Case 1:20-cv-00393-LO-TCB Document 1306-1 Filed 06/09/22 Page 1 of 5 PageID# 33291
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`PHILIP MORRIS PRODUCTS S.A.
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`Plaintiff,
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`v.
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`R.J. REYNOLDS VAPOR COMPANY
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`Defendant.
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`Case No. 1:20-cv-00393-LO-TCB
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`PHILIP MORRIS’S MOTION IN LIMINE TO EXCLUDE REFERENCE TO
`REYNOLDS’S PATENTS
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`Case 1:20-cv-00393-LO-TCB Document 1306-1 Filed 06/09/22 Page 2 of 5 PageID# 33292
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`Philip Morris respectfully moves the Court in limine to preclude Reynolds from
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`introducing, through Dr. Figlar or any other witness, evidence or argument that Reynolds’s patents
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`cover the accused products. Reynolds’s counsel previewed during its opening statement that it
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`intends to present evidence that Reynolds does not infringe because it has its “own patents” that
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`cover the accused products:
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`The plaintiffs claim that Reynolds took their technology and is using their patent,
`but Reynolds didn't need to do that. Reynolds had its own technology, it had its
`own patents, and had done all of this work. The products, the Vuse products of the
`Reynolds technology is a result of its own work.
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`Tr. 137:1-5. Not only is there no evidence in the record to support such an assertion, such
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`testimony should be precluded as irrelevant and prejudicial, and further as lacking any foundation
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`or support.
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`Courts routinely exclude evidence of an alleged infringer’s patents because it is legally
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`irrelevant to infringement and is an improper attempt “try to take advantage of a common
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`misconception by the public that a patent grants an affirmative right to make the patented article.”
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`EZ Dock, Inc. v. Schafer Systems, Inc., 2003 WL 1610781, *11 (D. Minn. Mar. 8, 2013); see also
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`LifeNet Health v. LifeCell Corp., 93 F. Supp. 3d 477, 509 (E.D. Va. 2015), aff’d, 837 F.3d 1316
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`(Fed. Cir. 2016) (excluding evidence of defendant’s patents because it would mislead the jury and
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`stating that “the Court [is] on notice that Defendant had such intent because it stated in its opening
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`statement that it did not infringe because it had its own patent.”); Cf. Bio-Technology Gen. Corp.
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`v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (holding that “the existence of one’s own
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`patent does not constitute a defense to infringement of someone else’s patent”); see also Fiskars,
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`Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed. Cir. 2000) (affirming district court’s exclusion
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`of evidence that defendant’s patents covered the accused product because such evidence was not
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`“material to the issue of infringement”); Conceptus, Inc. v. Hologic, Inc., No. C 09-02280 WHA
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`Case 1:20-cv-00393-LO-TCB Document 1306-1 Filed 06/09/22 Page 3 of 5 PageID# 33293
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`(N.D. Cal. Sept. 27, 2011), Dkt. No. 433 at 5 (granting plaintiff’s motion in limine “to exclude
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`evidence, testimony, and argument concerning [defendant’s] patents”); Intellectual Ventures I LLC
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`v. Symantec Corp., C.A. No. 10-1067-LPS (D. Del., Jan. 6, 2015), Dkt. No. 615 at 2 (similar).
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`Reynolds should not be permitted to present evidence or suggest to the jury (again) that it
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`has its own patents that cover the accused products. Such irrelevant evidence will be prejudicial
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`to Philip Morris under FRE 401 and 403 and will only serve to confuse the jury. Moreover, no
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`expert has opined that any of the accused products are covered by any Reynolds patents, and the
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`Court should not allow Dr. Figlar to offer that irrelevant and prejudicial opinion for the first time
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`now.
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`Dated: June 9, 2022
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` Respectfully submitted,
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`By: /s/ Maximilian A. 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
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`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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`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
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`Case 1:20-cv-00393-LO-TCB Document 1306-1 Filed 06/09/22 Page 4 of 5 PageID# 33294
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`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`Counsel for Plaintiff Philip Morris Products
`S.A.
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`Case 1:20-cv-00393-LO-TCB Document 1306-1 Filed 06/09/22 Page 5 of 5 PageID# 33295
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 9th day of June, 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 A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (202) 637-2201
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