Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 1 of 7 PageID# 33969
`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 1 of 7 PagelD# 33969
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`EXHIBIT B
`EXHIBIT B
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 2 of 7 PageID# 33970
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`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Brett,
`
`Smith, Alexis Adian <asmith@jonesday.com>
`Tuesday, June 28, 2022 2:44 PM
`Sandford, Brett (Bay Area); Weinand, Paul (BN); RJREDVA; cmolster@molsterlaw.com
`#C-M PMIEDVA - LW TEAM
`RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`Thanks for getting back to us. We reiterate that, when you file your motion, you can represent that Reynolds does not oppose
`lifting the stay on injunction proceedings, and we agree that (absent a need for additional fact discovery) a briefing schedule of
`21 days for your opening; 30 days for our opposition; and 14 days for your reply should suffice.
`
`With regard to declarations, we understood your position this morning to be that, absent an invitation from the Court, PMP
`would not be offering expert declarations relating to its request for permanent injunction, whereas you do intend to use experts
`to support any motion for ongoing royalty. As we have stated repeatedly, Reynolds reserves the right to offer expert
`declarations on both issues, whether they are briefed together or separately.
`
`As for factual evidence, we understand that PMP intends to rely solely on the materials you identify below, namely “evidence
`produced in this case, the ITC case (including any ITC briefing/decisions), and any information/documents available in the public
`record (regardless of date).” Reynolds cannot know what evidence it will need to rely upon in its opposition until we see what
`PMP actually files, especially since PMP has not told Reynolds what new evidence it intends to rely upon. Accordingly, we
`reserve all rights with respect to responsive evidence, including the right to seek additional fact discovery, if appropriate.
`
`Regards,
`Lexi
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Brett.Sandford@lw.com <Brett.Sandford@lw.com>
`Sent: Tuesday, June 28, 2022 1:42 PM
`To: Smith, Alexis Adian <asmith@jonesday.com>; Paul.Weinand@lw.com; RJREDVA <RJREDVA@jonesday.com>;
`cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`** External mail **
`
`Chip, Lexi, and Jason,
`
`Thanks for meeting and conferring this morning. In response to your question, we agree neither party will rely on internal
`company documents not produced in this case as part of the injunctive relief briefing. We understand the parties agree they
`may rely on any evidence produced in this case, the ITC case (including any ITC briefing/decisions), and any
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`1
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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 3 of 7 PageID# 33971
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`information/documents available in the public record (regardless of date) for the briefing. This agreement does not preclude
`submitting declarations in support of the injunctive relief briefing. Please confirm. As discussed, if we do not hear from you by 6
`pm ET, we will file our motion based on our understanding from the meet and confer.
`
`Regards,
`
`Brett M. Sandford
`
`
`LATHAM & WATKINS LLP
`505 Montgomery Street | Suite 2000 | San Francisco, CA 94111-6538
`D: +1.415.395.8150
`
`
`From: Smith, Alexis Adian <asmith@jonesday.com>
`Sent: Monday, June 27, 2022 2:55 PM
`To: Sandford, Brett (Bay Area) <Brett.Sandford@lw.com>; Weinand, Paul (BN) <Paul.Weinand@lw.com>; RJREDVA
`<RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C-M PMIEDVA - LW TEAM <pmiedva.lwteam@lw.com>
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`Brett,
`
`Thank you for confirming the response time.
`
`On your second point, we are now confused by what PMP intends. On June 24, we specifically asked for confirmation that
`PMP’s “no further discovery” proposal meant that PMP would not be relying on facts that were not previously disclosed in the
`litigation. You responded shortly thereafter, confirming PMP’s position as: “The parties will be free to rely on facts that have
`been made available after Philip Morris’ injunctive relief claim was stayed, and admissions made by Reynolds and relevant
`exclusion/injunction discovery from the ITC investigation.” Now, however, you appear to be saying that PMP can rely on any
`facts to support its motion, regardless whether those facts have ever been made available to Reynolds. Reynolds agrees that
`both sides can make use of evidence from the ITC proceedings. But if PMP is now saying that it intends to rely on wholly new
`facts that have never been made available to Reynolds to support PMP’s motion, Reynolds does not agree to any proposal that
`would limit Reynolds’s right to full and appropriate fact discovery.
