Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 1 of 21 PageID# 34034
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`PHILIP MORRIS PRODUCTS S.A.,
`
`
`Plaintiff,
`
`
`v.
`
`R.J. REYNOLDS VAPOR COMPANY,
`
`
`Defendant.
`
`Case No. 1:20-cv-00393-LMB-TCB
`
`
`ORAL ARGUMENT REQUESTED
`
`
`
`
`
`
`
`MEMORANDUM IN SUPPORT OF PHILIP MORRIS’
`MOTION FOR JUDGMENT AS A MATTER OF LAW OF INFRINGEMENT OR,
`ALTERNATIVELY, A NEW TRIAL
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`
`
`
`
`

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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 2 of 21 PageID# 34035
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`TABLE OF CONTENTS
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`
`
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`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`LEGAL STANDARD ..........................................................................................................2
`
`A.
`
`B.
`
`C.
`
`Judgment as a Matter of Law ...................................................................................2
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`New Trial Under Rule 59 .........................................................................................3
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`Infringement .............................................................................................................3
`
`III.
`
`THE COURT SHOULD ENTER JUDGMENT AS A MATTER OF LAW THAT
`THE VUSE ALTO INFRINGES THE ’911 PATENT OR, ALTERNATIVELY,
`GRANT A NEW TRIAL .....................................................................................................5
`
`A.
`
`There Is No Legally Sufficient Evidence For A Reasonable Juror To Find
`That The Alto Does Not Meet The “cavity is a blind hole” Element ......................5
`
`1.
`
`2.
`
`Reynolds’ Purported Evidence Of Non-Infringement Contradicts
`The Law Of The Case ..................................................................................5
`
`Mr. Kodama Admittedly Did Not Perform Any Functional Testing ...........8
`
`There Is No Legally Sufficient Evidence For A Reasonable Juror To Find
`That The Alto Does Not Meet The Cross-Sectional Dimension Element ...............9
`
`There Is No Legally Sufficient Evidence For A Reasonable Juror To Find
`The Alto Does Not Meet The “cavity contains capillary material” Element ........14
`
`B.
`
`C.
`
`IV.
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`CONCLUSION ..................................................................................................................15
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`
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 3 of 21 PageID# 34036
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Bennett v. R & L Carriers Shared Servs., LLC,
`744 F. Supp. 2d 494 (E.D. Va. 2010), aff’d, 492 F. App’x 315 (4th Cir. 2012)........................3
`
`Callicrate v. Wadsworth Mfg., Inc.,
`427 F.3d 1361 (Fed. Cir. 2005)..................................................................................................3
`
`Edmondson v. Am. Motorcycle Ass’n, Inc.,
`7 F. App’x 136 (4th Cir. 2001) ..................................................................................................3
`
`Hutchins v. Zoll Med. Corp.,
`492 F.3d 1377 (Fed. Cir. 2007)..................................................................................................4
`
`LifeNet Health v. LifeCell Corp.,
`837 F.3d 1316 (Fed. Cir. 2016)..............................................................................................2, 3
`
`Liquid Dynamics Corp. v. Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006)............................................................................................4, 14
`
`LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc.,
`275 F.3d 1347 (Fed. Cir. 2001)............................................................................................9, 14
`
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016)..................................................................................................5
`
`Mannatech, Inc. v. Glycoproducts Int’l, Inc.,
`No. 06-cv-0471, 2008 WL 2704425 (N.D. Tex. July 9, 2008) ..................................................4
`
`Nuance Commc’ns, Inc. v. Abbyy Software House, Inc.,
`No. 08-cv-2912, 2012 WL 1188903 (N.D. Cal. Apr. 9, 2012), aff’d sub nom.,
`813 F.3d 1368 (Fed. Cir. 2016)..................................................................................................7
`
`Sardis v. Overhead Door Corp.,
`10 F.4th 268 (4th Cir. 2021) ............................................................................................2, 3, 10
`
`Siemens Med. Sols. USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.,
`637 F.3d 1269 (Fed. Cir. 2011)..................................................................................................4
`
`SIPCO, LLC v. Emerson Elec. Co.,
`980 F.3d 865 (Fed. Cir. 2020)....................................................................................................7
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015)..................................................................................................4
`
`ii
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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 4 of 21 PageID# 34037
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`
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`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)..............................................................................................4, 7
`
`Whitserve, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (Fed. Cir. 2012)............................................................................................5, 8, 14
`
`YETI Coolers, LLC v. RTIC Coolers, LLC,
`No. 15-cv-597, 2017 WL 404519 (W.D. Tex. Jan. 27, 2017) ...................................................4
`
`Other Authorities
`
`FED. R. CIV. P.
