Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 1 of 37 PageID# 33332
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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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`REYNOLDS’S ARGUMENTS AND OBJECTIONS REGARDING DISPUTED
`FINAL JURY INSTRUCTIONS (DKT. 1204-1) AND VERDICT FORM
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 2 of 37 PageID# 33333
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`TABLE OF CONTENTS
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`REYNOLDS’S ARGUMENTS AND OBJECTIONS REGARDING DISPUTED FINAL
`JURY INSTRUCTIONS (DKT. 1204-1) AND VERDICT FORM .................................. 1
`Proposed Final Instruction No. 8 – Distinction Between Fact and Expert
`Testimony .............................................................................................................. 2
`Proposed Final Instruction No. 11 – Burdens of Proof ...................................................... 4
`Proposed Final Instruction No. 12 – Summary of the Issues ............................................. 6
`Proposed Final Instruction No. 14 – Claim Construction Generally ................................. 7
`Proposed Final Instruction No. 16 – Independent and Dependent Claims ........................ 8
`Proposed Final Instruction No. 17 – Claim Scope ............................................................. 9
`Proposed Final Instruction No. 20 – Direct Infringement ............................................... 10
`Proposed Final Instruction No. 22 – Direct Infringement – Capable of
`Infringement ......................................................................................................... 11
`Proposed Final Instruction No. 29 – Summary of Reynolds’s Invalidity Defense .......... 12
`Proposed Final Instruction No. 30 – Invalidity of Independent and Dependent
`Claims .................................................................................................................. 13
`Proposed Final Instruction No. 31 – Invalidity – Burden of Proof .................................. 14
`Proposed Final Instruction No. 33 – Prior Art ................................................................. 15
`Proposed Final Instruction No. 34 – Invalidity – Prior Art Not Considered by the
`PTO ...................................................................................................................... 16
`Proposed Final Instruction No. 38 – Obviousness ........................................................... 17
`Proposed Final Instruction No. 42 – Obviousness – The Fourth Factor (Other
`Considerations) .................................................................................................... 18
`Proposed Final Instruction No. 44 – Damages – Generally............................................. 19
`Proposed Final Instruction No. 45 – Damages – Burden of Proof .................................. 20
`Proposed Final Instruction No. 46 – Damages – Date Damages Begin .......................... 21
`Proposed Final Instruction No. 47– Lump Sum vs. Running Royalty ............................ 22
`Proposed Final Instruction No. 48– Reasonable Royalty – Entitlement ......................... 23
`Proposed Final Instruction No. 49– Reasonable Royalty – Generally ............................ 24
`Proposed Final Instruction No. 51– Reasonable Royalty – Apportionment .................... 25
`Proposed Final Instruction No. 54 – Reasonable Royalty – Non-Infringing
`Alternatives .......................................................................................................... 26
`Proposed Final Instruction No. 56 – Willful Infringement .............................................. 27
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 3 of 37 PageID# 33334
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`Philip Morris’s Additional Proposed Final Instruction No. 1 – Enforcement,
`Licensing, and Use ............................................................................................... 28
`Philip Morris’s Additional Proposed Final Instruction No. 2 – Damages Period ........... 29
`Philip Morris’s Additional Proposed Final Instruction No. 3 – Patents Owned By
`Reynolds .............................................................................................................. 30
`The Parties’ Proposed Verdict Forms .............................................................................. 31
`CONCLUSION ............................................................................................................................ 32
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 4 of 37 PageID# 33335
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`REYNOLDS’S ARGUMENTS AND OBJECTIONS REGARDING DISPUTED
`FINAL JURY INSTRUCTIONS (DKT. 1204-1) AND VERDICT FORM
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`Defendant Reynolds respectfully submits the following arguments and objections
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`regarding the disputed issues remaining as to the parties’ Joint Proposed Final Jury Instructions
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`(Dkt. 1204-1), and the parties proposed verdict forms (Dkts. 1302 (Reynold’s proposed verdict
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`form), Dkt. 1313-1 (Philip Morris’s proposed verdict form)). Reynolds also responds to Philip
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`Morris’s additional proposed instructions (Dkt. 1314).
