Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 1 of 19 PageID# 33369
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs and Counterclaim Defendants,
`
`
`
`ALTRIA CLIENT SERVICES LLC; Philip
`Morris USA INC.; and Philip Morris
`PRODUCTS S.A.,
`
`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LO-TCB
`
`
`REYNOLDS’S MEMORANDUM IN FURTHER SUPPORT OF ORAL
`RULE 50(a) MOTION FOR JUDGMENT AS A MATTER OF LAW ON CLAIM OF
`WILLFUL INFRINGEMENT
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`
`

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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 2 of 19 PageID# 33370
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`
`
`TABLE OF CONTENTS
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`Page
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`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`I.
`INTRODUCTION ............................................................................................................. 1
`II.
`EVIDENCE AT TRIAL .................................................................................................... 2
`III.
`LEGAL STANDARD ........................................................................................................ 5
`IV. ARGUMENT ..................................................................................................................... 6
`A.
`Evidence That Reynolds Merely Had Knowledge of the ’265 and ’911
`Patents Is Legally Insufficient for Willfulness. ..................................................... 7
`No Reasonable Jury Could Find That Reynolds Was Willfully Blind to the
`Patents or Infringement of the Patents. ................................................................ 10
`Pre-Verdict Judgment Is Authorized and Appropriate. ....................................... 12
`C.
`CONCLUSION ................................................................................................................ 12
`
`B.
`
`V.
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`-i-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 3 of 19 PageID# 33371
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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page
`
`Abbott Labs. v. Sandoz, Inc.,
`532 F. Supp. 2d 996 (N.D. Ill. 2007) .........................................................................................8
`
`Ansell Healthcare Prod. LLC v. Reckitt Benckiser LLC,
`No. 15-CV-915-RGA, 2018 WL 620968 (D. Del. Jan. 30, 2018) .....................................10, 11
`
`Arctic Cat Inc. v. Bombardier Recreational Products Inc.,
`198 F. Supp. 3d 1343 (S.D. Fla. 2016) ....................................................................................11
`
`Arctic Cat Inc. v. Bombardier Recreational Products Inc.,
`876 F.3d 1350, 1371 (Fed. Cir. 2017)......................................................................................11
`
`Audio MPEG, Inc. v. Dell, Inc.,
`No. 2:15cv73 (E.D. Va. Nov. 16, 2017) ..................................................................................11
`
`Bayer Healthcare LLC v. Baxalta Inc.,
`989 F.3d 964 (Fed. Cir. 2021)............................................................................................1, 6, 7
`
`Bos. Sci. Corp. v. Nevro Corp.,
`No. 1:16-cv-01163, 2021 WL 4262668 (D. Del. Sept. 20, 2021) .............................................8
`
`Bushnell Hawthorne, LLC v. Cisco Sys., Inc.,
`No. 1:18-CV-760, 2019 WL 8107921 (E.D. Va. Feb. 26, 2019) ..............................................8
`
`Charleston Area Med. Ctr., Inc. v. Blue Cross & Blue Shield Mut. of Ohio, Inc.,
`6 F.3d 243 (4th Cir. 1993) .........................................................................................................6
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009)..................................................................................................9
`
`Enzo Biochem, Inc. v. Gen-Probe, Inc.,
`424 F.3d 1276 (Fed. Cir. 2005)................................................................................................12
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co.,
`No. 2:15-CV-1202-WCB, 2017 WL 2190055 (E.D. Tex. May 18, 2017) ................................9
`
`Evolved Wireless, LLC v. Apple Inc.,
`No. 1:15-cv-00542, 2019 WL 8128550 (D. Del. Feb. 19, 2019)...............................................9
`
`
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`-ii-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 4 of 19 PageID# 33372
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`TABLE OF AUTHORITIES
`(continued)
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`
`
`Page
`
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`579 U.S. 93 (2016) .....................................................................................................................9
`
`i4i Limited Partnership v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010)..................................................................................................12
`
`Intell. Ventures I LLC v. Symantec Corp.,
`234 F. Supp. 3d 601 (D. Del. 2017), aff’d, 725 F. App’x 976 (Fed. Cir. 2018) ........................8
`
`Intuitive Surgical, Inc. v. Auris Health, Inc.,
`No. 1:18-cv-01359, 2021 WL 3033396 (D. Del. July 19, 2021) ...............................................7
`
`Myrick v. Prime Ins. Syndicate, Inc.,
`395 F.3d 485 (4th Cir. 2005) .....................................................................................................6
`
`Norian Corp. v. Stryker Corp.,