`50................................................................................................................................................4
`50(b) ...........................................................................................................................................2
`59................................................................................................................................................3
`59(a) .......................................................................................................................................2, 5
`59(a)(1)(A) ...........................................................................................................................3, 15
`
`
`
`
`
`iii
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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 5 of 21 PageID# 34038
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`I.
`
`INTRODUCTION
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`A reasonable juror could only find the Alto infringes claims 2, 11, and 12 (which all depend
`
`from claim 1) of U.S. Patent No. 10,104,911 (“’911 Patent”) based on the evidence presented at
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`trial and the jury’s contrary finding is against the clear weight of the evidence. Reynolds admitted
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`the Alto meets each limitation of the asserted claims except three: (i) “at least one cavity is a blind
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`hole” (claim 1); (ii) “a largest cross-sectional dimension x. . . . of the cavity . . . where x is 0.5 mm,
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`or 1 mm, or between 0.5 mm and 1 mm” (claim 1); and (iii) “at least one cavity contains capillary
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`material” (claim 2). Ex. 1 (Trial Tr. 6/10 a.m.) at 617:15-618:8; 626:4-15. Reynolds’ sole
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`purported evidence of non-infringement was the testimony of its technical expert, Mr. Kodama.
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`But that testimony was legally erroneous because it contradicts the law of the case and plain
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`language of the ’911 Patent. Mr. Kodama’s testimony was also untethered to any functional testing
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`of the Alto—indeed, he admitted on cross-examination that he never even “turned on the Alto” let
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`alone performed “any functional testing on the Reynolds products.” Id. at 669:5-7; 671:9-13.
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`For the first disputed element, Mr. Kodama opined that the claimed “cavity” that is a “blind
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`hole” cannot have open sides because Philip Morris purportedly disclaimed such structures during
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`prosecution. That contradicts the express and unequivocal law of the case and, in any event, is
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`legally incorrect. The Court’s claim construction and Daubert orders held that there were no
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`disclaimers or other departures from the plain meaning of the term. Mr. Kodama’s testimony is
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`squarely refuted by those rulings and erroneously imported negative limitations from exemplary
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`embodiments into the claims. It was separately contrary to Reynolds’ own technical documents,
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`sworn testimony from Reynolds’ director of vapor product deployment, and unrebutted functional
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`testing that Philip Morris’s technical expert, Dr. Abraham, performed on the Alto to independently
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`show the spaces he identified meet the claim’s requirements literally or under the Doctrine of
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`Equivalents (“DOE”), including collecting liquid condensate.
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`1
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 6 of 21 PageID# 34039
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`For the second disputed element, Mr. Kodama undisputedly did not measure the Alto cavity
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`from wall-to-wall, as the ’911 Patent requires. The claim language recites the largest cross-
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`sectional dimension of a cavity that is “recessed in the wall of the aerosol-forming chamber.” And
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`the specification teaches to make the relevant measurement from wall-to-wall. By contrast, Mr.
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`Kodama measured the “width of the rib.” The only correct measurement was Dr. Abraham’s,
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`which undisputedly shows the Alto cavity has a largest cross-sectional wall-to-wall dimension of
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`0.99037 mm, literally within the claimed range of both “1 mm” and “between 0.5 mm and 1 mm.”