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`By presenting these arguments and objections on the remaining issues, Reynolds does not
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`concede that Plaintiff Philip Morris Products, S.A. (“Philip Morris”) has presented or will present
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`legally sufficient evidence for the jury to resolve the matters addressed by these instructions.
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`Reynolds reserves its right to propose additional instructions and submit additional argument under
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`Rule 51(a)(2).
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`Due to the narrowing of the case and issues, the following requested instructions are no
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`longer relevant and Reynolds respectfully requests that they be withdrawn: Final Proposed
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`Instructions Nos. 10, 19, 24, 25, 26, 27, 28, 32, 36, 37, 43, 54.
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`1
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 5 of 37 PageID# 33336
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`Proposed Final Instruction No. 8 – Distinction Between Fact and Expert Testimony
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`The Court has recognized that Dr. James Figlar, a witness for Reynolds, “represents the
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`difficulties in cleanly drawing the line between witness testimony that will fall into either lay or
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`expert testimony” because of his educational background (he “has a doctorate in Chemistry”) and
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`his “experience with the relevant technology as the Vice President of Scientific and Regulatory
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`Affairs for RAI.” Dkt. 1184 at 12. The Court ruled that Dr. Figlar “can offer testimony on the
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`relevant technology to the extent that there is an established foundation for that testimony and the
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`testimony is based on Dr. Figlar’s personal knowledge or perceptions from his work and
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`experience at RAI,” while he “is precluded from discussing theories of infringement, theories of
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`invalidity, or the patent claims.” Id.
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`Reynolds’s requested instruction, identified in italicized language, is an accurate statement
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`of the law, it is consistent with the Court’s order, and it will be helpful to the jury in evaluating the
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`testimony of fact witnesses, like Dr. Figlar, who have specialized knowledge relevant to the issues
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`in the case. See, e.g., MCI Telecomms. Corp. v. Wanzer, 897 F.2d 703, 706 (4th Cir. 1990) (internal
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`quotations omitted) (“The modern trend favors the admission of opinion testimony [under Rule
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`701], provided that it is well founded on personal knowledge as distinguished from hypothetical
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`facts,” and the opinion is offered “on the basis of relevant historical or narrative facts that the
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`witness has perceived.”); Henderson v. Corelogic Nat’l Background Data, LLC, No. 3:12CV97,
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`2016 WL 354751, at *2 (E.D. Va. Jan. 27, 2016) (“[T]estimony may qualify as lay witness
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`testimony even where the subject matter is ‘specialized’ or ‘technical,’ as long as the testimony:
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`(1) is based on the layperson’s personal knowledge, typically in the form of industry experience;
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`and (2) ‘results from a process of reasoning familiar in everyday life.’” (quoting Fed. R. Evid. 701
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`Advisory Committee’s Notes (2000)); B & G Plastics, Inc. v. Eastern Creative Indus., Inc., 2004
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`WL 307276, *8 (S.D.N.Y. 2004) (permitting fact witness opinion testimony on technical issues
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`2
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 6 of 37 PageID# 33337
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`under Rule 701 and noting that “a witness’ experience and specialized knowledge obtained in his
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`or her vocation should certainly be taken into consideration”); Braun Corp. v.. Maxon Lift Corp.,
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`282 F. Supp. 2d 931, 934 (N.D. Ill. 2003) (inventor’s “extensive personal experience in the
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`wheelchair lift field … permit him to testify on the structure and function of the patented invention,
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`Maxon’s accused wheelchair lift, and other technical issues”).
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`As noted in the joint filing, Reynolds does not object to the Court including Philip Morris’s
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`proposed language at the end of the instruction should it adopt Reynolds’s proposal. Dkt. 1204-1
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`at 58 n.1
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`3
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 7 of 37 PageID# 33338
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`Proposed Final Instruction No. 11 – Burdens of Proof
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`1.
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`PM/Altria’s insertion of presumption of validity. Reynolds objects to PMI/Altria’s
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`proposal to insert instruction that “A patent is presumed to be valid. In other words, it is presumed
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`to have been properly granted by the PTO.” This instruction is unnecessary, duplicative of the
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`proposed instructions on the parties’ burdens of proof, and prejudicial. The Federal Circuit has
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`affirmed district courts “in declining to include a jury instruction on the presumption of validity
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`because the jury applied the correct ‘clear and convincing evidence’ standard.” Chiron Corp. v.
