Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 1 of 22 PageID# 34123
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs and Counterclaim Defendants,
`
`
`
`ALTRIA CLIENT SERVICES LLC; Philip
`Morris USA INC.; and Philip Morris
`PRODUCTS S.A.,
`
`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LMB-TCB
`
`
`REYNOLDS’S MEMORANDUM IN SUPPORT OF
`RULE 50(b) RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW AND
`RULE 59 MOTION FOR A NEW TRIAL
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`
`

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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 2 of 22 PageID# 34124
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`
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ......................................................................................................... ii
`INTRODUCTION ......................................................................................................................... 1
`LEGAL STANDARD .................................................................................................................... 1
`ARGUMENT ................................................................................................................................. 1
`I.
`REYNOLDS IS ENTITLED TO JUDGMENT OR A NEW TRIAL ON THE
`’265 PATENT. ................................................................................................................... 1
`A.
`The Asserted Claims of the ’265 Patent Are Invalid as Indefinite. ....................... 1
`B.
`The Alto Thermal Resistor Does Not Have “Dimensions Substantially the
`Same as a Cross-Section of a Cigarette or Cigar.” ................................................ 3
`The Alto Heater Is Not “Configured to Be Connected to the Mouthpiece.” ......... 4
`C.
`The Alto Thermal Resistor Is Not a Metallic Foil or Thin Sheet. ......................... 8
`D.
`REYNOLDS IS ENTITLED TO JUDGMENT OR NEW TRIAL ON THE ’911
`PATENT AS TO SOLO G2. ............................................................................................. 8
`A.
`The Asserted Claims of the ’911 Patent Are Invalid as Obvious. ......................... 8
`B.
`PMP Failed to Prove Solo G2 Infringes the ’911 Patent. .................................... 10
`1.
`The Solo G2 does not contain a “blind hole.” ......................................... 10
`2.
`The Solo G2 cavity does not meet the required dimensions. ................... 12
`THE COURT SHOULD GRANT A NEW TRIAL DUE TO PMP’S PATTERN
`OF PREJUDICIAL QUESTIONS AND REMARKS. .................................................... 14
`CONCLUSION ............................................................................................................................ 15
`
`III.
`
`II.
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`
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`-i-
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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 3 of 22 PageID# 34125
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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page
`
`Arthur A. Collins, Inc. v. N. Telecom Ltd.,
`216 F.3d 1042 (Fed. Cir. 2000)..................................................................................................8
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`555 F.3d 984 (Fed. Cir. 2009)....................................................................................................6
`
`Ecolab, Inc. v. Envirochem, Inc.,
`264 F.3d 1358 (Fed. Cir. 2001)..................................................................................................2
`
`Flowers v. Tandy Corp.,
`773 F.2d 585 (4th Cir. 1985) .....................................................................................................8
`
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc.,
`222 F.3d 951 (Fed. Cir. 2000)..................................................................................................12
`
`Huss v. Gayden,
`571 F.3d 442 (5th Cir. 2009) .....................................................................................................8
`
`In re Mobile Telecomms. Techs., LLC,
`265 F. Supp. 3d 454 (D. Del. 2017) ...........................................................................................2
`
`Intell. Ventures I LLC v. Altera Corp.,
`No. 10-cv-1065, 2013 WL 3913646 (D. Del. July 26, 2013) ....................................................6
`
`Intell. Ventures I LLC v. Motorola Mobility LLC,
`870 F.3d 1320 (Fed. Cir. 2017)..................................................................................................7
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)..................................................................................................2
`
`Jeneric/Pentron, Inc. v. Dillon Co., Inc.,
`205 F.3d 1377 (Fed. Cir. 2000)..........................................................................................12, 13
`
`KSR Int’l, Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................................9
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)................................................................................................15
`
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`-ii-
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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 4 of 22 PageID# 34126
