Case 1:20-cv-00393-LO-TCB Document 1344 Filed 06/13/22 Page 1 of 5 PageID# 33734
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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 IN LIMINE TO
`PRECLUDE REYNOLDS FROM CONTRADICTING THE COURT’S
`CONSTRUCTION OF “BLIND HOLE”
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`Case 1:20-cv-00393-LO-TCB Document 1344 Filed 06/13/22 Page 2 of 5 PageID# 33735
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`Philip Morris respectfully moves the Court in limine to preclude Reynolds from presenting
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`arguments that contradict Judge O’Grady’s prior claim construction and Daubert orders. See Dkt.
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`360 at 1; Dkt. 1184 at 23. Specifically, the Court should bar Reynolds from arguing that the claim
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`term “blind hole” recited in the ’911 patent cannot contain additional spaces or cavities.
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`“Once a district court has construed the relevant claim terms … that legal determination
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`governs for purposes of trial,” and “[n]o party may contradict the court’s construction.” Exergen
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`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009). For example, in LifeNet
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`Health v. LifeCell Corp., the court granted a motion in limine barring the plaintiff from making
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`“arguments contrary to the Court’s claim construction.” No. 13-cv-486, 2014 WL 5529679, at *6
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`(E.D. Va. Oct. 31, 2014). Likewise, in BMC Software, Inc. v. Servicenow, Inc., the court excluded
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`any opinions that “contradict or deviate from this Court’s Claim Construction Memorandum.” No.
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`14-cv-903, 2016 WL 367251, at *2 (E.D. Tex. Jan. 29, 2016). The same result follows here.
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`Reynolds intends to argue that the spaces Philip Morris’ expert, Dr. Abraham, identifies in
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`the Alto are not “blind holes” because they have openings around the side. Ex. 1 (Trial Tr. 6/10/22
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`a.m.) at 42:8-10. In particular, Reynolds’ expert, Mr. Kodama, testified that statements in the
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`prosecution history about the Rose ’975 patent supposedly “defin[e] what blind means,” i.e., “a
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`space that has -- that is not open around the side.” Id. at 20:22-21:11.
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`Mr. Kodama is conducting claim construction, which is reserved exclusively for the Court.
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`See Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995). Worse, his
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`improper testimony contradicts Judge O’Grady’s express holdings that:
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`• “The Court finds that the criticism of the ’975 patent [Rose] has not led to the disavowal
`of any ‘blind hole’ that contains spaces or cavities,” and
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`• “The discussion of the ’975 patent during the prosecution history was mere criticism
`and did not expressly disclaim the subject matter of any blind-hole that also contained
`additional spaces or cavities.” Dkt. 1184 at 23.
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`Case 1:20-cv-00393-LO-TCB Document 1344 Filed 06/13/22 Page 3 of 5 PageID# 33736
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`Thus, Judge O’Grady expressly ruled that the plain meaning of “blind hole” includes “any blind-
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`hole that also contained additional spaces or cavities.” Id.
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`As this Court already told Reynolds, Judge O’Grady’s orders are law of the case. Ex. 2
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`(6/2/22 Hr’g Tr.) at 10:3-23 (“My understanding also is that basically the claim construction has
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`been done, and he basically found that the words that are at issue or the claims that are at issue use
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`language that is pretty much plain English and doesn’t need any kind of special construing by the
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`Court. … I’m not going to undo anything that Judge O’Grady has done. So, whatever he has done,
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`as far as I’m concerned, is the law of the case.”).
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`Moreover, because it contradicts Judge O’Grady’s prior holdings, Reynolds’ argument
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`about the meaning of “blind hole” is “irrelevant to the question of infringement” and only risks
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`“confusing the jury.”1 MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 913 (Fed. Cir. 2012)
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`(citation omitted). Indeed, “[t]he risk of confusing the jury is high” where a party presents claim
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`construction arguments “before the jury even when, as here, the district court makes it clear to the
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`jury that the district court’s claim constructions control.” Cytologix Corp. v. Ventana Med. Sys.,
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`Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005). The Court should thus also exclude Reynolds’
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`arguments under Federal Rules of Evidence 401 and 403.
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`For these reasons, the Court should preclude Reynolds from arguing or suggesting that the
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`term “blind hole” excludes additional spaces or cavities, such as openings on the side of the cavity.
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`1 Reynolds’ argument invites legal error because it contradicts Federal Circuit law holding that
`“the words of a claim are generally given their ordinary and customary meaning” in view of the
`intrinsic record, absent “lexicography” (which Reynolds has not alleged) or (2) disavowal (which
`Judge O’Grady twice held does not apply). Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d
`1362, 1365 (Fed. Cir. 2012). Judge O’Grady expressly ruled that the plain meaning of “blind hole”
`includes “any blind-hole that also contained additional spaces or cavities.” Dkt. 1184 at 23.
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`2
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`Case 1:20-cv-00393-LO-TCB Document 1344 Filed 06/13/22 Page 4 of 5 PageID# 33737
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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
`
`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
`
`Gregory 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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`3
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`Case 1:20-cv-00393-LO-TCB Document 1344 Filed 06/13/22 Page 5 of 5 PageID# 33738
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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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`4
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