`
`Regards,
`Lexi
`
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Brett.Sandford@lw.com <Brett.Sandford@lw.com>
`Sent: Monday, June 27, 2022 11:38 AM
`To: Smith, Alexis Adian <asmith@jonesday.com>; Paul.Weinand@lw.com; RJREDVA <RJREDVA@jonesday.com>;
`cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`
`** External mail **
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`2
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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 4 of 7 PageID# 33972
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`Thanks for the response, Lexi.
`
`First, we agree to your proposal that Reynolds has 30 days to respond to PMP’s opening brief on injunctive relief. We disagree
`that injunctive relief and an ongoing royalty should be briefed together, and will note Reynolds’ position in our motion.
`
`Second, while it appears the parties are in agreement, to clarify, our proposal was/is that there is no need for further “formal
`discovery” but the parties can rely on any facts in the briefing (including but not limited to statements made by Reynolds in the
`ITC investigation), even if “not previously disclosed in this litigation” (and, if Reynolds believes that some further discovery
`becomes necessary, it can seek that relief at the appropriate time). Please confirm that Reynolds agrees.
`
`Brett M. Sandford
`
`
`LATHAM & WATKINS LLP
`505 Montgomery Street | Suite 2000 | San Francisco, CA 94111-6538
`D: +1.415.395.8150
`
`
`From: Smith, Alexis Adian <asmith@jonesday.com>
`Sent: Monday, June 27, 2022 10:12 AM
`To: Weinand, Paul (BN) <Paul.Weinand@lw.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C-M PMIEDVA - LW TEAM <pmiedva.lwteam@lw.com>
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`Paul,
`
`Thank you for the clarification, and for confirming that PMP will not rely on any facts to support its motion for a permanent
`injunction/ongoing royalty that were not previously disclosed in this litigation. If PMP departs from that commitment, Reynolds
`reserves all rights to seek further fact discovery.
`
`As we stated before, when PMP files its motion, you may represent to the Court that Reynolds does not oppose lifting the stay
`on injunctive proceedings. As to the timing of briefing, Reynolds should have 30 days for its opposition given the significance of
`the issues and that PMP will have more than 30 days since the verdict to prepare its opening brief. Please confirm that you
`agree. Further, while it appears that PMP is refusing to take a position around the use of fact or expert declarations, we
`reiterate our intention to offer such fact and expert declarations as are appropriate to address PMP’s filings.
`
`As to the staging of briefing, it appears that we are at an impasse. We do not agree that the injunction request should be
`briefed separately from any request for an ongoing royalty; the issues are substantively intertwined, and it would be a waste of
`the Court’s resources to split them up in the way you suggest.
`
`Regards,
`Lexi
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Paul.Weinand@lw.com <Paul.Weinand@lw.com>
`Sent: Friday, June 24, 2022 1:28 PM
`To: Smith, Alexis Adian <asmith@jonesday.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`
`3
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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 5 of 7 PageID# 33973
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`Cc: pmiedva.lwteam@lw.com
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`
`** External mail **
`
`
`Lexi,
`
`
`Thank you for confirming you do not oppose our motion to lift the stay on the issue of injunctive relief. We will file our motion
`noting that Reynolds does not oppose. Below are our responses to the questions you raised.
`
`
`First, while we disagree with your position that the merits of PMP’s injunctive relief claim should be evaluated in light of
`Reynolds’s affirmative infringement claims—which the Court has already held are irrelevant to PMP’s infringement claims—and
`that the implementation of any injunction should be stayed pending the resolution of all claims and appeals in the case, those
`issues need not be addressed at this stage.
`
`
`Second, Philip Morris intends to brief injunctive relief first and, if the Court denies such relief, then separately brief the issue of a
`compulsory license (subject to the Court’s preference).
`
`
`Third, Philip Morris takes no position on whether declarations, including expert declarations, are appropriate for injunctive relief
`briefing. Instead, we will seek the Court’s guidance on whether any declarations would be helpful to the Court.
`
`
`Fourth, our proposal that “no further discovery” is necessary refers to formal discovery (e.g., interrogatories, expert reports,
`depositions). The parties will be free to rely on facts that have been made available after Philip Morris’ injunctive relief claim
`was stayed, and admissions made by Reynolds and relevant exclusion/injunction discovery from the ITC investigation.