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`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`Meister v. Med. Eng’g Corp.,
`267 F.3d 1123 (D.C. Cir. 2001) .................................................................................................8
`
`Midwest Athletics & Sports All. LLC v. Ricoh USA, Inc.,
`No. 2:19-cv-00514, 2020 WL 6158233 (E.D. Pa. Oct. 21, 2020) .............................................2
`
`Myco Indus., Inc. v. BlephEx, LLC,
`No. 2:19-cv-10645, 2020 WL 2897443 (E.D. Mich. June 3, 2020) ..........................................6
`
`Myrick v. Prime Ins. Syndicate, Inc.,
`395 F.3d 485 (4th Cir. 2005) .....................................................................................................1
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...................................................................................................................1
`
`Pfizer, Inc. v. Apotex, Inc.,
`480 F.3d 1348 (Fed. Cir. 2007)..................................................................................................9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................................10, 11
`
`Rasmussen Instruments, LLC v. DePuy Synthes Prod., Inc.,
`No. 20-cv-11807, 2021 WL 4975286 (D. Mass. Oct. 26, 2021) ...............................................6
`
`ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010)..................................................................................................15
`
`Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V.,
`528 F.3d 1365 (Fed. Cir. 2008)................................................................................................10
`
`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995)..................................................................................................12
`
`Univ. of Pittsburgh v. Hedrick,
`573 F.3d 1290 (Fed. Cir. 2009)................................................................................................12
`
`Varian Med. Sys., Inc. v. ViewRay, Inc.,
`No. 19-CV-05697-SI, 2020 WL 4260714 (N.D. Cal. July 24, 2020) ........................................2
`
`-iii-
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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 5 of 22 PageID# 34127
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Waddington N. Am., Inc. v. Sabert Corp.,
`No. 09-4883, 2011 WL 3444150 (D.N.J. Aug. 5, 2011) .........................................................14
`
`Page
`
`
`STATUTES
`
`35 U.S.C § 112(b) ............................................................................................................................1
`
`35 U.S.C. § 298 ..............................................................................................................................15
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 50 .............................................................................................................................1
`
`Fed. R. Civ. P. 59 .............................................................................................................................1
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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 6 of 22 PageID# 34128
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`
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`INTRODUCTION
`
`R.J. Reynolds Vapor Company respectfully moves for judgment as a matter of law under
`
`Rule 50(b) and alternatively for a new trial under Rule 59, regarding the judgment entered by the
`
`Court on June 15, 2022. Dkt. 1362.
`
`LEGAL STANDARD
`
`“If the court does not grant a motion for judgment as a matter of law made under Rule
`
`50(a) … the movant may file a renewed motion for judgment as a matter of law and may include
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`an alternative or joint request for a new trial under Rule 59.” Fed. R. Civ. P. 50(b). The Court
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`must enter judgment if “a reasonable jury could reach only one conclusion based on the evidence
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`or if the verdict in favor of the nonmoving party would necessarily be based upon speculation and
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`conjecture.” Myrick v. Prime Ins. Syndicate, Inc., 395 F.3d 485, 489 (4th Cir. 2005).
`
`I.
`
`ARGUMENTREYNOLDS IS ENTITLED TO JUDGMENT OR A NEW TRIAL
`ON THE ’265 PATENT.
`
`A.
`
`The Asserted Claims of the ’265 Patent Are Invalid as Indefinite.
`
`Independent claim 1 of the ’265 patent requires a thermal resistor having “dimensions
`
`substantially the same as a cross-section of a cigarette or a cigar.” That subjective term is indefinite
`
`as a matter of law under 35 U.S.C. § 112(b). “[A] patent is invalid for indefiniteness if its claims,
`
`read in light of the specification delineating the patent, and the prosecution history, fail to inform,
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`with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc.
`
`v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). As Reynolds explained in its Markman
`
`briefing, the ’265 patent specification fails to inform a person of ordinary skill in the art (“POSA”)
`
`of the claim’s scope—it uses the generic phrase “substantially the same,” and provides no
`
`dimensions for the measurement. See Dkt. 223 at 25-27; Dkt. 309 at 31-34.
