Hunt’s deposition at 215:01‐215:16, since that questioning references “the other Vuse products”
`and “all the Vuse products,” we maintain that our counter‐designations (455:16‐19; 455:21‐22; 456:1‐5) should be
`played for completeness. Likewise, regarding Mr. Hunt’s deposition at 249:14‐250:01; 255:08‐255:12; 255:15‐255:22;
`256:03‐256:04, we maintain that our counter‐designations (257:1‐4; 257:7‐11) should be played for completeness. Also,
`your email does not mention your prior designations at 468:18‐468:21; 469:02‐469:03; 477:08‐477:10; or 477:13‐
`477:14; has PM withdrawn these designations?
`
`Fourth, we agree.
`
`Fifth, your email does not accurately reflect our agreement. For Ms. Calderon’s November 12, 2020 designations, the
`parties agreed to withdraw their respective objections provided that Reynolds will withdraw its counter designations at
`119:20 and 201:2‐3. Reynolds did not withdraw its counter designation at 116:10‐15.
`
`Sixth, regarding juror notebooks, the jurors will be instructed that all terms in the claims will have their plain and
`ordinary meaning. Thus, we see no reason to single out a specific subset of claim language that also will have their plain
`and ordinary meaning. Given that you already filed your motion, we will address this issue with the Court tomorrow.
`
`Finally, we do not believe our previous communication parsed any words. It quoted Judge O’Grady’s order on PM’s MIL
`7, which we intend to abide by.
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`110 North Wacker Drive
`Suite 4800
`Chicago, Illinois 60606
`Office +1.312.269.4215
`
`1
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 1295-1 Filed 06/08/22 Page 3 of 5 PageID# 33078
`
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Paul.Weinand@lw.com <Paul.Weinand@lw.com>
`Sent: Tuesday, June 7, 2022 12:26 AM
`To: Michalik, John M. <jmichalik@JonesDay.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com; Altria.RJRV@weil.com
`Subject: RE: Case No. 1:20‐cv‐00393‐LO‐TCB (Trial Disclosure, June 6)
`
`** External mail **
`
`John,
`
`
`We write to memorialize our discussions from tonight’s meet‐and‐confer.
`
`
`First, we do not agree with your changes to the draft stipulation, which add language suggesting that certain accused
`products are non‐infringing alternatives to the ’911 and/or ’265 patents. Reynolds’ experts never disclosed any opinion
`that these products are non‐infringing alternatives to the ’265 and ’911 patents. Dr. Sullivan never accounted for these
`products as alleged non‐infringing alternatives to the 265 and 911 patents in his damages analysis—instead, he relied
`solely on the alleged design arounds that Reynolds withdrew today. Even if they were disclosed in response to
`Interrogatory No. 4 as you contend, it is legally erroneous to suggest to the jury that these products are “non‐infringing
`alternatives” to the ’265 and ’911 patents merely because they are not accused in this case. See, e.g., Acceleration Bay
`LLC v. Activision Blizzard Inc., No. 1:16‐CV‐00453‐RGA, 2019 WL 4194060, at *5 (D. Del. Sept. 4, 2019). Please confirm
`that we have your permission to file the stipulation as originally proposed.
`
`
`Second, with respect to the objected‐to designations and counter‐designations of Mr. Hunt’s November 16, 2020
`deposition, we propose the following stipulation to resolve the parties’ objections:
`
`
` Plaintiffs will withdraw 23:4‐6 and 23:9‐10 of Mr. Hunt’s November 16, 2020 deposition designation and
`Defendants with withdraw counter‐designations to the same (305:3‐11, 305:13‐20, 208:19‐21, 309:7‐9, 309:12‐
`14, 309:16‐19). The parties stipulate to not challenge the accuracy of PX‐028, to the extent it relates to text,
`figures, and portions of figures apart from the corrected portions of the mouthpiece.
`
`
`
`Third, for Mr. Hunt’s November 16, 2020 designations at 215:1‐16, 249:14‐250:1, 255:8‐12, 255:15‐22, and 256:3‐4, our
`designations are proper. That Reynolds disagrees with the substance of Mr. Hunt’s testimony is not a proper reason to
`exclude the designations thereof. Moreover, any scope objections are waived because they were not
`contemporaneously made—and Mr. Hunt’s testimony was within the scope of his designations, regardless. We
`withdraw our designation at 52:09‐12. Further, we maintain our objections that Reynolds’ counter‐designations for Mr.
`Hunt’s November 16, 2021 deposition at 455:16‐19 and 455:21‐ 456:5 are improper, not for completeness, and beyond
`the scope of our designations.
`
`
`Fourth, for Dr. Figlar’s May 3, 2021 designations, you stated that if we agree to remove the designations starting at
`41:19 and end at 67:12, Reynolds will agree to remove all of its counter designations. Please confirm that common
`understanding in writing.
`
`
`Fifth, for Ms. Calderon’s November 12, 2020 designations, the parties agreed to withdraw their respective objections,
`and that Reynolds will withdraw its designations at 116:10‐15, 119:20, and 201:2‐3.
`
`
`Sixth, Reynolds refuses to include a simple summary of the court’s rulings on claim construction in the juror
`notebooks. The parties are at an impasse.