`363 F.3d 1321 (Fed. Cir. 2004)..................................................................................................8
`
`Price v. City of Charlotte, N.C.,
`93 F.3d 1241 (4th Cir. 1996) .....................................................................................................6
`
`Reeves v. Sanderson Plumbing Prod., Inc.,
`530 U.S. 133 (2000) ...................................................................................................................8
`
`Sprint Commc'ns Co., L.P. v. Atl. Broadband Fin., LLC,
`No. 1:18-cv-00362, 2021 WL 982735 (D. Del. Mar. 16, 2021) ................................................9
`
`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`14 F.4th 1323 (Fed. Cir. 2021) ..............................................................................................6, 7
`
`SynQor, Inc. v. Artesyn Techs.,
`709 F.3d 1365 (Fed. Cir. 2013)..................................................................................................6
`
`Vaporstream, Inc. v. Snap Inc.,
`No. 2:17-cv-00220, 2020 WL 136591 (C.D. Cal. Jan. 13, 2020) ..............................................8
`
`Wilhelm v. Blue Bell, Inc.,
`773 F.2d 1429 (4th Cir. 1985) ...................................................................................................6
`
`
`
`
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`-iii-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 5 of 19 PageID# 33373
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`STATUTES
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`35 U.S.C. § 298 ............................................................................................................................2, 5
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`OTHER AUTHORITIES
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`Fed. R. Civ. P. 50 ...............................................................................................................1, 2, 6, 12
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`-iv-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 6 of 19 PageID# 33374
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`I.
`
`INTRODUCTION
`
`This is not a willful infringement case. According to the recitation delivered by Philip
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`Morris’s counsel in response to Reynolds’s oral Rule 50(a) motion, the “direct and circumstantial
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`evidence” supporting willful infringement of the ’265 and ’911 patents consists of the following:
`
`• “Reynolds admits it had knowledge of the published patents or their
`applications—and their applications before selling the Alto and [Solo] G2
`products in the United States.” June 9, 2022 (Afternoon) Trial Tr. 85:14-16.1
`
`• “Reynolds’s 30(b)(6) witness, Dr. Figlar, testified that Reynolds keeps track of
`Philip Morris’s patents and patent applications on a monthly basis, is very active
`in keeping a close eye on the patent literature of its competitors, including Philip
`Morris.” Id. at 85:22-86:1.
`
`• “As the corporate representative and designee on willfulness, he admitted that
`Reynolds had pre-suit knowledge. He explained that their patent review
`process includes getting ideas on where the technology is going and keeping up
`to date on competitor patents.” Id. at 86:2-6.
`
`• “Nonetheless, Reynolds kept selling the Alto and [Solo] G2 . . . .” Id. at 86:7.
`
`• “Reynolds has also stipulated that it … won’t present any evidence or
`arguments of design-around, but I think the inference from the evidence that the
`jury can reach that an army of lawyers in this courtroom isn’t presenting in
`evidence is pretty good evidence that they don’t have any design-arounds or
`non-infringing alternatives; thus, at a minimum, a reasonable jury could find
`that Reynolds was willfully blind to these two patents.” Id. at 86:8-15.
`
`At best for Philip Morris, these statements show only “[k]nowledge of the asserted patent and
`
`evidence of infringement,” which under binding Federal Circuit law is “necessary, but not
`
`sufficient, for a finding of willfulness. Rather, willfulness requires deliberate or intentional
`
`infringement.” Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 972, 988 (Fed. Cir. 2021)
`
`(affirming grant of pre-verdict JMOL on willful infringement). As for the assertion that “willful[]
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`blind[ness]” could follow from a stipulation on non-infringing alternatives, that is a non sequitur,
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`and in any event it adds nothing to support Philip Morris’s willful infringement claim.
`
`
`1 Excerpts of trial transcripts appear collectively in Exhibit 1.
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`-1-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 7 of 19 PageID# 33375
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`
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`These points alone demonstrate that Reynolds is entitled to judgment as a matter of law—
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`no reasonable jury could find willful infringement, and therefore Philip Morris’s willful
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`infringement claim should not be submitted to the jury. The only other theory Philip Morris
`
`attempted to pursue was a theory foreclosed by statute, 35 U.S.C. § 298, and a pretrial ruling
`
`excluding questions about whether Reynolds had obtained advice of counsel. Dkt. 1184 at 34.