`
`First, “substantially” is a term of degree, but the specification never uses the term—much
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`less does it define it. “A term of degree fails to provide sufficient notice of its scope if it depends
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`on the unpredictable vagaries of any one person’s opinion.” Interval Licensing LLC v. AOL, Inc.,
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`766 F.3d 1364, 1371 (Fed. Cir. 2014). The jury in this case was faced with just such vagaries, and
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`PMP presented no evidence of how a POSA would ascertain the claim’s scope in context. Other
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`courts confronting similar terms have found them indefinite when the specification fails to provide
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`guidance on the claim’s bounds.1 Second, neither the claim language nor the specification offers
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`any standard for measuring the claimed cross-section. To be sure, “the term ‘substantially’ is a
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`descriptive term commonly used in patent claims to avoid a strict numerical boundary to the
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`specified parameter.” Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). But
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`“[a]lthough absolute or mathematical precision is not required, it is not enough … to identify some
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`standard for measuring the scope of the phrase.” Interval Licensing, 766 F.3d at 1370-71
`
`(emphasis added). Third, that the ’265 patent purports to claim the dimensions of the resistor
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`compared to “a cross-section of a cigarette or a cigar” does not eliminate the indefiniteness, but
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`rather compounds it. The specification describes neither a cigarette nor a cigar, and PMP’s own
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`expert testified that they “come in … various sizes.” Ex. 1 at 321:11-18. Indeed, PMP’s expert
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`testimony shows that the jury was left to define these dimensions themselves: Mr. Walbrink
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`offered no measurement, and testified that the claims “require no dimensions, specifically
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`numerically,” and that the Alto thermal resistor would satisfy the limitation even though (at 9 mm2)
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`it was one-fifth the cross-sectional area of an average cigarette (49 mm2), precisely “because there
`
`
`1 See Varian Med. Sys., Inc. v. ViewRay, Inc., No. 19-CV-05697-SI, 2020 WL 4260714, at *6
`(N.D. Cal. July 24, 2020) (holding “substantially same” and “different” cross sections indefinite);
`Midwest Athletics & Sports All. LLC v. Ricoh USA, Inc., No. 2:19-cv-00514, 2020 WL 6158233,
`*3-4 (E.D. Pa. Oct. 21, 2020) (holding “a first guide plate pivotable at least substantially about
`said axis” indefinite because there was “no way to determine how much variability the claim
`language allows”); accord In re Mobile Telecomms. Techs., LLC, 265 F. Supp. 3d 454, 474 (D.
`Del. 2017) (holding “substantially the same information” indefinite).
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`-2-
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`are no dimensions specified.” Id. at 360:18-361:19 (emphasis added). For these reasons, the ’265
`
`patent is invalid as indefinite.
`
`B.
`
`The Alto Thermal Resistor Does Not Have “Dimensions Substantially the
`Same as a Cross-Section of a Cigarette or Cigar.”
`
`Alternatively, Reynolds is entitled to judgment of no infringement or a new trial based on
`
`the ’265 claim limitation “dimensions substantially the same as a cross-section of a cigarette or
`
`cigar.” The only reasonable conclusion, based on the plain and ordinary meaning of the claim
`
`language and specification as understood by a POSA, is that the term “dimensions” requires
`
`measuring the resistor in two dimensions (area), not one (diameter). The claim itself uses the
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`plural “dimensions,” meaning more than one dimension. The specification teaches that the
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`claimed invention achieves its goals of “a very high vaporizing efficiency” and “the highest
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`possible degree of vaporization uniformity” because it “provides the largest possible contact area
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`between the thermal resistor foil and the vaporizer membrane or vaporizer membranes.” Ex. 2,
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`PX-002 at 5:59-64. Mr. Walbrink agreed that the invention would “want to have a large contact
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`area for the heater.” Ex. 1 at 358:17-19. He also agreed that “the cross-section of a cigar or
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`cigarette” “would have a circular shape, yes.” Id. at 356:7-9. A cross-section with a “circular
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`shape” would of course require a measurement of area.
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`PMP’s evidence was insufficient to prove that the Alto thermal resistor’s dimensions (area)
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`were substantially the same as those of a cigarette or cigar. As noted, Mr. Walbrink never offered
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`a measurement for the thermal resistor, which is indisputably smaller than the entire heating device
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`of which it is part. Indeed, PMP’s only evidence of any dimensions was Mr. Walbrink’s
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`demonstration, when he placed the entire heater assembly (not only the thermal resistor) on a piece
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`of paper with measurements ranging from 6 to 14 mm in diameter, inviting the jury to conclude
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`that the entire device, rather than the resistor, must have dimensions substantially the same as a
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`cigarette or cigar. See id. at 322:24-323:22 (Walbrink); accord id. 508:1-7 (counsel observing that
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`Mr. Walbrink “placed the heater assembly on the piece of paper that had the ranges of typical
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`cross-sections of cigarettes from 6 to 14 millimeters, and he put it around the 10 millimeter circle
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`and sent that around” to the jury). But at no time did Mr. Walbrink suggest that it was the
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`measurement of the entire heater assembly, rather than the thermal resistor, that should be
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`compared to the dimensions of a cigarette or cigar. Just the opposite—Mr. Walbrink agreed it is
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`the thermal resistor dimensions that must be compared. See id. at 355:20-25.