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`Genentech, 363 F.3d 1247, 1259 (Fed. Cir. 2004).
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`To start, the phrase “would add little to the jury’s understanding of the burden of proof on
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`the validity issues,” since the jury will already be instructed on the clear-and-convincing-evidence
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`standard. See Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-WCB,
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`2017 WL 959592, at *1, *6 (E.D. Tex. Mar. 13, 2017) (Bryson, J.) (granting motion in limine to
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`exclude reference to the “presumption of validity”). Indeed, the phrase “might be confusing to the
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`jury” in light of the “Court’s instructions on the burden of proof.” Id. at *6. And “[a]t minimum,
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`the use of the term ‘presumption’ would require a further definitional instruction by the Court,
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`without leading to any greater insight on the jury’s part.” Id. Accordingly, Based on this same
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`reasoning, “a district court does not err if it declines to give an instruction on the presumption of
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`validity, as long as it instructs the jury that a party challenging the validity of a patent must prove
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`invalidity by clear and convincing evidence.” BNJ Leasing, Inc. v. Portabull Fuel Serv., LLC, No.
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`2:19-CV-156-KS-MTP, 2022 WL 892747, at *8 (S.D. Miss. Mar. 25, 2022).
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`Philip Morris’s proposal is also inconsistent with Judge O’Grady’s order on jury
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`instructions in TecSec, Inc. v. Adobe, Inc., No. 15-cv-115. See TecSec, Dkt. 1318 at 1 (explaining
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`that “the Court will . . . exclude reference to the presumption of validity” in the preliminary jury
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`4
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 8 of 37 PageID# 33339
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`instructions) (E.D. Va. Dec. 7, 2018); see TecSec, Dkt. 1355 at 33:13–21 (transcript of preliminary
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`instructions as given).
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`2.
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`Definition of the clear-and-convincing standard. The Court should instruct the jury
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`that “clear and convincing” means “highly probable” as Reynolds proposes, not “clear conviction”
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`as Philip Morris proposes. Reynolds’s proposal is consistent with the instructions given by the
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`court in TecSec. TecSec v. Adobe Inc., No. 10-cv-115, Dkt. 1322 at 8 (E.D. Va. Dec. 9, 2018), as
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`well as AIPLA Model Instruction II.2. See also Practice Note, AIPLA Model Instr. II.2 (explaining
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`that “[t]o help jurors better understand and apply the clear-and-convincing evidentiary standard,”
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`courts should “consider substituting that phrase with language including ‘highly probable’
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`wherever it appears throughout these instructions.” Philip Morris’s proposal is not consistent with
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`those instructions.
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`What is more, Philip Morris’s proposal is duplicative of the “clear and convincing”
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`language. To state the obvious, defining “clear and convincing” by repeating the word “clear”
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`adds nothing. The “highly probable” language also allows jurors to compare the standard with the
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`“more likely than not” standard they will need to apply to Philip Morris’s claims of infringement;
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`“clear conviction” offers no such opportunity for comparison.
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`5
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 9 of 37 PageID# 33340
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`Proposed Final Instruction No. 12 – Summary of the Issues
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`In light of the narrowing and progress of the case, the following issues are no longer before
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`the jury and should be omitted: Issue numbers 2, 3, 4, 5, 7, 8.
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`In addition, Issue number 6 should be edited to remove reference to the dismissed ’374
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`Patent.
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`Issue number 9 (pertaining to willfulness) should be omitted should the Court grant
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`Reynolds’s Rule 50(a) motion of no willfulness.
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`6
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 10 of 37 PageID# 33341
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`Proposed Final Instruction No. 14 – Claim Construction Generally
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`1.
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` Narrowing Edits to Proposed Instruction: In light of the narrowing and progress
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`of the case, the penultimate paragraph of the proposed instruction should be adjusted as follows:
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`The patent claims involved here are claims 1 and 4 of the ’265 Patent and claims 2, 11,
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`12, and 13 of the ’911 Patent.