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`For the third disputed element, Mr. Kodama’s testimony that silicone is supposedly the
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`“opposite of a capillary material” contradicts the specification’s teaching that the claimed capillary
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`material can be “any material which is suitable for retaining [] liquid.” Dkt. 40-3 at 13:33-34. Dr.
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`Abraham’s unrebutted functional testing confirmed the structure and material he identified retains
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`liquid. No reasonable juror could have found otherwise.
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`Reynolds’ purported evidence is deficient as a matter of law for a reasonable jury to find
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`non-infringement of the ’911 Patent by the Alto, and thus the jury’s non-infringement verdict is
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`also against the clear weight of the evidence. Philip Morris thus requests judgment as a matter of
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`law or, alternatively, a new trial on infringement of the ’911 Patent. FED. R. CIV. P. 50(b), 59(a).
`
`II.
`
`LEGAL STANDARD
`A.
`
`Judgment as a Matter of Law
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`The Court may grant JMOL if there is no “legally sufficient evidentiary basis for a
`
`reasonable jury to render the verdict that it did.” Sardis v. Overhead Door Corp., 10 F.4th 268,
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`279 (4th Cir. 2021); see also LifeNet Health v. LifeCell Corp., 837 F.3d 1316, 1322 (Fed. Cir.
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`2016) (applying regional circuit law to review JMOL decisions).1 This requires the court to “first
`
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`1 All emphasis added, and internal quotations and citations omitted, unless otherwise noted.
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`
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`2
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`

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`excise any evidence that was erroneously admitted during trial, because ‘inadmissible evidence
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`contributes nothing to a legally sufficient evidentiary basis.’” Sardis, 10 F.4th at 279. JMOL
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`should be granted if the Court “determines, without weighing the evidence or considering the
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`credibility of the witnesses, that substantial evidence does not support the jury’s findings.” Bennett
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`v. R & L Carriers Shared Servs., LLC, 744 F. Supp. 2d 494, 509 (E.D. Va. 2010), aff’d, 492 F.
`
`App’x 315 (4th Cir. 2012). The Court “should review ‘all of the evidence in the record’” and give
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`credence to “evidence supporting the moving party that is uncontradicted and unimpeached.”
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`Edmondson v. Am. Motorcycle Ass’n, Inc., 7 F. App’x 136, 146 (4th Cir. 2001).
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`B.
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`New Trial Under Rule 59
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`Under Rule 59, a new trial can be granted on any issue “for any reason for which a new
`
`trial has heretofore been granted in an action at law in federal court.” FED. R. CIV. P. 59(a)(1)(A).
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`“In the Fourth Circuit, on a motion for a new trial it is the duty of the trial court to set aside the
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`verdict and grant a new trial if (1) the verdict is against the clear weight of the evidence, or (2) is
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`based upon evidence which is false, or (3) will result in a miscarriage of justice, even though there
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`may be substantial evidence which would prevent the direction of a verdict.” LifeNet, 93 F. Supp.
`
`3d at 488. “The first and second prongs are factual determinations,” while “[t]he third prong
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`requires a policy analysis.” Id. Under Rule 59, “the Court may make credibility judgments in
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`determining the clear weight of the evidence.” Id
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`C.
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`Infringement
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`An infringement analysis is a two-step process: (1) “the court determines the scope and
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`meaning of the patent claims,” and (2) the properly construed claims are compared to the allegedly
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`infringing device.” Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1366 (Fed. Cir. 2005).
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`For the first step, “[c]laim terms are generally given their ordinary and customary meaning
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`as understood by a person of ordinary skill in the art when read in the context of the specification
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`3
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`Case 1:20-cv-00393-LMB-TCB Document 1376 Filed 06/29/22 Page 8 of 21 PageID# 34041
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`and prosecution history.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir.