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`Nevertheless, in closing argument PMP interpreted the claim term by way of attorney
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`argument—arguing that the thermal resistor need only “fit[ ] within the cross-sectional dimensions
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`of other cigarettes” in order to satisfy the claim. Id. at 979:7-14. That is not what the claim
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`language requires and is not supported by Mr. Walbrink’s testimony. Yet PMP accused Reynolds
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`of “rewriting the claims” by measuring and calculating two dimensions of the cross-section (area),
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`rather than one. Id. at 978:11-25. And PMP misleadingly transposed Dr. Suhling’s calculation
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`of two dimensions of a cross-section (48 mm2) into only one: “That’s 2 inches. There’s nothing
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`that’s 2 inches on a cigarette other than maybe its length. There’s nothing in this direction that’s
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`two inches.” Id. at 978:14-16. PMP’s misleading arguments are not a substitute for evidence.
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`In short, PMP had no evidentiary support for its counsel’s argument that the Alto thermal
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`resistor met the cross-section limitation; those arguments are incompatible with the claim language
`
`and specification; and PMP’s comments were misleading and prejudicial by arguing that Reynolds,
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`rather than PMP, had “rewrit[ten] the claims.”
`
`C.
`
`The Alto Heater Is Not “Configured to Be Connected to the Mouthpiece.”
`
`Claim 1 of the ’265 patent also requires that the “heating device” be “configured to be
`
`connected to the mouthpiece.” The jury could have found that limitation to be satisfied in one of
`
`two ways: (1) by finding the mouthpiece was directly connected to the heater, or (2) by finding the
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`mouthpiece was indirectly connected to the heater and that indirect connection satisfies the
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`limitation. The former theory is not supported by the weight of the evidence. As to the latter
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`theory, there was no evidence at all presented at trial—PMP introduced that possibility only via
`
`attorney argument. Any verdict relying on the indirect connection theory would therefore be
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`improper. Because neither basis is supported by the evidence—and, in any event, there is no way
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`to determine whether the jury relied on the improper indirect connection argument—Reynolds is
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`entitled to judgment in its favor, or, in the alternative, a new trial.
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`First, the evidence at trial was clear that the black tip of the Alto—which is not
`
`directly/physically connected to the heater—is the mouthpiece. Both PMP experts, Mr. Walbrink
`
`and Dr. Abraham, testified that the black tip goes in a user’s mouth and is the mouthpiece. See,
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`e.g., Ex. 1 at 348:9-11, 349:15-17 (Mr. Walbrink: “Q. That’s the mouthpiece; it’s the part that you
`
`put in your mouth, right? A. It is the part you put in your mouth. . . . Q. So Reynolds says, and
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`you understand that, the mouthpiece is item 1, right? A. Yes”); id. at 247:20-25 (“Q. And the
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`mouthpiece is this black cap that’s on the top of the cartridge, correct? [Dr. Abraham]. It – yes,
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`that’s correct.”); see also id. at 779:4-15 (Dr. Suhling testifying similarly). Reynolds also
`
`introduced its PMTA application in which the black tip is identified as the mouthpiece. See, e.g.,
`
`id. at 782:15-24; see also Ex. 3, PX028, Table H-6. Mr. Hunt, a Reynolds employee and fact
`
`witness, testified that the black tip is the mouthpiece and that it is separate from the e-liquid tank
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`and can be snapped on and off. See Ex. 1 at 717:1-11, 719:6-720:12. Given that evidence and a
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`common sense review of the Alto product, no reasonable juror could adopt Mr. Walbrink’s
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`position that the capsule that holds e-liquid is also the mouthpiece. Mr. Walbrink, in turn, agreed
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`that he offered no infringement opinion that the black mouthpiece is configured to be connected
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`to the heater. See id. at 354:8-11 (“Q. You’ve never offered an opinion, if the mouthpiece is just
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`element 1, right? You haven’t offered that opinion, correct? A. No.”). Thus, with no expert
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`testimony so saying, no reasonable jury could have concluded that the black mouthpiece in the
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`VUSE Alto is designed to be directly or physically connected to the heater device.