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`•
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`•
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`For the ’265 Patent, the claims begin at column 9, line 22 of the patent, which is
`Exhibit PX-0002 in evidence.
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`For the ’911 Patent, the claims begin at column 18, line 11 of the patent, which is
`Exhibit PX-0003 in evidence.
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`2.
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`Proposal for consolidation. Reynolds proposes that the final paragraph of the
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`instruction should be edited as follows, to consolidate Reynolds’s proposed language in Proposed
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`Final Instruction No. 17 (Claim Scope) with the parties’ Proposed Final Instruction No. 14:
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`You should give the words in the claims their plain and ordinary meaning in the context of
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`the patent specification and prosecution history.
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`This language is supported by the Federal Circuit’s en banc decision in Phillips v. AWH Corp.,
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`415 F.ed 1303, 1313 (Fed. Cir. 2005), making clear that plain and ordinary meaning requires “the
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`context of the entire patent, including the specification” id., and “the prosecution history,” which
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`“provides evidence of how the PTO and the inventor understood the patent,” id. at 1317.
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`Reynolds withdraws its proposed Final Instruction No. 17 (Claim Scope) if the Court
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`accepts Reynolds’s proposal for consolidation by including Reynolds’s proposed language in Final
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`Instruction No. 14.
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`7
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 11 of 37 PageID# 33342
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`Proposed Final Instruction No. 16 – Independent and Dependent Claims
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`In light of the narrowing of the case, Reynolds proposes that this proposed instruction be
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`edited as follows:
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`This case involves independent claims and dependent claims.
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`An “independent claim” sets forth all of the requirements that must be met in order to be
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`covered by that claim. Thus, it is not necessary to look at any other claim to determine what an
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`independent claim covers. In this case, claim 1 of the ’265 Patent and claim 1 of the ’911 Patent
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`are independent claims.
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`The remainder of the claims from the asserted patents are “dependent claims.” A
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`dependent claim does not itself recite all of the requirements of the claim but refers to another
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`claim for some of its requirements. In this way, the claim “depends” on and adds to the
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`requirements from another claim. Thus, a dependent claim incorporates all of the requirements
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`of the claim(s) to which it refers, as well as the new requirements that it adds to them. In this case,
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`claim 4 of the ’265 Patent, and claims 2 and 11-13 of the ’911 Patent, are each dependent claims.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 12 of 37 PageID# 33343
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`Proposed Final Instruction No. 17 – Claim Scope
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`As noted above in Reynolds’s proposal and argument in support of its proposed Final
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`Instruction No. 14, if the Court gives Reynolds’s requested instruction there that “you should give
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`the words in the claims their plain and ordinary meaning in the context of the patent specification
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`and prosecution history,” Reynolds withdraws its requested Final Instruction No. 17.
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`9
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 13 of 37 PageID# 33344
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`Proposed Final Instruction No. 20 – Direct Infringement
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`Reynolds reiterates its request that the Court give its proposed final instruction, filed at
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`Dkt. 1302-2, for the reasons given in Reynolds’s Notice of Filing, Dkt. 1302.
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`10
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 14 of 37 PageID# 33345
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`Proposed Final Instruction No. 22 – Direct Infringement – Capable of Infringement
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`Reynolds objects to Philip Morris’s proposal as irrelevant to the issues before the jury and
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`therefore confusing and unnecessary. This instruction was given in the TecSec v. Adobe case, but
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`there, a major issue in the case was whether defendant’s product infringed the asserted patent when
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`it was “capable” of infringement in some circumstances and not others. See TecSec, Inc. v. Adobe
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`Inc., 978 F.3d 1278, 1290 (Fed. Cir. 2020) (“Adobe stipulated that ‘on at least one occasion,’ ‘there
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`was direct infringement of the asserted claims’ by an Adobe employee” when he “performed the
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`steps of the method claims using an accused version of Adobe's Acrobat product, reflected in a
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`February 2009 blog post on ‘packaging options for encrypted PDFs’ that he wrote for an Adobe
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`users’ forum.”). Philip Morris’s other cited authorities similarly deal with accused software
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`products that were found to infringe because they were capable of infringing in some
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`circumstances, even though they were incapable of infringing in others. E.g., Finjan, Inc. v. Secure
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`Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (“The fact that users needed to ‘activate
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`the functions programmed’ by purchasing keys does not detract from or somehow nullify the
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`existence of the claimed structure in the accused software.”); Fantasy Sports Prop., Inc. v.