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`The Court sustained the objection, and Philip Morris’s question adduced no further evidence to
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`support its willful infringement claim. The allegation of willful infringement, like counsel’s
`
`improper question, is a distraction from the technical issues that are properly before the jury.
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`Reynolds respectfully submits that the Court should grant the motion.2
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`II.
`
`EVIDENCE AT TRIAL
`
`Although taking various forms, Philip Morris’s evidence in the case comes down to one
`
`fact: Reynolds had pre-suit knowledge of the patents through its practice of monitoring patent
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`publications in the e-cigarette category. That evidence is insufficient to show willful infringement.
`
`During its case-in-chief, Philip Morris played designations from the pre-trial depositions
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`of Reynolds’s corporate representative, Dr. James Figlar. The deposition video segments played
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`at trial have not yet been transcribed, but the final, agreed clip report transcribing the deposition
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`testimony is attached as Exhibit 2. As relevant to Philip Morris’s attempt to show willful
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`infringement, Dr. Figlar was asked, “So Reynolds was aware of all the patents asserted in this case
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`before the case filed then, correct?” Dr. Figlar testified, “In all likelihood they were known to or
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`had been seen by people at Reynolds.” Ex. 2, Figlar 6/24/2021 Dep. Tr. 133:21-22. He described
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`the process by which employees at Reynolds become aware of competitor’s patents: “at least two
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`lawyers that are in-house lawyers for Reynolds,” along with “outside counsel,” would “compile”
`
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`2 Reynolds renews and preserves its other Rule 50(a) arguments made orally in Court. This written
`submission is limited to the issue of willful infringement as directed by the Court.
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`-2-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 8 of 19 PageID# 33376
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`information from new “patent publications” and “send it out to the scientists and people like myself
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`and others,” including “a lot of people in R&D working on technology.” Id. at 133:21-22; 137:6-
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`8. Recipients of that e-mail “have the opportunity to open up that file and look at all the patents
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`that have issued in that month by all the competitors in the category. And that’s all it is, just an
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`information sharing exercise.” Id. As to the purpose of this patent literature review, Dr. Figlar
`
`testified that “as a technology development company you need to be aware of” this information:
`
`“Where are people, what are we getting cleared, what are people doing? It’s a good place to get
`
`ideas on where the industry is going, where technology is going. It’s important to be up to date on
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`patents.” Id. at 139:10-16. Dr. Figlar testified that Reynolds keeps track of “the full patent
`
`landscape, depending on the category”—not just Philip Morris, but “all the big players, all the
`
`manufacturers”—because “Reynolds has lots of patents as well” and is “active in patenting
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`technology.” Id. at 132:21-133:10.
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`At trial, Philip Morris read the parties’ stipulation regarding design arounds and non-
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`infringing alternatives. See Dkt. 1291. Philip Morris also introduced an interrogatory response
`
`from Reynolds into evidence (PX-613), which states in relevant part (Ex. 3 at 3):
`
`Reynolds states that its first awareness of the ‘265 patent was on November 21,
`2017, when it received a report as described in the testimony of Dr. James Figlar
`identifying the publication of the ‘265 patent…. Reynolds further states that its
`first awareness of U.S. Patent Publication No. 2014/0305454, which led to the ‘265
`patent, was on October 30, 2014, when it received a report as described in the
`testimony of Dr. James Figlar identifying the publication of U.S. Patent Publication
`No. 2014/0305454.
`
`Reynolds states that its first awareness of the ‘911 patent was on December 4, 2018,
`when it received a report as described in the testimony of Dr. James Figlar
`identifying the publication of the ‘911 patent. … Reynolds states that its first
`awareness of U.S. Patent Publication No. 2013/0306064, which led to the ‘911
`patent, was on December 3, 2013, when it received a report as described in the
`testimony of Dr. James Figlar identifying the publication of U.S. Patent Publication
`No. 2013/0306064.