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`2016); see also TomTom, Inc. v. Adolph, 790 F.3d 1315, 1329 (Fed. Cir. 2015) (same). There are
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`“only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his
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`own lexicographer,2 or 2) when the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” Unwired Planet, 829 F.3d at 1358. “A disclaimer or
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`disavowal of claim scope must be clear and unmistakable, requiring ‘words or expressions of
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`manifest exclusion or restriction’ in the intrinsic record.” Id.
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`For the second step, “[p]atent infringement requires that every element and limitation in a
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`correctly construed claim is embodied in the accused system either literally or … in compliance
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`with the rules of equivalency.” Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1380 (Fed. Cir. 2007).
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`An accused product that performs “substantially the same function in substantially the same way
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`to obtain the same result” as the claim element infringes under the DOE. Siemens Med. Sols. USA,
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`Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed. Cir. 2011).
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`In deciding a Rule 50 motion, the Court may exclude “expert opinion evidence as irrelevant
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`because it [is] based on an impermissible claim construction.” Liquid Dynamics Corp. v. Vaughan
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`Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006); see also YETI Coolers, LLC v. RTIC Coolers, LLC,
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`No. 15-cv-597, 2017 WL 404519, at *2 (W.D. Tex. Jan. 27, 2017) (finding “attempt to have [the
`
`expert] ‘explain’ the plain and ordinary meaning of claim terms is a rather poorly disguised attempt
`
`to offer the jury constructions different from the Court’s” that is a “blatant attempt to ‘back door’
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`[the] rejected claim construction into the trial”); Mannatech, Inc. v. Glycoproducts Int’l, Inc., No.
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`06-cv-0471, 2008 WL 2704425, at *2 (N.D. Tex. July 9, 2008) (granting JMOL of infringement
`
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`2 Reynolds has never argued that lexicography applies. See Dkt. 223 at 26-31; Dkt. 1344 at 2, n.1.
`Any such argument, if raised belatedly, is waived.
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`4
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`when “the only way the jury could have found that the accused product does not infringe the patent
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`was by relying on the distinction drawn by defendant and rejected by the court”). Likewise,
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`“general and conclusory testimony is not enough to be even substantial evidence in support of a
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`verdict.” Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 24 (Fed. Cir. 2012).
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`III. THE COURT SHOULD ENTER JUDGMENT AS A MATTER OF LAW THAT
`THE VUSE ALTO INFRINGES THE ’911 PATENT OR, ALTERNATIVELY,
`GRANT A NEW TRIAL
`A.
`
`There Is No Legally Sufficient Evidence For A Reasonable Juror To Find
`That The Alto Does Not Meet The “cavity is a blind hole” Element
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`Reynolds’ argument that the Alto does not meet the “cavity is a blind hole” element is
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`based solely on Mr. Kodama’s testimony that the spaces Dr. Abraham identified in the Alto
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`(1) have two open sides and (2) are purportedly designed only to hold a gasket in place.3 That
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`testimony is wrong as a matter of law for two reasons, and any non-infringement finding based on
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`such legally erroneous testimony is against the clear weight of the evidence. FED. R. CIV. P. 59(a).
`
`1.
`
`Reynolds’ Purported Evidence Of Non-Infringement Contradicts The
`Law Of The Case
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`First, to support the assertion that the claimed “cavity is a blind hole” cannot have any
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`open sides, Mr. Kodama relied on statements made during prosecution regarding U.S. Patent No.
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`5,935,975 (“Rose”). Mr. Kodama expressly opined that the Applicants’ statements to the Patent
`
`Office were “defining what blind means, which means a space . . . that is not open around the
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`side.”4 Ex. 1 (Trial Tr. 6/10 a.m.) at 605:1-11. That testimony contradicts the law of the case from
`
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`3 Reynolds’ arguments that the Alto does not include a “cavity” and a “blind hole” are substantially
`identical and wrong for the same reasons. Ex. 1 (Trial Tr. 6/10 a.m. at 626:4-627:3.)
