Case 1:20-cv-00393-LMB-TCB Document 1353 Filed 06/14/22 Page 1 of 8 PageID# 33820
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
`
`v.
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and Counterclaim Defendants,
`
`
`
`ALTRIA CLIENT SERVICES LLC; Philip
`Morris USA INC.; and Philip Morris
`PRODUCTS S.A.,
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`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LMB-TCB
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`REYNOLDS’S OBJECTIONS TO THE COURT’S PROPOSED FINAL JURY
`INSTRUCTIONS AND VERDICT FORM
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`Defendant Reynolds respectfully submits the following objections and suggested revisions
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`to the Court’s proposed final jury instructions (attached as Exhibit 1) and verdict form (attached
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`as Exhibit 2). Reynolds preserves its objections (see Dkt. 1315) to the parties’ Joint Proposed
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`Final Jury Instructions (Dkt. 1204-1) and to Philip Morris’s additional proposed instructions (Dkt.
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`1314) to the extent they are not reflected in the Court’s proposed instructions.
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`I.
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`DOCTRINE OF EQUIVALENTS
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`For the reasons that follow, the proposed instructions and verdict form questions on
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`doctrine of equivalents are unnecessary (in the case of the ’265 patent) or legally unsupportable
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`(in the case of the ’911 patent).
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`A.
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`The ’265 Patent
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`At trial, Philip Morris’s expert on the ’265 patent, Dr. Walbrink, offered a doctrine of
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`equivalents opinion on only one claim term—“vaporizer membrane.” See June 9, 2022 (AM) Trial
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`1
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`Tr. 16–17 (“I find it does include a vaporizer membrane. And even if you weren’t to find it literally
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`included in there, it also meets the requirements underneath an analysis called the doctrine of
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`equivalents.”). To streamline the issues for the jury, Reynolds proposes the following stipulation
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`be read to the jury, contingent on the Court’s removing the doctrine of equivalents question from
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`the verdict form (Ex. 2, Section I, Question 2):
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`R.J. Reynolds Vapor Company stipulates that VUSE Alto contains a vaporizer
`membrane as disclosed in Claim 1 of the ’265 patent (PX-002, column 9, lines 42,
`47–48).
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`With this stipulation, the doctrine of equivalents is no longer relevant to Philip Morris’s
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`claim of infringement of the ’265 patent, and the question on this theory of infringement should
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`be removed from the Court’s verdict form.
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`B.
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`The ’911 Patent
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`Similarly, Philip Morris’s expert on the ’911 patent, Dr. Abraham, offered a doctrine of
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`equivalents opinion on only one claim term, “cavity,” for the Alto product. See June 8, 2022 (PM)
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`Trial Tr. 74 (“I think the Alto literally does have the claimed cavity. As I’ve shown from the
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`documentation, the engineering CAD drawings, and my own investigation, but if it’s decided that
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`they don’t literally have the cavity, they would also infringe under something called the doctrine
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`of equivalents ….”). However, Dr. Abraham offered only a literal infringement opinion on the
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`claim term, “blind hole”:
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`Q. Let’s turn, then, to that fifth part of Claim 1. What did you find for Alto, Dr.
`Abraham?
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`A. In my investigation I found that the Alto had the fifth part of the claim as well.
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`Q. Okay. Let’s go to the next demonstrative, 65. Tell the jury how you know that.
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`A. On the screen you see photograph PX 38 at page 34, that’s a photograph that I
`took, and I’ve got a white box around an area that I want to draw your attention
`to. On the right-hand side is an image from the CAD file, PX 265A, and I found
`that their device has a cavity in a wall of the aerosol-forming chamber with an
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`2
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`Case 1:20-cv-00393-LMB-TCB Document 1353 Filed 06/14/22 Page 3 of 8 PageID# 33822
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`open end and a closed end and a longitudinal direction, and I also found it’s a
`blind hole because you can’t see the cavity if you’re from the perspective of the
`red eyeball.
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`Q. And is that that same “blind hole” term, the one you referenced earlier with
`that passage from the patent?
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`A. Yes, it is.
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`Q. Let’s go to the next demonstrative, Dr. Abraham, Number 66. So in summary,
`what do you find about this fifth part of Claim 1, the one that talks about the blind
`hole for the Alto?
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`A. I find that the Alto has the fifth part of Claim 1.
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`Id. at 75–76.
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`Dr. Abraham also testified that the blind holes of the ’911 patent are a type of cavity, one
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`that you cannot see because they are inside the device and do not “go all the way through the wall.”
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`Id. at 38 (“Imagine you’ve got a device and instead of looking at it this way, you look at it this
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`way. You don’t see those cavities because they’re inside. They don’t go all the way through the
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`wall, so that’s what a blind -- that’s what a cavity being a blind hole means.”); see also id. at 40
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`(“these are just two different ways that the patent describes these blind hole cavities”). That
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`testimony accords with the language of claim 1, which discloses that “the at least one cavity is a
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`blind hole,” ’911 Patent, 18:22, and the prosecution history of the ’911 patent, which shows that
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`Philip Morris narrowed the application by defining the claimed cavity as a blind hole. See June
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`10, 2022 (AM) Trial Tr. 20 (“So originally in the patent application, the words ‘blind hole’ were
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`not in there”); id. at 21 (“So what happened is the patent examiner objected saying that Rose
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`disclosed cavity, and in Philip Morris’s argument to the Patent Office they defined what defines
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`“non-blind.”).