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`-3-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 9 of 19 PageID# 33377
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`In Reynolds’s case, Dr. Figlar testified about Reynolds’s written corporate policy on
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`intellectual property: “[T]he basic essence of the policy is, you know, you respect intellectual
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`property and then [the policy] explains, you know, how you respect that. You don’t, you know,
`
`infringe if you – you don’t do any of that stuff.” June 9, 2022 (Afternoon) Trial Tr. 129:2-5. Dr.
`
`Figlar testified that Reynolds monitors new patent publications to ensure that its products do not
`
`infringe other patents. “[Y]ou have to be cognizant of what is happening in the patent literature
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`landscape.” Id.at 129:12-13. Patent publications are “public knowledge. They’re supposed to
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`be.” Companies should “stay abreast of that information because, as an innovation developer, you
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`know that there’s more than one person working on ideas all around the world.” Id. at 129:12-22.
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`Asked if it would be responsible for a company to ignore research and patents from competitors,
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`Dr. Figlar testified, “In my opinion it would not be responsible because then you wouldn’t know
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`what has come – what has happened before.” Id. at 130:3-4.
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`Asked directly if “Reynolds monitor[s] other companies’ patents in order to copy and
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`infringe them,” he responded, “No, not – we monitor the whole tobacco landscape patent literature
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`so that we know what’s happening from a competitive landscape perspective.” Id. at 130:5-9.
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`Asked if “Reynolds copied any other e-cigarette product when developing the Vuse Solo,” Dr.
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`Figlar testified, “No.” Id. at 130:14-16. Dr. Figlar’s testimony on Reynolds’s responsible conduct
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`in monitoring competitor’s patents went unrebutted and undisputed—no other witness
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`contradicted or even addressed this testimony. And on cross-examination, Reynold’s corporate
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`patent policy was the only topic discussed that is relevant to this motion, and Philip Morris simply
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`inquired about the authorship of the policy:
`
`Q. Right. Dr. Figlar, you also testified about a patent policy, right, where Reynolds
`reviews competitor patents, but it’s got this policy where it will say, well, we don’t
`want to infringe patents. You testified about that, right?
`
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`-4-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 10 of 19 PageID# 33378
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`A. I said we did have – we do have an intellectual property policy at Reynolds, and
`we do.
`
`Q. Right. The lawyers are involved in that, correct?
`
`A. I mean, I think so, yeah. I didn’t write the policy, but I presume that legal had
`some input, yeah.
`
`Q. Right. You just read the policy; is that right?
`
`A. I did not write the policy, that’s correct. I’ve read the policy, yes.
`
`Q. Sure, sure, I understand. Now, Dr. Figlar, you didn’t show the jury any opinions
`from Reynolds that it doesn’t infringe the asserted patents in this case, did you,
`Dr. Figlar?
`
`Id. at 150:3-17 (emphasis added). Reynolds objected to the final question, and the Court sustained
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`the objection. Id. at 150:18-19. The question was improper, both pursuant to statute and prior
`
`ruling in this case, because it suggested that Reynolds lawyers, who were involved in the
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`intellectual property policy, did not provide an opinion of counsel on infringement. See 35 U.S.C.
`
`§ 298.3 Judge O’Grady earlier ruled: “At trial, PMA cannot open the door to otherwise
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`unpermitted testimony [on advice of counsel] by asking leading questions on cross-
`
`examination.” Dkt. 1184 at 34. Judge O’Grady even imposed a specific procedure to follow:
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`“This testimony may be allowed if good cause is shown at the time that the testimony has become
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`admissible (in the event the door is opened).” Id. Philip Morris’s counsel did not even attempt to
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`follow this procedure. Philip Morris’s attempt to elicit this statutorily barred testimony reinforces
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`the lack of any evidence Philip Morris has for its willful infringement case.
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`III. LEGAL STANDARD
`
`Judgment as a matter of law is appropriate “[i]f a party has been fully heard on an issue
`
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`3 “The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed
`patent, or the failure of the infringer to present such advice to the court or jury, may not be used to
`prove that the accused infringer willfully infringed the patent or that the infringer intended to
`induce infringement of the patent.” 35 U.S.C. § 298.
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`-5-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 11 of 19 PageID# 33379
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`during a jury trial and the court finds that a reasonable jury would not have a legally sufficient
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`evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a)(1). In a patent case, the
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`law of the regional circuit governs a motion for judgment as a matter of law under Rule 50.