`4 Mr. Kodama’s assertion that the Applicants’ statements were definitional amounts to an opinion
`about lexicography. Yet Reynolds has never argued there is lexicography. Dkt. 1344 at 2, n.1.
`For good reason. Lexicography requires that a patentee “clearly set forth a definition of the
`disputed claim term and clearly express an intent to redefine the term.” Luminara Worldwide,
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`
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`5
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`

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`the Court’s claim construction and Daubert orders, which expressly held there were no disclaimers
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`from the plain meaning of the claimed “cavity is a blind hole.” Dkt. 360 at 1; Dkt. 1184 at 23.
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`In its claim construction order, the Court rejected Reynolds’ proposed construction of
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`“blind hole” as “a hole that does not extend to the outside of the aerosol-generating system.” Dkt.
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`360 at 1; Dkt. 223 at 28. Instead, the Court held that: (i) all disputed terms, including “blind hole,”
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`“are all well known common English words given their common meaning,” and (ii) there were no
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`disclaimers based on the prosecution history, in view of Rose or otherwise. Dkt. 360 at 1.
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`Reynolds doubled down at summary judgment, arguing that Dr. Abraham’s infringement
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`opinion related to the Alto “runs headlong into [Applicants’] successful prosecution argument to
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`the Examiner that the Rose ‘fingers’ do not satisfy the claim” and are “‘the opposite of what is
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`claimed.’” Dkt. 750 at 9-10. The Court again rejected Reynolds’ argument and denied summary
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`judgment of no infringement. Dkt. 803 at 2.
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`Reynolds took a third bite at the apple in its Daubert motion. Reynolds argued that the
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`Applicants’ statements that “the spaces behind each finger 64 in Rose are open around the sides of
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`each finger … inarguably provide relevant evidence of how a person of ordinary skill in the art
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`would understand the terms ‘blind’ and ‘non-blind’ hole at the time of the invention” and “preclude
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`[Philip Morris]’s infringement theory as to Alto – i.e., that the ‘raised lips’ Dr. Abraham identifies
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`in the Alto can satisfy the ‘blind hole’ limitation of claim 1.” Dkt. 950 at 9-10, 23-25. The Court
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`rejected that argument and reiterated the law of the case—namely:
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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-
`
`•
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` •
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`
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`LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). The Applicants’ statements do
`not remotely rise to that level.
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`6
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`

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`hole that also contained additional spaces or cavities.”
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`Dkt. 1184 at 23. The Court rejected that the plain meaning of “blind hole” excludes structures
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`with additional open spaces or cavities. Id.
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`The Court’s rulings are the express and unequivocal law of the case and confirm that
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`Reynolds misstates the prosecution history. Ex. 2 (6/2 Hr’g Tr.) at 10:3-23. As Dr. Abraham
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`explained at trial, Rose and the Alto are “totally different” because Rose does not discuss any
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`cavities or any structures that are “blind.” Ex. 3 (Trial Tr. 6/8 p.m.) at 279:23-25, 280:22-25.
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`Rather, Rose discusses “fingers sticking out from a wall” while the Alto includes a “cavity that’s
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`confined by walls.” Id. at 280:22-25. Reynolds’ argument also contradicts the ’911 Patent
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`specification, which teaches that a “blind hole” is a type of cavity that “does not extend to the
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`outside of the aerosol generating system.” Dkt. 40-3 at 10:50-52, 10:55-56; Ex. 1 (Trial Tr. 6/10
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`a.m.) at 686:3-9; Unwired Planet, 829 F.3d at 1358. At bottom, Reynolds improperly relied on
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`the prosecution history to restrict the plain meaning of “blind hole” so that it excludes spaces open
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`around the sides. Ex. 1 (Trial Tr. 6/10 a.m.) at 605:1-11.