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`Sportsline.com, Inc., 287 F.3d 1108,1118-19 (Fed. Cir. 2002) (jury considered whether a fantasy
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`football software product was a “computer for playing football” as required by claims, or a
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`“modifiable software tool” that is not a fantasy football game”).
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`By contrast to these authorities, whether Reynolds’s accused products allegedly infringe
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`because they are purportedly “capable” of infringing in some circumstances (but not others) is not
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`an issue in this case. Accordingly, this instruction adds nothing to the general direct infringement
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`instructions and Reynolds objects to its inclusion in the final instructions.
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`11
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 15 of 37 PageID# 33346
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`Proposed Final Instruction No. 29 – Summary of Reynolds’s Invalidity Defense
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`1. Reynolds’s summary of its invalidity defense should be given, consistent with the
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`AIPLA model instructions.
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`2. In further light of case narrowing, Philip Morris’s unnecessary proposed “negative
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`instruction” on patents for which Reynolds is not presenting an invalidity defense is moot.
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`12
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 16 of 37 PageID# 33347
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`Proposed Final Instruction No. 30 – Invalidity of Independent and Dependent Claims
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`Reynolds requests that the Court give its proposed insertion of a sentence telling the jury
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`that the verdict form will explain which asserted claims are independent and dependent. Reynolds
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`understands that Philip Morris’s objection is not to this proposed language, but rather to
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`Reynolds’s proposed verdict form itself. Reynold requests that the Court use its verdict form (Dkt
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`1302-1) and proposed instruction.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 17 of 37 PageID# 33348
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`Proposed Final Instruction No. 31 – Invalidity – Burden of Proof
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`Reynolds objects to Philip Morris’s proposal as duplicative of proposed Final Instruction
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`No. 11 (“Burdens of Proof”), which presents the burdens of proof for infringement and invalidity,
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`and reiterates its objections in response to Philip Morris’s proposed Final Instruction No. 11, supra.
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`14
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 18 of 37 PageID# 33349
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`Proposed Final Instruction No. 33 – Prior Art
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`Reynolds’s proposed instruction should be given, consistent with the AIPLA model
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`instructions. In light of case narrowing, Reynolds requests that the instruction be revised to present
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`only the priority date for the ’911 and ’265 Patents.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 19 of 37 PageID# 33350
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`Proposed Final Instruction No. 34 – Invalidity – Prior Art Not Considered by the PTO
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`1. Reynolds’s proposed instruction should be given, consistent with the AIPLA model
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`instruction and as supported by the Supreme Court’s decision in Microsoft Corp. v. i4i Ltd., 564
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`U.S. 91, 111-12 (2011). See also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
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`759 F.3d 1285, 1305 (Fed. Cir. 2014). In Microsoft, the Supreme Court made clear that “if the
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`PTO did not have all material facts before it, its considered judgment may lose significant force”
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`and that “the challenger's burden to persuade the jury of its invalidity defense by clear and
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`convincing evidence may be easier to sustain.” 564 U.S. at 111. For that reason, the Court
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`explained, “a jury instruction on the effect of new evidence can, and when requested, most often
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`should, be given.” Id. Where, as here, “it is disputed whether the evidence presented to the jury
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`differs from that evaluated by the PTO, the jury may be instructed to consider that question.” Id.
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`And “ the jury may be instructed to evaluate whether the evidence before it is materially new, and
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`if so, to consider that fact when determining whether an invalidity defense has been proved by
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`clear and convincing evidence.” Id. Reynolds’s proposal is in line with that directive from the
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`Supreme Court.