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`SynQor, Inc. v. Artesyn Techs., 709 F.3d 1365, 1373 (Fed. Cir. 2013). The Court must enter
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`judgment as a matter of law if “a reasonable jury could reach only one conclusion based on the
`
`evidence or if the verdict in favor of the nonmoving party would necessarily be based upon
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`speculation and conjecture.” Myrick v. Prime Ins. Syndicate, Inc., 395 F.3d 485, 489 (4th Cir.
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`2005). The Court must view the evidence in the light most favorable to the nonmoving party, see
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`id. at 490, and it may not make credibility determinations, Price v. City of Charlotte, N.C., 93 F.3d
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`1241, 1249–50 (4th Cir. 1996). Even so, a “‘mere scintilla of evidence is insufficient’” to create
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`a jury question, and inferences to support a jury’s verdict “‘must be reasonably probable.”
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`Charleston Area Med. Ctr., Inc. v. Blue Cross & Blue Shield Mut. of Ohio, Inc., 6 F.3d 243, 248
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`(4th Cir. 1993) (quoting Lust v. Clark Equipment Co., 792 F.2d 436, 437 (4th Cir. 1986)). There
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`must be “substantial evidence in the record to support” a jury finding for the nonmovant. Wilhelm
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`v. Blue Bell, Inc., 773 F.2d 1429, 1433 (4th Cir. 1985).
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`IV. ARGUMENT
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`Philip Morris has not presented evidence that would allow a reasonable jury to conclude
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`that Reynolds, upon notice of the asserted patents, willfully infringed them. Philip Morris bears
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`the burden of proof on willfulness. See, e.g., Bayer, 989 F.3d at 987 (“A patentee needs to show
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`by a preponderance of the evidence the facts that support a finding of willfulness.”). To establish
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`willfulness, Philip Morris had to prove by a preponderance of the evidence that Reynolds’s
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`infringement was “deliberate or intentional.” SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330
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`(Fed. Cir. 2021). The evidence must therefore show that Reynolds “had a specific intent to infringe
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`at the time of the challenged conduct.” Bayer, 989 F.3d at 987.
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`-6-
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`Philip Morris has failed to meet that burden. Philip Morris’s allegations are founded on
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`mere knowledge of the patents, which is insufficient to support a willfulness finding, and its
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`counsel’s undeveloped reference to “willful blindness” is wholly unsupported by the evidence and
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`cannot support a willful infringement finding either. Nor can Philip Morris fall back on vague
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`invocations of the totality-of-the-circumstances test or circumstantial evidence, both of which must
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`be based on actual evidence tending to show, directly or through reasonable inferences, that
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`Reynolds had a subjective, deliberate intent to infringe the ’265 and ’911 patents. No reasonable
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`jury could make that finding in this case.
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`A.
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`Evidence That Reynolds Merely Had Knowledge of the ’265 and ’911 Patents
`Is Legally Insufficient for Willfulness.
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`Knowledge of a patent alone is not enough for a finding of willfulness. Bayer, 989 F.3d at
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`987. In Bayer, the Federal Circuit affirmed the district court’s grant of judgment as a matter of
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`law before verdict on the plaintiff’s claim for willful infringement. See id. at 972 (“The case then
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`proceeded to a jury trial. The district court granted Baxalta’s pre-verdict motion for JMOL of no
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`willful infringement.”). The Federal Circuit explained that “[t]he evidence adduced at trial merely
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`demonstrate[d] Baxalta’s knowledge of the [asserted] patent and Baxalta’s direct infringement of
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`the asserted claims.” Id. at 988. The Federal Circuit thus agreed with the district court that the
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`evidence did not establish willfulness because “[k]nowledge of the asserted patent and evidence
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`of infringement is necessary, but not sufficient, for a finding of willfulness. Rather, willfulness
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`requires deliberate or intentional infringement.” Id. (emphasis added); see also Intuitive Surgical,
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`Inc. v. Auris Health, Inc., No. 1:18-cv-01359, 2021 WL 3033396, at *11 (D. Del. July 19, 2021)
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`(granting summary judgment because “[patent owner’s] theory of willfulness is based solely on
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`pre-suit knowledge of the asserted patents, which is not sufficient to support a finding of willful
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`-7-
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 13 of 19 PageID# 33381
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`infringement”);4 Bushnell Hawthorne, LLC v. Cisco Sys., Inc., No. 1:18-CV-760, 2019 WL
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`8107921, at *2 (E.D. Va. Feb. 26, 2019) (“[T]he mere knowledge of plaintiff’s patents, without
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`more, is insufficient to support plaintiff’s claim that defendant willfully infringed.”).