`
`
`2
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 1295-1 Filed 06/08/22 Page 4 of 5 PageID# 33079
`
`Finally, with respect to Dr. Figlar’s anticipated testimony, your email is parsing words, is inconsistent with your vague
`representations on the call about his anticipated testimony about the patents and product functionality and are
`inconsistent with Dr. Figlar’s explanation about the subject matter he intended to testify about at trial. Unless you can
`confirm Dr. Figlar will not testify regarding: (i) any details about the components or functionality of the accused
`products; (ii) the substance of the asserted patents; (iii) any comparison between the accused products and the asserted
`patents; and (iv) any other theories related to non‐infringement, invalidity, or the patent claims, the parties are at an
`impasse.
`
`Thanks,
`Paul
`
`Paul Weinand
`
`
`LATHAM & WATKINS LLP
`200 Clarendon Street | Boston, MA 02116
`D: +1.617.880.4580 | M: +1.609.558.8101
`
`
`From: Michalik, John M. <jmichalik@JonesDay.com>
`Sent: Monday, June 6, 2022 11:30 PM
`To: Weinand, Paul (BN) <Paul.Weinand@lw.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C‐M PMIEDVA ‐ LW TEAM <pmiedva.lwteam@lw.com>; Altria.RJRV@weil.com
`Subject: RE: Case No. 1:20‐cv‐00393‐LO‐TCB (Trial Disclosure, June 6)
`
`Counsel ‐ ‐
`
`Following up on a few items from our meet and confer, Reynolds confirms it will not present the opinions in the
`paragraphs listed below from the expert reports of Dr. Suhling, Mr. Kodama, Dr. Sullivan, and Mr. Clissold. In addition,
`regarding our proposed edits to the joint stipulation on NIAs, please see Reynolds’s 4th supplemental response to
`Interrogatory No. 4 (attached), which is consistent with our proposed edits to the stipulation on the ‘911 and ‘265
`patents. Finally, we confirm we will not elicit testimony from Dr. Figlar regarding theories of infringement, theories of
`invalidity, or the patent claims, consistent with the Court’s ruling on PM’s MIL 7.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`110 North Wacker Drive
`Suite 4800
`Chicago, Illinois 60606
`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Paul.Weinand@lw.com <Paul.Weinand@lw.com>
`Sent: Monday, June 6, 2022 8:29 PM
`To: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com; Altria.RJRV@weil.com
`Subject: Case No. 1:20‐cv‐00393‐LO‐TCB (Trial Disclosure, June 6)
`
`** External mail **
`
`John,
`
`
`3
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 1295-1 Filed 06/08/22 Page 5 of 5 PageID# 33080
`
`Pursuant to ⁋ 4 of the Parties’ Joint Trial Disclosure Agreement and Stipulation (D.I. 1244), Plaintiffs disclose the
`attached objections to Reynolds’ counter‐designations.
`
`Further, Plaintiffs will agree to drop their initial designations spanning pages 298‐417 from Eric Hunt’s April 14, 2021
`deposition if Reynolds (1) agrees to the attached stipulation and (2) agrees not to present the opinions identified below
`at trial. Please confirm before our meet and confer tonight. If we do not receive confirmation by then, we intend to
`present Mr. Hunt’s designated testimony at trial.
`
`
` Paragraphs 199‐208 of Dr. Suhling’s March 24, 2021 Rebuttal Expert Report
` Paragraphs 177‐198 of Mr. Kodama’s March 24, 2021 Rebuttal Expert Report (911)
` Paragraphs 130‐150 of Mr. Kodama’s May 14, 2021 Supplemental Expert Report (911)
` Paragraphs 119‐49 of Mr. Kodama’s May 31, 2021 Supplemental Responsive Expert Report (911)
` Paragraphs 198, 201, 282‐295, 345 (third sentence), 378 (the last three sentences) of Dr. Sullivan’s March 24,
`2021 Rebuttal Expert Report
` Paragraphs 9, 35‐38, 40, 50‐51, 55‐57 of Mr. Clissold’s March 24, 2021 Rebuttal Expert Report (and
`corresponding paragraphs in amended and supplemented report)
`
`
`Additionally, we intend file a motion with the Court regarding Reynolds’ refusal to include a simple summary of the
`court’s rulings on claim construction in the juror notebooks. Please be prepared to discuss this issue during the 9:30
`meet and confer.
`
`We also intend to seek a Court order prohibiting Dr. Figlar from providing expert testimony, including providing any
`testimony about the asserted patents or a comparison between the asserted patents and accused claims. Please be
`prepared to discuss this issue during the 9:30 meet and confer.
`
`Thanks,
`Paul
`
`Paul Weinand
`
`
`LATHAM & WATKINS LLP
`200 Clarendon Street | Boston, MA 02116
`D: +1.617.880.4580 | M: +1.609.558.8101
`
`
`_________________________________
`
`This email may contain material that is confidential, privileged and/or attorney work product for the sole use of the
`intended recipient. Any review, disclosure, reliance or distribution by others or forwarding without express permission
`is strictly prohibited. If you are not the intended recipient, please contact the sender and delete all copies including any
`attachments.
`
`Latham & Watkins LLP or any of its affiliates may monitor electronic communications sent or received by our networks
`in order to protect our business and verify compliance with our policies and relevant legal requirements. Any personal
`information contained or referred to within this electronic communication will be processed in accordance with the
`firm's privacy notices and Global Privacy Standards available at www.lw.com.
`***This e-mail (including any attachments) may contain information that is private, confidential, or protected
`by attorney-client or other privilege. If you received this e-mail in error, please delete it from your system
`without copying it and notify sender by reply e-mail, so that our records can be corrected.***
`
`4
`
`