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`Beyond mischaracterizing the prosecution history, Mr. Kodama’s opinions contradict
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`black letter law because they import a major negative limitation (i.e., the claimed cavity cannot
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`have any open spaces) from exemplary embodiments in the specification into the claims. As the
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`Federal Circuit has repeatedly held, it is improper “to import exemplary embodiments [] from the
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`specification into the broader claim term.” SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 872
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`(Fed. Cir. 2020); see also Nuance Commc’ns, Inc. v. Abbyy Software House, Inc., No. 08-cv-2912,
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`2012 WL 1188903, at *4 (N.D. Cal. Apr. 9, 2012), aff’d sub nom., 813 F.3d 1368 (Fed. Cir. 2016)
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`(“Negative limitations should not be accepted, however, absent ‘clear disavowal, disclaimer or
`
`estoppel.’”). Moreover, the specification states the inventions are “further described, by way of
`
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`7
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`example only,” with reference to the embodiments shown in Figures 3-6. Dkt. 40-3 at 8:38-40,
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`8:46-55. Reynolds’ argument that the Alto does not infringe because it has a “blind hole” or
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`“cavity” with open sides is legal error and contradicts the law of the case. It cannot, as a matter of
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`law, form the basis for a jury’s finding of non-infringement.
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`2.
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`Mr. Kodama Admittedly Did Not Perform Any Functional Testing
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`Second, Mr. Kodama opined that the spaces in the Alto that Dr. Abraham identified were
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`“designed purely to hold the gasket in place.” Ex. 1 (Trial Tr. 6/10 a.m.) at 626:8-10. This “general
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`and conclusory testimony is not enough to be even substantial evidence in support of a verdict.”
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`Whitserve, 694 F.3d at 24. Indeed, Mr. Kodama’s testimony was not based on any testing
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`whatsoever. Ex. 1 (Trial Tr. 6/10 a.m.) at 669:18-21, 671:9-13, 690:24-691:1.
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`By contrast, Dr. Abraham first applied the plain and ordinary meaning of the “cavity is a
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`blind hole” element to determine that the Alto infringes based on Reynolds’ technical documents,
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`witness testimony, and his independent and unrebutted testing. Ex. 3 (Trial Tr. 6/8 p.m.) at 196:19-
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`23; Dkt. 360 at 1. Indeed, Mr. Kodama did not dispute that the spaces in the Alto identified by Dr.
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`Abraham have the features that claim 1 requires: “an open end,” “a closed end,” and “a longitudinal
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`direction between the open end and closed end.” Ex. 1 (Trial Tr. 6/10 a.m.) at 685:24-686:2,
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`689:12-25. He also did not dispute that the spaces identified by Dr. Abraham “are not visible from
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`the outside of the Alto,” as the specification teaches. See Ex. 1 (Trial Tr. 6/10 a.m.) at 685:24-
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`686:2, 687:8-13; Dkt. 40-3 at 10:50-52, 10:55-56; Ex. 3 (Trial Tr. 6/8 p.m.) at 187:22-188:9.
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`Second, Dr. Abraham’s testing showed that the Alto’s cavities collect and trap liquid
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`condensate. Ex. 3 (Trial Tr. 6/8 p.m.) at 224:8-225:22. Mr. Kodama did not (and could not)
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`provide any evidence rebutting Dr. Abraham’s testing results because he did not test the Alto. Ex.
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`1 (Trial Tr. 6/10 a.m.) at 669:18-21, 671:9-13, 690:24-691:1. Indeed, Eric Hunt, Reynolds’
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`director of vapor product deployment, who Mr. Kodama agreed “has a more detailed
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`8
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`understanding of the structure and design of the Reynolds products,” testified that “condensate
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`could form” in the Alto’s blind hole cavities. Id. at 681:12-15, 721:19-23, 741:9-11.