`
`Mere awareness is insufficient because “[k]nowledge of a patent is not the same thing as
`
`knowledge that a product or the use of that product infringes the patent.” Bos. Sci. Corp. v. Nevro
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`Corp., No. 1:16-cv-01163, 2021 WL 4262668, at *3 (D. Del. Sept. 20, 2021). “There is no
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`evidentiary presumption that every infringement is willful. Willful infringement is not established
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`by the simple fact of infringement, even though [a defendant] stipulate[s] that it had knowledge of
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`the [ ] patents.” Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1332 (Fed. Cir. 2004).
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`Moreover, evidence that a party “has continued to update, produce, and sell” an allegedly
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`infringing product after having notice of a patent is nothing more than “typical infringement”
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`behavior. Intell. Ventures I LLC v. Symantec Corp., 234 F. Supp. 3d 601, 612 (D. Del. 2017),
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`aff’d, 725 F. App’x 976 (Fed. Cir. 2018) (granting summary judgment because “[n]o reasonable
`
`jury could find willful infringement based on [this] evidence”); see also, e.g., Vaporstream, Inc.
`
`v. Snap Inc., No. 2:17-cv-00220, 2020 WL 136591, at *21 (C.D. Cal. Jan. 13, 2020) (“Continued
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`infringement of patent is insufficient by itself to support a finding of willful infringement.”);
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`Abbott Labs. v. Sandoz, Inc., 532 F. Supp. 2d 996, 1000 (N.D. Ill. 2007) (“[A] party may continue
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`to manufacture and market an allegedly infringing product while it presents what in good faith it
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`believes to be a legitimate defense without risk of being found on that basis alone a willful
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`infringer.”).
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`Here, the entirety of the record reflects only that Reynolds had pre-suit knowledge of the
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`4 “[T]the standard for granting summary judgment mirrors the standard for judgment as a matter
`of law, such that the inquiry under each is the same.” Reeves v. Sanderson Plumbing Prod., Inc.,
`530 U.S. 133, 150 (2000) (internal quotations omitted).
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 14 of 19 PageID# 33382
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`patents—based on awareness of either the applications leading to the patents or the patents
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`themselves after their issuance—while continuing to market VUSE Alto and Solo. As the
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`decisions above establish, this is not sufficient evidence from which a jury can reasonably find
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`deliberate or intentional infringement. Philip Morris has not introduced any evidence that
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`Reynolds knew it was infringing either the ’265 or ’911 patent. See, e.g., Sprint Commc'ns Co.,
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`L.P. v. Atl. Broadband Fin., LLC, No. 1:18-cv-00362, 2021 WL 982735, at *1-2 (D. Del. Mar. 16,
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`2021) (“Sprint does not offer any evidence that ABB knew that it was infringing the patents-in-
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`suit …. Thus, it has no specific intent evidence, and thus no case for willfulness.”); Evolved
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`Wireless, LLC v. Apple Inc., No. 1:15-cv-00542, 2019 WL 8128550, at *3 (D. Del. Feb. 19, 2019)
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`(“The question of willful infringement turns on whether, at the time of the infringement, the
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`infringer knew or, it was so obvious that the infringer should have known, that its actions
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`constituted infringement of a valid and enforceable patent.”).5
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`That Reynolds gained knowledge of these patents through its monitoring of patents
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`generally in the e-cigarette category does not supporting a finding of willful infringement.
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`Dr. Figlar testified that Reynolds keeps track of “the full patent landscape” because “Reynolds has
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`5 To the contrary, evidence of the many distinctions between Reynolds’s VUSE products and the
`technology asserted in Philip Morris’s patents demonstrates that Reynolds lacked the subjective
`intent to infringe them. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 104 (2016)
`(characterizing conduct of “most culpable offenders” as those “who intentionally infringe[ ]
`another’s patent—with no doubts about its validity or any notion of a defense—for no purpose
`other than to steal the patentee’s business”). “While the fact that an issue was submitted to a jury
`does not automatically immunize an accused infringer from a finding of willful infringement, the
`record developed in the infringement proceeding in this case, viewed objectively, indisputably
`shows that the question of equivalence was a close one ….” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 567 F.3d 1314, 1337 (Fed. Cir. 2009); see also Erfindergemeinschaft
`UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-WCB, 2017 WL 2190055, at *2 (E.D. Tex.