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`2. Philip Morris’s proposal, which reiterates Reynolds’s burden of proof and attempts to
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`inject the duplicative presumption-of-validity instruction, should be rejected for the reasons given
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`in response to Philip Morris’s proposed Final Instruction No. 11, supra.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 20 of 37 PageID# 33351
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`Proposed Final Instruction No. 38 – Obviousness
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`1. Reynolds’s proposed instruction should be given, as it is consistent with the Supreme
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`Court’s opinion in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405, 421 (2007):
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`When there is a design need or market pressure to solve a problem
`and there are a finite number of identified, predictable solutions, a
`person of ordinary skill has good reason to pursue the known options
`within his or her technical grasp. If this leads to the anticipated
`success, it is likely the product not of innovation but of ordinary skill
`and common sense. In that instance the fact that a combination was
`obvious to try might show that it was obvious under § 103.
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`Id. at 421.
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`2. Philip Morris’s insertion of a negative instruction on what “Reynolds does not contend”
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`is moot in light of case narrowing, and unnecessary. Reynolds further objects to Philip Morris’s
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`two insertions of the clear and convincing evidence standard, which are unnecessary and
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`duplicative of the parties’ proposed Final Instruction No. 11 (“Burdens of Proof”), which presents
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`the burdens of proof for infringement and invalidity.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 21 of 37 PageID# 33352
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`Proposed Final Instruction No. 42 – Obviousness – The Fourth Factor (Other
`Considerations)
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`Reynolds’s proposal should be given, as it is consistent with the FCBA Model Instruction
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`4.3c (“Obviousness”) as well as AIPLA Model Instruction 7.4 (“The Fourth Factor: Other
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`Considerations”). The jury has heard evidence that, e.g., the accused products were successful due
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`to marketing and consumer demand. That evidence is relevant to “other considerations,” and the
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`jury should be instructed that it can assess that evidence when considering obviousness.
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`18
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 22 of 37 PageID# 33353
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`Proposed Final Instruction No. 44 – Damages – Generally
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`1. Reynolds withdraws its proposed inclusion of the sentence [You also may not award
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`damages for any future losses PMI/Altria may incur] contingent on the Court providing Reynolds’s
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`proposed Final Instruction No. 47 (“Damages – Lump Sum vs. Running Royalty”), which
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`Reynolds filed at Dkt. 1302-2, and for which Reynolds provided its arguments in favor at Dkt.
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`1302.
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`2. Reynolds’s other proposed instructions should be given, as they are consistent with
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`AIPLA Model Instruction 10.0. That model instruction is the primary source for this proposed
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`instruction, and Philip Morris’s proposed deletions of language it appears to find unfavorable
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`should be rejected.
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`3. Reynolds objects to Philip Morris’s instruction that Philip Morris is “entitled” to
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`damages “in no event less than a reasonable royalty” should the jury find its patents valid and
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`infringed, as well as its other insertions repeating the same statement. This instruction is
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`inaccurate; the jury could find Philip Morris’s patents infringed and not invalid and nonetheless
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`find that Philip Morris is not entitled to the royalty rate proposed by Philip Morris’s expert because,
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`e.g., the asserted patents lack value over the prior art, or his calculations are imprecise. Philip
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`Morris’s proposal also omits that the jury must determine the amount of damages, and therefore
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`misleadingly suggests to the jury that Philip Morris is “entitled to” its proposed rate, rather than
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`the rate that the jury determines based on the evidence.
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`19
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 23 of 37 PageID# 33354
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`Proposed Final Instruction No. 45 – Damages – Burden of Proof
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`Reynolds’s proposed instruction should be given; it is drawn nearly verbatim from the
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`National Jury Instruction Project’s Model Instruction § 6.2. The jury should be instructed as to
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`the burden of proof it must apply to the evidence. Given that the jury will be instructed that the
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`parties’ burdens differ for invalidity and infringement, it would be confusing for the jury to not be
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`instructed on Philip Morris’s burden of proof for damages and could result in the jury using an
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`incorrect burden to assess the evidence on damages.
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`20
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 24 of 37 PageID# 33355
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`Proposed Final Instruction No. 46 – Damages – Date Damages Begin
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`Due to case narrowing, the date damages begin should be included only for the ’265 and
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`’911 Patents.