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`Third, Dr. Abraham testified based on his analysis of technical documents and independent
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`testing that the Alto meets the claim limitation under the DOE. Ex. 3 (Trial Tr. 6/8 p.m.) at 187:13-
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`188:9, 224:8-225:2, 225:12-22. He testified that the accused and claimed cavities have
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`“insubstantial differences” and perform substantially the same function (to collect or trap liquid
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`condensate) in substantially the same way (by capillary action) to achieve the same result (to
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`reduce or prevent leakage). Id. at 224:8-225:2. While Mr. Kodama testified that the Alto does not
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`infringe under the DOE because the “function of the ribs is not to trap condensate,” but “to properly
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`position that gasket in place,” that testimony is legally insufficient to sustain the jury’s non-
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`infringement verdict because it is untethered to any evidence or functional testing of the Alto. Ex.
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`1 (Trial Tr. 6/10 a.m.) at 614:11-12, 614:19-21, 669:18-21, 671:9-13, 690:24-691:1.
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`*****
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`Mr. Kodama’s opinions regarding the “cavity is a blind hole” element were based on legal
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`error and unsupported by any testing. By contrast, Dr. Abraham’s opinions on this limitation were
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`unrebutted. Thus, no reasonable jury could find the Alto does not meet this element, literally or
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`under the DOE, and the jury’s contrary finding of non-infringement is against the clear weight of
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`the evidence.
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`B.
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`There Is No Legally Sufficient Evidence For A Reasonable Juror To Find
`That The Alto Does Not Meet The Cross-Sectional Dimension Element
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`Reynolds’ purported evidence that the spaces Dr. Abraham identified as “blind holes” do
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`not have a “largest cross-sectional dimension” that is “between 0.5 mm and 1 mm” is based on an
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`erroneous and irrelevant measurement by Mr. Kodama. His testimony is legally irrelevant and not
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`a proper basis for a reasonable jury’s finding of non-infringement. See LNP Eng’g Plastics, Inc.
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`v. Miller Waste Mills, Inc., 275 F.3d 1347, 1357 (Fed. Cir. 2001) (affirming JMOL of infringement
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`where non-infringement argument was based on a limitation not recited in the claims); Sardis, 10
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`F.4th at 279 (in deciding a JMOL, the court must first “excise” inadmissible evidence that
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`“contributes nothing to a legally sufficient evidentiary basis.”).
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`Mr. Kodama testified that what he referred to as the “width of the rib” in the Alto was 2.82
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`mm. Ex. 1 (Trial Tr. 6/10 a.m.) at 624:22-625:4. But the Alto includes a rib (i.e., a raised lip) and
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`another wall to form a cavity “between the raised lip and the wall of the mouthpiece” where
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`condensate is held. Ex. 3 (Trial Tr. 6/8 p.m.) at 192:14-193:1, 248:13-16; Ex. 1 (Trial Tr. 6/10
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`a.m.) at 721:19-23. Indeed, Mr. Kodama confirmed that the Alto had such “a raised lip at the top
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`of the mouthpiece opening.” Ex. 1 (Trial Tr. 6/10 a.m.) at 682:17-20. And Mr. Hunt also
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`acknowledged the Alto includes “raised lip areas” where “condensate could form.” Id. at 721:19-
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`23, 741:9-11. In other words, as shown below, the space Dr. Abraham identified in the Alto
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`indisputably includes two structures—i.e., the two walls that determine the largest cross-sectional
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`dimension. By contrast, Mr. Kodama’s rib measurement was not a wall-to-wall measurement of
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`the cavity “recessed in the wall,” as the patent requires. Instead, it was the width of the rib, a
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`“physical part” that is not “recessed in the wall” and cannot be the claimed cavity.
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`Ex. 4 (Abraham Demonstrative) at -069 (Mr. Kodama’s measurement in red and Dr. Abraham’s
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`in yellow); Ex. 3 (Trial Tr. 6/8 p.m.) at 228:6-11; Ex. 1 (Trial Tr. 6/10 a.m.) at 624:22-625:4.
