Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 1 of 11 PageID# 33770
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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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`PHILIP MORRIS’ NOTICE OF OBJECTIONS TO VERDICT FORM AND
`FINAL JURY INSTRUCTIONS
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`Pursuant to the Court’s orders at the June 13, 2022 charge conference and June 13, 2022
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`email, Plaintiff Philip Morris Products S.A. (“Philip Morris”) respectfully submits the following
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`objections and proposed edits to the Court’s Verdict Form and Final Jury Instructions provided to
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`the parties via email on June 13, 2022.
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`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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`PHILIP MORRIS’ NOTICE OF OBJECTIONS TO VERDICT FORM AND
`FINAL JURY INSTRUCTIONS
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`Pursuant to the Court’s orders at the June 13, 2022 charge conference and June 13, 2022
`
`
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`email, Plaintiff Philip Morris Products S.A. (“Philip Morris”) respectfully submits the following
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`objections and proposed edits to the Court’s Verdict Form and Final Jury Instructions provided to
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`the parties via email on June 13, 2022.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 2 of 11 PageID# 33771
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`Verdict Form
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`Philip Morris requests that the Court strike the following language from “Question 3 –
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`Damages” and “Question 4 – Damages” in the Verdict Form:
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`• “if any”
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`• “If you find Philip Morris is entitled to no damages, enter a ‘0’ amount.”
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`Philip Morris objects to this language because it incorrectly suggests that the jury can, on this
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`evidentiary record, award no damages (assuming that the jury finds at least one claim of the
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`asserted patents infringed and not invalid). 35 U.S.C. § 284 expressly states that, “[u]pon finding
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`for the claimant the court shall award the claimant damages adequate to compensate for the
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`infringement, but in no event less than a reasonable royalty for the use made of the invention by
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`the infringer.” An award of zero damages is inconsistent with the plain language of the statute,
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`which “establishes the fact of damage because the patentee’s right to exclude has been violated.”
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`Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 895 F.2d 1403, 1406 (Fed. Cir.
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`1990). Indeed, Section 284 is unequivocal that, upon a finding of infringement, “the district court
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`must award damages in an amount no less than a reasonable royalty.” Dow Chem. Co. v. Mee
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`Indus., Inc., 341 F.3d 1370, 1381 (Fed. Cir. 2003). And, because “there is a presumption of
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`damages where infringement has been established,” it is improper to instruct the jury that it may
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`award zero damages. See id. at 1382 (“The district court’s conclusion that no damages could be
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`awarded, in light of the presumption of damages when infringement is proven, was in error.”).
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`Any suggestion that the jury may award zero damages is particularly inappropriate on this record,
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`as Philip Morris presented significant evidence supporting its damages requests and Reynolds
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`chose not to present any competing expert testimony.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 3 of 11 PageID# 33772
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`Jury Instruction No. 12: Summary of The Issues
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`Philip Morris requests that the Court clarify the questions in the summary of the issues in
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`two ways, and modify the third paragraph in this instruction.
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`First, Philip Morris requests that the Court clarify the first question so that it accurately
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`reflects the products that are accused for each patent. As written, Question No. 1 incorrectly
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`implies that the Solo G2 and Alto are both accused of infringing the ’265 and ’911 patents. Philip
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`Morris therefore proposes that the first question be split into two questions as follows, which will
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`help avoid juror confusion:
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`1. Has Philip Morris proven by a preponderance of the evidence that the VUSE Alto
`directly infringes the specified claims of the ’265 Patent.
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`2. Has Philip Morris proven by a preponderance of the evidence that the VUSE Solo G2
`or the VUSE Alto directly infringe the specified claims of the ’911 Patent.
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`Second, for Question No. 3, Philip Morris respectfully requests that the Court modify the
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`words “the patents are valid” to be “the ’911 patent is not invalid.” Philip Morris requests this
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`change because (i) Reynolds is only challenging the ’911 patent as invalid and (ii) the jury will
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`decide whether the patent is invalid or not, it will not decide whether the patent is “valid.”
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`Third, Philip Morris requests that the Court replace the word “licensed” in the last
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`paragraph with “enforced.” That is consistent with Philip Morris’ request during the charge
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`conference (6/13/22 p.m. Tr. at 67:16-7), where Philip Morris explained that it was (i) withdrawing
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`its proposal as to licensing but requesting that the Court instruct the jury that whether Philip Morris
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`has enforced its patents against any other company is irrelevant to infringement, validity, and
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`damages, consistent with Judge O’Grady’s order on Philip Morris’ Motion in Limine No. 11. Dkt.
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`1184 at 15-17.