`
`
`Fifth, we agree to a 30-page limit for opening and responsive briefing, provided that Philip Morris’ reply is 20 pages. We
`disagree that Reynolds should have 40 days to respond, but will agree to a 21-day response period (with Philip Morris having 14-
`days to reply, as proposed). Please confirm this is acceptable.
`
`
`Please provide Reynolds’ positions on the above by 2 pm ET on Monday. If we do not hear from you by then, we will file our
`motion.
`
`Thanks,
`Paul
`
`Paul Weinand
`
`
`LATHAM & WATKINS LLP
`200 Clarendon Street | Boston, MA 02116
`D: +1.617.880.4580 | M: +1.609.558.8101
`
`
`From: Smith, Alexis Adian <asmith@jonesday.com>
`Sent: Friday, June 24, 2022 11:27 AM
`To: Weinand, Paul (BN) <Paul.Weinand@lw.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C-M PMIEDVA - LW TEAM <pmiedva.lwteam@lw.com>
`Subject: RE: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`Paul:
`
`We do not object to PMP’s motion to lift the stay on the injunction claim, but we reserve the right to argue that the merits of
`the claim should be evaluated in light of Reynolds’s affirmative infringement claims and that the implementation of any
`injunction should be stayed pending the resolution of all claims and appeals in the case.
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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 6 of 7 PageID# 33974
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`On the timing and page limits, we note that your proposal would afford PMP significantly more time than would ordinarily be
`allowed under EDVA rules, without fairly providing Reynolds an appropriate amount of time for its opposition. We do not object
`to the timing you have proposed for PMP’s own opening and reply briefs, or to the page limits you have proposed for your own
`briefs, provided that Reynolds is similarly provided adequate response time. To fully evaluate the remainder of your proposal,
`especially regarding the timing and page limits for Reynolds’s opposition, however, we need some additional information.
`
`First, does PMP intend to include as part of its motion for entry of a permanent injunction an alternative request for an ongoing
`royalty? This may impact our view of the number of pages we will require for opposition.
`
`Second, your email indicates that PMP will argue for “no further discovery.” We assume this means that PMP will not be relying
`in its motion on any facts that have not previously been disclosed in the litigation, and will not be submitting any expert
`declarations. Please confirm.
`
`Assuming that our understanding of your “no further discovery” proposal is correct, then we propose that Reynolds would have
`40 days to respond to PMP’s motion. In terms of pages, we propose that Reynolds would have the 30 pages normally allowed by
`local rule for its response if PMP’s motion is limited to the permanent injunction only, and 40 pages if the motion also includes
`an alternative request for ongoing royalty. Reynolds maintains, as it has since this issue was added, that Reynolds should be
`allowed to offer expert declarations in response to any effort by PMP to secure a permanent injunction. It is possible that we
`will ultimately determine that expert declarations are not necessary, but we will not know this until we see PMP’s motion.
`
`Regards,
`Lexi
`
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Paul.Weinand@lw.com <Paul.Weinand@lw.com>
`Sent: Wednesday, June 22, 2022 12:34 PM
`To: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: Case No. 1:20-cv-00393-LMB-TCB - Injunctive Relief
`
`
`** External mail **
`
`
`Counsel,
`
`
`As you know, Judge O’Grady entered a partial stay of the proceedings on Philip Morris’ claim for permanent injunctive
`relief. See Dkt. 702. Now that trial is over, we intend to ask Judge Brinkema to lift the stay and proceed with briefing (and no
`further discovery) on this issue. Please let us know by noon ET on Friday if Reynolds opposes this motion and/or the proposed
`briefing schedule below.
`
`
`Event
`Philip Morris’s opening brief
`
`
`Page Limit
`25 pages
`
`Deadline
`21 calendar days after the Court’s order setting the
`briefing schedule
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`5
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`Case 1:20-cv-00393-LMB-TCB Document 1367-2 Filed 06/28/22 Page 7 of 7 PageID# 33975
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`Reynolds’s responsive brief
`
`Philip Morris’s reply brief
`
`
`25 pages
`
`15 pages
`
`14 calendar days after Philip Morris’s opening brief
`is filed
`
`14 calendar days after Reynolds’s responsive brief
`is filed
`
`
`
`Thanks,
`Paul
`
`Paul Weinand
`
`
`LATHAM & WATKINS LLP
`200 Clarendon Street | Boston, MA 02116
`D: +1.617.880.4580 | M: +1.609.558.8101
`
`
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