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`The plain language of claim 1 confirms the “largest cross-sectional dimension” is a wall-
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`to-wall measurement, not the “width of the rib” measured by Mr. Kodama. Ex. 1 (Trial Tr. 6/10
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`a.m.) at 624:22-625:4. The plain language of claim 1 recites “a cavity.” Dkt. 40-3 at 18:19. That
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`cavity is “in a wall of the aerosol-forming chamber.” Id. at 18:19. That cavity also “is a blind
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`hole recessed in the wall of the aerosol-forming chamber and has an open end, a closed end, and
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`a longitudinal direction extending between the open end and the closed end.” Id. at 18:22-26. And
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`that blind hole cavity has “a largest cross-sectional dimension x taken along a cross-section of the
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`cavity in a direction perpendicular to the longitudinal direction of the cavity.” Id. at 18:26-29. As
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`Dr. Abraham explained, claim 1 repeatedly recites the cavity is in a wall, which “conveys the
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`importance of the wall” because “it’s the walls that help hold the liquid condensate.” Id. at 18:22-
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`30; Ex. 5 (Abraham Demonstrative) at PDX-6.003; Ex. 6 (Trial Tr. 6/13 a.m.) at 836:3-837:6.
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`Based on this context and the claim language that “a largest cross-sectional dimension x” of the
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`cavity is “taken along a cross-section” of the cavity in the wall, the cross-sectional dimension x
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`must be “from one wall to another.” Ex. 6 (Trial Tr. 6/13 a.m.) at 836:3-837:6.
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`The specification also teaches that the “largest cross-sectional dimension” is a wall-to-wall
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`measurement. Figure 4 shows blind holes 305 and 307 “with a cross sectional dimension x.” Dkt.
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`40-3 at 10:49-56, 11:26-27; Ex. 3 (Trial Tr. 6/8 p.m.) at 192:14-19.
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`Dkt. 40-3 at Fig. 4 (annotated to show the largest cross-sectional dimension highlighted in yellow).
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`That “cross-sectional dimension” is the area between the arrows and dashed lines labeled “x,” i.e.
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`the largest distance between walls in the cavity, which Dr. Abraham testified, teaches a person of
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`ordinary skill “to make the measurements from one wall to another across the cavity.” Ex. 3 (Trial
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`Tr. 6/8 p.m.) at 192:14-19. As Mr. Kodama admitted, the specification also explains that the
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`“largest cross-sectional dimension x” shown in Figure 4 is “large enough to collect a sufficient
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`amount of liquid, but small enough to trap the liquid in the cavity by capillary action.” Dkt. 40-3
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`at 11:28-31; Ex. 1 (Trial Tr. 6/10 a.m.) at 620:1-11. And Dr. Abraham testified that capillary
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`action is “generated at walls” and “the smaller the space” between the walls, “the larger the force.”
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`Ex. 3 (Trial Tr. 6/8 p.m.) at 192:20-194:6. Accordingly, the largest cross-sectional dimension x
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`must be “the wall-to-wall size of the cavity … that trap[s] and hold[s] liquid” to ensure that the
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`“largest cross-sectional dimension x” is consistent with its description in the specification. Id. at
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`193:4-11, 207:11-18; Ex. 6 (Trial Tr. 6/13 a.m.) at 836:3-837:2.
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`Similarly, Figure 6 depicts another example of a blind hole whose largest cross-sectional
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`dimension is measured wall-to-wall. Ex. 3 (Trial Tr. 6/8 p.m.) at 192:9-19; Ex. 7, PX-8A at -
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`16296; Ex. 1 (Trial Tr. 6/10 a.m.) at 678:10-16. Mr. Kodama disputed that Figure 6 shows a blind
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`hole at all. Ex. 1 (Trial Tr. 6/10 a.m.) at 680:8-13. But that argument contradicts the Examiner’s
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`express statement during prosecution that Figures 5 and 6 show “a blind hole being toroid” and
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`one of the ’911 Patent claims (claim 13) that requires the cavity that is a blind hole to have a
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`“toro