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`3
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 4 of 11 PageID# 33773
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`Jury Instruction No. 22:
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`Philip Morris suggests that the Court include the language “Intentionally Omitted” in the
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`title of Instruction No. 22, as the number of this instruction appears without any title or substance
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`in the version provided by the Court. Philip Morris defers to the Court on how best to proceed.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 5 of 11 PageID# 33774
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`Jury Instruction No. 26: Invalidity – Prior Art Not Considered by the PTO
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`Philip Morris objects to the current version of Jury Instruction No. 26 and respectfully
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`requests that the Court also include Philip Morris’ proposed language (reproduced at the bottom
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`of this page). During the charge conference, the Court indicated that it would accept both Parties’
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`proposals if it gave either. 6/13/22 Tr. at 56:13-25 (“It is sadly repetitive, but this is a tougher
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`issue in some respects because I would give both if I’m going to give either, all right?”). The
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`current version of Jury Instruction No. 26 includes Reynolds’ proposed language but omits Philip
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`Morris’ proposed language. Philip Morris requests that the Court include Philip Morris’ proposed
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`language because, absent this language, the instruction will be unbalanced. At a minimum, Philip
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`Morris requests that the Court include the final sentence (“This burden of proof on Reynolds never
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`changes regardless of whether the Patent Examiner considered the reference.”), which will help
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`avoid juror confusion that could be created if the jury mistakenly believes that Reynolds has a
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`lower burden to prove invalidity if certain prior art was not considered by the Examiner.
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`***
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`[Regardless of whether a particular prior art reference was considered by the Patent
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`Examiner during the prosecution of the application that matured into the asserted patents, the
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`asserted claims are presumed to be valid. To overcome this presumption of validity, Reynolds
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`must prove by clear and convincing evidence that the asserted claim(s) are invalid. This burden
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`of proof on Reynolds never changes regardless of whether the Patent Examiner considered the
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`reference.]
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 6 of 11 PageID# 33775
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`Jury Instruction No. 27: Prior Art – Printed Publications
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`Philip Morris proposes editing “each asserted patents” to “the ’911 patent” to reflect that
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`the only relevant priority date for validity purposes is the ’911 Patent, as Reynolds is not
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`challenging validity for the ’265 patent.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 7 of 11 PageID# 33776
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`Jury Instruction No. [32, omitted from version sent by the Court]: Obviousness – The
`Fourth Factor (Other Considerations)
`Philip Morris objects to (former) Jury Instruction No. 32: Obviousness – The Fourth Factor
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`(Other Considerations) being omitted from the jury instructions. As Philip Morris explained at the
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`charge conference, the jury must consider evidence of secondary considerations when addressing
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`Reynolds’ nonobviousness. 6/13/22 p.m. Tr. at 59:17-61:20; Apple Inc. v. Int’l Trade Comm’n,
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`725 F.3d 1356, 1365 (Fed. Cir. 2013) (“We have repeatedly held that evidence relating to all four
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`Graham factors—including objective evidence of secondary considerations—must be considered
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`before determining whether the claimed invention would have been obvious.”). Contrary to
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`Reynolds’ argument, evidence of secondary considerations of nonobviousness was presented at
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`trial. For example, Philip Morris presented evidence that the accused products have achieved
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`significant commercial success, including the testimony of Philip Morris’ damages expert, Paul
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`Meyer. Philip Morris, through the testimony of Dr. Abraham, also showed that accused products
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`practice the asserted claims of the ’911 patent and are coextensive with the claims; as such, the
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`law presumes a nexus between the commercial success and claimed inventions. See, e.g., Polaris
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`Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018). Should the Court include
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`this instruction, Philip Morris objects to Reynolds’ proposed language for the reasons stated during
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`the charge conference. 6/13/22 p.m. Tr. at 59:17-61:20.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 8 of 11 PageID# 33777
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`Jury Instruction No. 32: Damages – Generally
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`Philip Morris requests that the Court modify the second paragraph for the same reasons as
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`set forth above for Jury Instruction No. 12, to clarify that the VUSE Solo G2 is only accused of
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`infringing the ’911 patent, and that Reynolds is only challenging the validity of the ’265 patent.
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 9 of 11 PageID# 33778
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`Jury Instruction 38: Reasonable Royalty – Non-infringing Alternatives
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`Philip Morris requests that the Court include the proposed instruction on non-infringing
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`alternatives. At the charge conference, the Court indicated that this instruction would be included.
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`6/13/22 p.m. Tr. at 67:9-11. Even though Reynolds stipulated not to present any argument,
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`evidence, or testimony regarding design arounds or non-infringing alternatives, this absence of
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`evidence is relevant to damages and Georgia Pacific Factor #9. Including this instruction will
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`help the jury understand how the absence of design arounds and non-infringing alternatives
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`impacts the appropriate amount of reasonable royalty damages.
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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
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`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
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`
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 10 of 11 PageID# 33779
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`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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`10
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`Case 1:20-cv-00393-LMB-TCB Document 1349 Filed 06/13/22 Page 11 of 11 PageID# 33780
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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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`11
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