Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 1 of 8 PageID# 33718
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`PHILIP MORRIS PRODUCTS S.A.
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`Plaintiff,
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`v.
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`R.J. REYNOLDS VAPOR COMPANY
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`Defendant.
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`Case No. 1:20-cv-00393-LO-TCB
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`MEMORANDUM IN SUPPORT OF PHILIP MORRIS’
`MOTION FOR JUDGMENT AS A MATTER OF LAW OF NO INVALIDITY
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 2 of 8 PageID# 33719
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`I.
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`II.
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`III.
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`IV.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
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`LEGAL STANDARD ..........................................................................................................1
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`ARGUMENT .......................................................................................................................2
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`CONCLUSION ....................................................................................................................4
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`i
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 3 of 8 PageID# 33720
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`I.
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`INTRODUCTION
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`Philip Morris respectfully moves for judgment as a matter of law that the asserted claims
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`of the ’911 Patent are not invalid. Reynolds’ sole invalidity defense is that the claims would have
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`been obvious over the Han patent combined with other alleged prior art. But Reynolds’ technical
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`expert, Mr. Kodama, offered nothing more than conclusory assertions, rooted in impermissible
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`hindsight, that Han could be modified to achieve the claimed invention—with no explanation
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`(beyond a conclusion not rooted in evidence) of why a person of skill in the art would have been
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`motivated to do so. This is insufficient as a matter of law.
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`II.
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`LEGAL STANDARD
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`Judgment as matter of law is appropriate “[i]f a party has been fully heard on an issue
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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). Rule 50(a) “allows
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`the trial court to remove ... issues from jury’s consideration when the facts are sufficiently clear
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`that the law requires a particular result.” Weisgram v. Marley, 528 U.S. 440, 448 (2000). While
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`the Court must view the evidence in the light most favorable to the non-moving party, a “mere
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`scintilla of evidence is insufficient” to create a jury question, and inferences to support a jury’s
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`verdict, “must be reasonably probable.” Charleston Area Med. Ctr., Inc. v. Blue Cross & Blue
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`Shield Mut. of Ohio, Inc., 6 F.3d 243, 248 (4th Cir. 1993).1
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`Under Federal Circuit law, “[a] party seeking to invalidate a patent on obviousness grounds
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`must demonstrate by clear and convincing evidence that a skilled artisan would have been
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`motivated to combine the teachings of the prior art references to achieve the claimed invention,
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`and … would have had a reasonable expectation of success in doing so.” InTouch Techs., Inc. v.
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`1 All emphasis added and internal quotation marks omitted unless otherwise noted.
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`1
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`VGO Commc’ns, Inc., 751 F.3d 1327, 1347 (Fed. Cir. 2014). “Identifying a motivation to combine
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`the prior art is important because inventions in most, if not all, instances rely on building blocks
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`long since uncovered, and claimed discoveries almost of necessity will be combinations of what,
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`in some sense, is already known.” TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1357 (Fed.
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`Cir. 2019) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)). “[A]llowing the
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`challenger to use the challenged patent as a roadmap to reconstruct the claimed invention using
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`disparate elements from the prior art [is] the impermissible ex post reasoning and hindsight bias
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`that KSR warned against.” Id.
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`For this reason, generalized or conclusory expert testimony that “bears no relation to any
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`specific combination of prior art elements” and “fails to explain why a person of ordinary skill in
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`the art would have combined elements from specific references in the way the claimed invention
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`does” is “insufficient for a reasonable jury to support a determination of obviousness.”
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)
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`(affirming Rule 50(a) pre-verdict judgment as a matter of law).
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`III. ARGUMENT
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`Philip Morris is entitled to judgment as a matter of law of no invalidity regarding the
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`’911 Patent because no reasonable jury could find that the asserted claims of the ’911 Patent are
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`obvious based on Mr. Kodama’s vague and conclusory expert testimony. FED. R. CIV. P. 50(a).
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`Each asserted claim (2, 11, 12, and 13) of the ’911 patent requires a blind hole cavity with
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`a “largest cross-sectional dimension x taken along a cross-section of the cavity in a direction
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`perpendicular to the longitudinal direction of the cavity, where x is 0.5 mm, or 1 mm, or between
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`0.5 mm and 1 mm.” There is no dispute that Han (Reynolds’ only primary reference) does not
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`disclose this limitation. See Ex. A (Trial Tr. 6/10/22 pm) at 116:14-19.