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`The blind hole as described in the ’911 patent is thus a type or subset of cavity, and a
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`product can only infringe if it contains a cavity that is a blind hole. In this situation, an equivalent
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`to a cavity cannot also be a literal blind hole. Consider the scenario where the jury determines that
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`the Alto has a cavity only under the doctrine of equivalents. It still has to find that the same Alto
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`cavity is a blind hole. Because there is no basis in the record for the jury to find that the Alto has
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`an equivalent to a blind hole, the jury can find infringement only if the Alto has a literal blind hole.
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`And, the jury cannot find the Alto has a literal blind hole (a subset of cavity) where it has already
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`found it does not have a literal cavity. The doctrine of equivalents has no role to play in the jury’s
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`resolution of infringement claim as to the ’911 patent.
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`If the Court agrees, then the question on doctrine of equivalents for the ’911 patent (Ex. 2,
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`Section II, Question 2), should be omitted from the verdict form. If both the ’265 and ’911 doctrine
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`of equivalent questions are omitted from the verdict form, then the Court should omit the
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`corresponding instruction on doctrine of equivalents. Ex. 1, Instr. No. 21, at 23–24.
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`II.
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`APPORTIONMENT
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`Reynolds objects to the omission of its proposed Final Instruction No. 51 (as filed in Dkt.
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`1204-1 at 113) (“Reasonable Royalty – Apportionment”). Apportionment remains an issue in this
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`case because it is part of Philip Morris’s burden to prove damages. The jury need not believe Mr.
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`McAlexander’s apportionment opinion. See Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d
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`1368, 1378 (Fed. Cir. 2005). Indeed, the jury has heard evidence significantly undercutting that
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`apportionment opinion. The jury should be permitted to assess Mr. McAlexander’s apportionment
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`under the law as instructed by the Court. Reynolds therefore preserves its objection as stated
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`during the charge conference. June 13, 2022 (PM) Trial Tr. at 40:3-13.
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`III. REYNOLDS’S PROPOSED CHANGES TO PROPOSED FINAL JURY
`INSTRUCTIONS
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`Reynolds respectfully submits the following edits to the Court’s proposed Jury Instructions
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`of June 13, 2022 (Exhibit 1):
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`Instruction No. 10: Reynolds suggests that the Court omit “or done” (line 2), “or other
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`conduct” (line 5), “or other conduct” (line 6), and the entire third paragraph (a single sentence
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`beginning “An act or omission”) to conform to the Court’s ruling to omit references to inconsistent
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`conduct. 6/13/22 Tr. 44:23-45:1.
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`Instruction No. 12: Reynolds requests that the first statement of the issue be revised to
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`read: “Has Philip Morris proven by a preponderance of the evidence that the VUSE Alto directly
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`infringes the specified claims of the ’265 Patent and that the VUSE Solo G2 or VUSE Alto directly
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`infringes the specified claims of the ’911 Patent.” This change reflects that only the VUSE Alto
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`has been accused of infringing the specified claims of the ’265 Patent.
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`Reynolds further requests that the Court replace “infringement, validity, and damages”
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`(lines 14-15) with “infringement and validity,” since licensing and patent ownership are relevant
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`to the factors listed in Instruction No. 35.
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`Instruction No. 24: Reynolds requests that the Court replace “that is, you must be left
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`with a clear conviction that the particular claim is invalid” with “which means that Reynolds must
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`show that it is highly probable that the claim is invalid,” to conform to the Court’s ruling on
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`Instruction No. 13. See 6/13/22 Tr. 45:8-11.
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`Instruction No. 27: Reynolds proposes deleting this instruction, as the parties do not
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`dispute that the prior art references in this case are printed publications.
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`Instruction No. 30: Reynolds suggests replacing “asserted patents that Reynolds contends
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`is obvious” with “’911 Patent.”
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`Case 1:20-cv-00393-LMB-TCB Document 1353 Filed 06/14/22 Page 6 of 8 PageID# 33825
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`Dated: June 14, 2022
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`
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`Stephanie E. Parker
`JONES DAY
`1221 Peachtree Street, N.E.
`Suite 400
`Atlanta, GA 30361
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@jonesday.com
`
`
`Anthony M. Insogna
`JONES DAY
`4655 Executive Drive
`Suite 1500
`San Diego, CA 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Email: aminsogna@jonesday.com
`
`William E. Devitt
`JONES DAY
`77 West Wacker
`Suite 3500
`Chicago, IL 60601
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@jonesday.com
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`Sanjiv P. Laud
`JONES DAY
`90 South Seventh Street
`Suite 4950
`Minneapolis, MN 55402
`Telephone: (612) 217-8800
`Facsimile: (844) 345-3178
`Email: slaud@jonesday.com
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`Respectfully submitted,
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`
`
`/s/ David M. Maiorana
`
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
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`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: (212) 326-3939
`Facsimile: (212) 755-7306
`Email: jjnormile@jonesday.com
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`
`Alexis A. Smith
`JONES DAY
`555 South Flower Street
`Fiftieth Floor
`Los Angeles, CA 90071
`Telephone: (213) 243-2653
`Facsimile: (213) 243-2539
`Email: asmith@jonesday.com
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`Charles B. Molster
`THE LAW OFFICES OF
`CHARLES B. MOLSTER, III PLLC
`2141 Wisconsin Avenue, N.W. Suite M
`Washington, DC 20007
`Telephone: (202) 787-1312
`Email: cmolster@molsterlaw.com
`
`Counsel for RAI Strategic Holdings, Inc.
`and R.J. Reynolds Vapor Company
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`Case 1:20-cv-00393-LMB-TCB Document 1353 Filed 06/14/22 Page 7 of 8 PageID# 33826
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 14th 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/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`
`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
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