`May 18, 2017) (granting judgment as a matter of law of no willfulness in part because “during the
`pretrial proceedings and at trial Lilly raised substantial arguments as to the validity of the ’124
`patent”).
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 15 of 19 PageID# 33383
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`lots of patents as well” and is “active in patenting technology.” Ex. 2, Figlar 6/24/2021 Dep. Tr.
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`133:21-22. He explained that Reynolds “monitor[s] the whole tobacco landscape patent literature
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`so that we know what’s happening from a competitive landscape perspective.” Id. at 130:5-9.
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`There is no evidence to suggest that the means by which Reynolds acquired knowledge of the
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`patents (monitoring e-cigarette patents) is any more relevant to willfulness than the knowledge of
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`the patents themselves. Patent publications are “public knowledge” and intended to be reviewed
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`by practitioners in the field. Id. at 129:12-22. As Dr. Figlar testified, “it would not be responsible”
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`for a company to ignore research and patents from competitors. Id. at 130:3-4. If competitive
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`monitoring is enough to transform a “typical infringement” case into a willful infringement case,
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`inventors will have a disincentive for staying abreast of new inventions, undermining the policies
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`supporting patent rights and the rationale for committing patent filings to the public domain.
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`B.
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`No Reasonable Jury Could Find That Reynolds Was Willfully Blind to the
`Patents or Infringement of the Patents.
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`The undisputed evidence forecloses any reasonable jury from finding that Reynolds was
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`willfully blind to the ’265 and ’911 patents. Indeed, the same evidence that Philip Morris cites to
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`support its claim that Reynolds intended to infringe—monitoring patent publications in the e-
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`cigarette space—is incompatible with an argument that Reynolds was willfully blind to the patents.
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`Reynolds has knowledge of the patents because it was monitoring new publications.
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`To begin with, “[i]t is not clear whether the doctrine of ‘willful blindness’ as articulated in
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`Global–Tech [Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011)], an induced infringement case,
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`extends to willful infringement in a direct infringement context.” Ansell Healthcare Prod. LLC v.
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`Reckitt Benckiser LLC, No. 15-CV-915-RGA, 2018 WL 620968, at *6 (D. Del. Jan. 30, 2018).
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`The decisions and orders cited by Philip Morris at summary judgment do not support an argument
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`that a patent holder may rely on a willful blindness theory for purposes of a willful infringement
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`Case 1:20-cv-00393-LO-TCB Document 1316 Filed 06/11/22 Page 16 of 19 PageID# 33384
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`claim. In Arctic Cat Inc. v. Bombardier Recreational Products Inc., the defendant “expressed
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`concern regarding potential infringement” of the patents-in-suit, 198 F. Supp. 3d 1343, 1348 (S.D.
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`Fla. 2016), tried to “buy the asserted patents through a third party,” 876 F.3d 1350, 1371 (Fed. Cir.
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`2017), and then sold the infringing products anyway when those efforts failed, 198 F. Supp. 3d at
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`1348. In Audio MPEG, Inc. v. Dell, Inc., No. 2:15cv73 (E.D. Va. Nov. 16, 2017), an unpublished
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`order, the defendant (unlike Reynolds here) was “aware of the … infringement allegations” for
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`years preceding the suit, knew its competitors had taken a license for the patents-in-suit to cover
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`their similar products, and yet refused to either do so itself or seriously investigate the possibility
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`of infringement. Id., ECF No. 940 at 33, 35-36 (emphasis added).
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`Even if willful blindness could apply to Philip Morris’s claim, its requirements are not
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`satisfied here. “(1) [T]he defendant must subjectively believe that there is a high probability that
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`a fact exists and (2) the defendant must take deliberate actions to avoid learning of a fact.” Ansell,
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`2018 WL 620968, at *6-7 (quoting Global-Tech, 563 U.S. at 766). There is no evidence that
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`Reynolds subjectively believed that VUSE Alto and Solo infringed the ’265 and ’911 patents,
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`much less that it was highly probable. There are simply no documents or testimony evidencing
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`such a belief by anyone at Reynolds. Nor is there evidence of deliberate actions to avoid learning
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