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`21
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 25 of 37 PageID# 33356
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`Proposed Final Instruction No. 47– Lump Sum vs. Running Royalty
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`For the reasons given in Reynolds’s Notice of Filing (1302), Reynolds’s requested final
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`instruction 47 (Dkt. 1302-2) should be given, in addition to Philip Morris’s proposal reflected at
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`Dkt. 1204-1 at 107 (Instruction 47).
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 26 of 37 PageID# 33357
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`Proposed Final Instruction No. 48– Reasonable Royalty – Entitlement
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`Reynolds objects to Philip Morris’s proposed instruction as duplicative of the parties’
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`proposed instruction 44 (“Damages–Generally”) and therefore unnecessary. Moreover, for the
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`same reasons as explained in Reynolds’s objections to Philip Morris’s proposed Final Instruction
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`No. 44, supra, Reynolds objects to Philip Morris’s proposed insertion of an “entitlement” to
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`damages.
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`23
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 27 of 37 PageID# 33358
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`Proposed Final Instruction No. 49– Reasonable Royalty – Generally
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`1. In light of case narrowing, Reynolds withdraws its proposed insertion of a “book of
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`wisdom” instruction at Dkt. 1204-1 at 109-110, and further withdraws its proposed insertion at the
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`final paragraph of Dkt. 1204-1 at 110 (beginning “In this case, you have heard . . .”).
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`2. Reynolds’s proposed instruction that “the reasonable royalty award must be based on
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`the incremental value that the patented invention adds to the end product” should be given, as it is
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`drawn nearly verbatim from AIPLA Model Instruction 10.2.5.1, and is consistent with the
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`decisions the jury will have to make in assessing the parties’ evidence on the value of Philip
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`Morris’s patents.
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`24
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 28 of 37 PageID# 33359
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`Proposed Final Instruction No. 51– Reasonable Royalty – Apportionment
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`Reynolds’s proposal is drawn nearly verbatim from AIPLA Model Instruction No.
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`V.10.2.5.4, and should be given. The jury has heard evidence of the value attributable to Philip
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`Morris’s patents, and should be instructed on how to assess that evidence when determining a
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`royalty rate and base.
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`25
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 29 of 37 PageID# 33360
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`Proposed Final Instruction No. 54 – Reasonable Royalty – Non-Infringing Alternatives
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`Reynolds objects to this instruction in light of the parties’ Stipulation Regarding Alleged
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`Design Arounds and Non-Infringing Alternatives, filed at Dkt. 1291. There is no evidence of the
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`availability and cost of acceptable non-infringing substitutes, because Reynolds agreed not to
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`present such evidence “in an effort to simplify the upcoming trial.” Id. at 2. The jury should not
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`be presented with an instruction that implies that such evidence is in the case, just as it would be
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`inappropriate to instruct the jury on topics for which Philip Morris has presented no evidence, such
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`as for infringement of withdrawn claims.
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`26
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 30 of 37 PageID# 33361
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`Proposed Final Instruction No. 56 – Willful Infringement
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`1.
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`Reynolds’s proposal. Reynolds’s proposed addition to this instruction should be
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`given, as it is consistent with the FCBA Model Instruction and provides the jury with relevant
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`factors to assess whether Reynolds’s conduct was deliberate. Without such an instruction, the jury
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`may be confused about what kinds of facts would suggest “deliberate” conduct in this context.
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`2.
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`Placement of the instruction. Reynolds is aware that Philip Morris disputes the
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`placement of this instruction at the end of the instructions. See Dkt. 1204-1 (“disputed as to
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`position”). However, the placement of the instruction at the end of damages is consistent with the
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`AIPLA Model Instructions’ approach as well as the parties’ jointly proposed instruction (in No.
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`56) that a decision that infringement was willful should not affect any damages award.
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`Case 1:20-cv-00393-LO-TCB Document 1315 Filed 06/11/22 Page 31 of 37 PageID# 33362
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`Philip Morris’s Additional Proposed Final Instruction No. 1 – Enforcement, Licensing, and
`Use
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`Reynolds objects to Philip Morris’s proposed instruction because it misstates the law.
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`Whether Philip Morris has licensed its patents is relevant to damages. The jury has heard
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`considerable evidence about Philip Morris’s policy toward licensing its patents, that it has not
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`licensed its patents, and does not practice the patents. This element is relevant to the que