Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 1 of 7 PageID# 33754
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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
`
`
`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 ARGUING THAT THE PATENT OFFICE
`EXAMINER ERRED
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`

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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 2 of 7 PageID# 33755
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`I.
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`INTRODUCTION
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`Philip Morris requests that the Court preclude Reynolds from presenting arguments that
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`the Patent Office Examiner reviewing the ’911 application: (1) did not consider the “Xia” reference
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`and (2) “used the wrong wording” or otherwise made a mistake when describing Figures 5 and 6.
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`II.
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`ARGUMENT
`A.
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`The Examiner Considered The “Xia” Reference
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`Based on the testimony from Reynolds’ technical expert for the ’911 patent, Kelly Kodama,
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`Philip Morris expects Reynolds to incorrectly argue to the jury that the Examiner did not consider
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`the Xia reference during prosecution of the ’911 patent. On cross-examination, Mr. Kodama
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`testified that he “believes that the claim of Xia with the second cavity was perhaps not considered”
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`by the Examiner:
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`Q.
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`A.
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`Q.
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`A.
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`In fact, Xia is one of those references that the Patent Office examiner
`already considered before allowing the ’911 Patent, right?
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`Yes, it was in the file history of the patent.
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`***
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`But you think the examiner just got it totally wrong, right?
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`Totally wrong with regard to regarding Xia?
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`Q. With regards to allowing the ’911 Patent claims to issue despite considering
`Xia.
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`A.
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`I believe that the claim of Xia with the second cavity was perhaps not
`considered.
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`Ex. A (Trial Tr. 6/10/22 a.m.) 111:21-24, 112:19-25 (emphasis added). That is factually incorrect
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`and legally improper. Reynolds should not be allowed to present similar improper arguments to
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`the jury for three reasons.
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`1
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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 3 of 7 PageID# 33756
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`First, when overruling Reynolds’ counsel’s foundation objection1, the Court “accepted” as
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`a “fact” that Xia “was considered by the Patent Office.” Id. at 111:25-112:12. The Court was
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`correct: Xia appears on the face of the ’911 patent—the Examiner electronically signed the IDS
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`document on which Xia appears, thus expressly acknowledging that he considered it. PX-8 at 509.
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`Second, any argument that the Examiner did not consider Xia should be barred as contrary
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`to law. Where, as here, “prior art is listed on the face of a patent, the examiner is presumed to
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`have considered it.” BlephEx, LLC v. Myco Indus., Inc., 24 F.4th 1391, 1402 (Fed. Cir. 2022)
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`(citation omitted); see also Applied Materials, Inc. v. Adv. Semiconductor Materials Am., Inc., 98
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`F.3d 1563, 1569 (Fed. Cir. 1996) (same). Moreover, examiners are “entitled to appropriate
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`deference as official agency action, for examiners are deemed to be experienced in the relevant
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`technology as well as the statutory requirements for patentability.” Nature Simulation Sys., Inc. v.
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`Autodesk, Inc., 23 F.4th 1334, 1343 (Fed. Cir. 2022). Reynolds’ argument that the Examiner did
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`not consider Xia violates this well-established law and should be barred.
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`Third, because it is factually incorrect and contrary to law, any argument that the Examiner
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`did not consider Xia is irrelevant. FED. R. EVID. 401. Moreover, any probative value that this
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`factually incorrect and legally improper argument carries is substantially outweighed by the risks
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`of confusing and misleading the jury, who may be erroneously believe that the Examiner actually
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`did not consider Xia and thus more likely to find that it invalidates the ’911 Patent. FED. R. EVID.
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`403. Such a result would unfairly prejudice Philip Morris.
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`The Court should bar Reynolds from contradicting this Court’s ruling and controlling law
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`by arguing that the Examiner did not consider Xia during prosecution of the ’911 patent.
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`1 Reynolds’ counsel’s baseless objection was: “We don’t know if that examiner looked at the
`specific patent. There’s no evidence of that in the record.” Ex. A (Trial Tr. 6/10/22 a.m.) at 112:2-
`9. The factual premise of that objection was false. PX-8 at 509.
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`2
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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 4 of 7 PageID# 33757
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`B.
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`The Examiner Did Not Use “The Wrong Wording”
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`Based on testimony from Mr. Kodama, Philip Morris’ expects Reynolds to argue to the
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`jury that the Examiner used “the wrong wording,” or otherwise erred, when reviewing the ’911
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`application. During cross-examination and when asked a question by Reynolds counsel that was
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`intended to elicit improper testimony, Mr. Kodama testified that the Examiners erred during
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`prosecution of the ’911 patent:
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`Q.
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`A.
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`Now, that’s exactly what Figure 6 of the ’911 Patent shows, right, ‘the at
`least one cavity is a blind hole has a toroidal shape,’ correct?
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`That’s Figure 6, but I would not call that a blind hole. Based upon my
`experience in the industry, that is not a blind hole. That would be what we
`call an annular groove.
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`Q.
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`It’s just not what the examiners called it, right?
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`A. Well, unfortunately, I believe the examiners might have used the wrong
`wording there. They actually used ‘blind cavity’ instead of ‘blind hole.’ In
`industry, we would not call that area shaded in yellow a blind hole, it would
`be an annular groove or some other shape.
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`Q.
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`A.
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`In other words, you think the experts [i.e., the examiners at the Patent
`Office] got it wrong.
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`I think they might have chosen the wrong wording in their reply, yes.
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`Ex. A (Trial Tr. 6/10/22 a.m.) at 96:8-22 (emphasis added). This rank speculation is improper and
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`lacks any factual basis. It should be excluded.
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`Such argument contradicts the parties’ agreed motion in limine No. 3, which states “[n]o
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`party will present argument, evidence, or testimony disparaging the United States Patent and
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`Trademark Office … or its examiners.” Dkt. 822 at 2. Moreover, examiners are entitled to
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`deference because, as even Mr. Kodama recognizes, they “have expertise in the art of the ’911
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`Patent” and “understand the ’911 Patent’s claims.” Ex. A (Trial Tr. 6/10/22 a.m.) at 91:14-20;
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`Nature Simulation, 23 F.4th at 1343 (“Actions by PTO examiners are entitled to appropriate
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`3
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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 5 of 7 PageID# 33758
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`deference as official agency actions”). It would be improper to allow Reynolds to suggest, without
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`any factual basis, that the Examiner was wrong or otherwise erred. Such suggestions are routinely
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`excluded in jury trials because they only serve to confuse and mislead the jury into finding that
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`Reynolds’ asserted prior art somehow invalidates the ’911 patent. FED. R. EVID. 403.
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`The Court should bar Reynolds from improperly suggesting that the Examiner “used the
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`wrong wording” or otherwise erred when reviewing the ’911 application.
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`III. CONCLUSION
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`Philip Morris respectfully requests that the Court preclude Reynolds from arguing that the
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`’911 patent Examiner: (1) did not consider the “Xia” reference and (2) “used the wrong wording”
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`or otherwise made a mistake when describing the figures in the specification.
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`4
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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 6 of 7 PageID# 33759
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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 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
`
`Counsel for Plaintiff Philip Morris Products
`S.A.
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`5
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`Case 1:20-cv-00393-LO-TCB Document 1347 Filed 06/13/22 Page 7 of 7 PageID# 33760
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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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`6
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