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 5 of 8 PageID# 33722
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`In an attempt to overcome this foundational deficiency, Mr. Kodama asserted that it would
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`have been obvious to modify Han’s device based on the Shizumu reference’s disclosure of a device
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`with an overall diameter of 7 millimeters. Based on this overall device dimension, Mr. Kodama
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`concluded that it would have been obvious to modify the “cavity” of Han to have the claimed
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`cavity dimensions of “0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.” But the sum total of his
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`testimony about why this would have been obvious is the single sentence below:
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`[I]f we take that as a starting point, the outer diameter being, let's say, 7 millimeters,
`and then we have to add in all these walls, right, the outer walls, two outer walls,
`the two inner walls that form the mouth hole, the actual mouth hole, it would be
`obvious to end up with a dimensional range for the cavity or the blind hole of 0.5
`to 1 millimeter.
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`Id. at 64:18-65:1. This “evidence” is legally deficient.
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`TQ Delta is instructive. There, the Federal Circuit found that the proffered evidence of a
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`motivation to combine was legally insufficient where the expert testified that “somebody could
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`look at a telepresence robot” or that “a person of ordinary skill can do that.” TQ Delta, LLC v.
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`CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (emphasis original). Mere evidence of
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`what a person of ordinary skill in the art could have done “is inadequate to support a finding that
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`there would have been a motivation to combine.” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir.
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`2017); see also, e.g., Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)
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`(finding that Board erred by “focus[ing] on what a skilled artisan would have been able to do,
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`rather than what a skilled artisan would have been motivated to do at the time of the invention”)
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`(emphasis original); InTouch, 751 F.3d at 1353 (finding that the “district court erred in denying
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`JMOL” on validity where “testimony primarily consisted of conclusory references to [the expert’s]
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`belief that one of ordinary skill in the art could combine these references, not that they would have
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`been motivated to do so.”); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 6 of 8 PageID# 33723
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`(Fed. Cir. 2017) (“Without any explanation as to how or why the references would be combined
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`to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.”).
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`Here, Mr. Kodama’s single-sentence “analysis” boils down to a legally deficient
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`conclusory assertion that a person of ordinary skill in the art might “end up with a dimensional
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`range for the cavity or the blind hole of 0.5 to 1 millimeter” because Shizumu discloses a device
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`with an overall diameter of 7 millimeters. Ex. A (Trial Tr. 6/10/22 pm) at 64:18-65:1. This
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`“analysis” is legally insufficient for a jury to find that a person of ordinary skill would have even
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`considered altering Han’s mouthpiece at all, let alone to achieve the claimed cavity dimension.
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`See Polaris, 882 F.3d at 1068 (finding it error to “focus[] on what a skilled artisan would have
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`been able to do, rather than what a skilled artisan would have been motivated to do at the time of
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`the invention”) (emphasis original); InTouch, 751 F.3d at 1352 (reversing denial of JMOL where
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`“testimony primarily consisted of conclusory references to [the expert’s] belief that one of ordinary
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`skill in the art could combine these references, not that they would have been motivated to do so.”).
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`Indeed, on cross-examination, Mr. Kodama conceded his “analysis” was defective. Mr.
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`Kodama admitted that he relied only on what a person of ordinary skill in the art “would be able
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`to ... combine” and applied impermissible hindsight. Ex. A (Trial Tr. 6/10/22 pm) at 109:1-2
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`(testifying that a “POSA would be able to understand the different teachings of the prior art, yes,
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`and combine them.”), 120:4-10 (“[I]t would have been obvious to a POSA at the time and someone
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`in industry to combine the features of those various patents in order to accomplish what is
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`disclosed ... in the Patent ’911”). This testimony falls far short of what the law requires.
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`Consequently, no reasonable jury could find the asserted claims of the ’911 patent invalid.
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`IV. CONCLUSION
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`Philip Morris respectfully requests that the Court grant its motion and enter judgment as a
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`matter of law of no invalidity of the ’911 Patent.
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 7 of 8 PageID# 33724
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`Dated: June 13, 2022
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` Respectfully submitted,
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`By: /s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`Lawrence J. Gotts (VSB No. 25337)
`lawrence.gotts@lw.com
`Matthew J. Moore (pro hac vice)
`matthew.moore@lw.com
`Jamie Underwood (pro hac vice)
`jamie.underwood@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
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`Clement J. Naples (pro hac vice)
`clement.naples@lw.com
`LATHAM & WATKINS LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200; Fax: (212) 751-4864
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`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
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`Counsel for Plaintiff Philip Morris Products
`S.A.
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`Case 1:20-cv-00393-LO-TCB Document 1341-1 Filed 06/13/22 Page 8 of 8 PageID# 33725
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th day of June, 2022, a true and correct copy of the foregoing
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`was served using the Court’s CM/ECF system, with electronic notification of such filing to all
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`counsel of record.
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`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (202) 637-2201
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