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`Second, the undisputed evidence at trial is that indirect connection does not satisfy the
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`“configured to be connected” limitation. Dr. Suhling provided the only testimony as to how a
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`POSA would define “configured to be connected,” testifying that the term means that one
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`component is designed to “directly” connect to another, and explaining that the Alto mouthpiece
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`is configured to connect only to the e-liquid capsule because they are designed and shaped to fit
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`directly together. See id. at 785:18-786:18, 813:15-23. That is supported by the plain and ordinary
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`meaning of “configured to,” which courts have recognized as “to set up for operation especially in
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`a particular way,” “designed to,” and “manufactured to.”2 In the context of the ’265 patent, that
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`means the heating element must itself be designed/manufactured to connect to the mouthpiece—
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`i.e. shaped to allowed physical connection with the mouthpiece—and cannot merely connect
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`indirectly through other intervening components.
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`This was the interpretation of “configured to be connected” adopted by both parties at trial
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`(and throughout this case). PMP’s expert, Mr. Walbrink, opined in his report that the heater is
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`configured to be physically connected to the mouthpiece because the heater assembly is positioned
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`by a cover and seal to connect to the “mouthpiece,” as interpreted by Mr. Walbrink. Ex. 4, 4/26/21
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`2 See, e.g., Intell. Ventures I LLC v. Altera Corp., No. 10-cv-1065, 2013 WL 3913646, at *7 (D.
`Del. July 26, 2013) (Stark, J.) (“to set up for operation especially in a particular way”); Myco
`Indus., Inc. v. BlephEx, LLC, No. 2:19-cv-10645, 2020 WL 2897443, at *6 (E.D. Mich. June 3,
`2020) (“designed to”); Rasmussen Instruments, LLC v. DePuy Synthes Prod., Inc., No. 20-cv-
`11807, 2021 WL 4975286, at *9 (D. Mass. Oct. 26, 2021) (“manufactured”). Cf. Ball Aerosol &
`Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed. Cir. 2009) (“[I]nfringement
`occurs only if the accused product is configured with the cover being used as a base underneath a
`candle holder with feet. That the Travel Candle was reasonably capable of being put into the
`claimed configuration is insufficient.”).
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`Walbrink Rep. ¶ 51. At trial, Mr. Walbrink did not provide a definition for “configured to,” but
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`testified consistently with his report that what he considered to be the mouthpiece and the heater
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`were “definitely connected” and “come together.” Ex. 1 at 299:8-12.
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`Though Mr. Walbrink has a different view of what constitutes the mouthpiece in the Alto
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`device, his view of the “configured to be connected” limitation is consistent with its plain meaning
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`of being designed/manufactured in a shape so that the parts can physically connect. And, of course,
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`Mr. Walbrink’s strained view that the Alto mouthpiece includes the e-liquid capsule confirms that
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`his testimony was premised on an interpretation meaning directly connected—that infringement
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`opinion would have been unnecessary if the term meant indirectly connected with numerous parts
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`in between. Thus, the only evidence presented to the jury was that “configured to be connected”
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`means designed/manufactured to be directly, physically connected. There was no evidence that
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`the Alto mouthpiece indirectly connecting to the heater would satisfy the ’265 limitation, and no
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`reasonable jury could have so concluded based on the evidence.
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`Nevertheless, PMP’s counsel argued in closing remarks that “configured to be connected”
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`does not mean “directly connected.” Id. at 975:13-17, 976:20-25, 1009:20-24, 1011:18-21. With
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`no evidence in support of the newly minted indirect connection theory, that theory cannot support
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`the jury’s verdict and judgment should be entered in Reynolds’s favor. See Intell. Ventures I LLC
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`v. Motorola Mobility LLC, 870 F.3d 1320, 1331 (Fed. Cir. 2017) (“[T]hese theories … amount to
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`mere speculation or attorney argument and do not provide substantial evidence supporting the
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`jury’s verdict of direct infringement. Thus, judgment as a matter of law should have been
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`granted.”). In the alternative, Reynolds is entitled to a new trial because it is impossible to discern
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`whether the jury relied on PMP’s improper attorney argument in lieu of actual evidence, especially
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`Case 1:20-cv-00393-LMB-TCB Document 1380 Filed 06/29/22 Page 13 of 22 PageID# 34135
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`given that the manifest weight of the actual evidence does not support the requisite direct
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`connection. See Flowers v. Tandy Corp., 773 F.2d 585, 591 (4th Cir. 1985).
`
`D.
`
`The Alto Thermal Resistor Is Not a Metallic Foil or Thin Sheet.
`
`The final disputed limitation of the ’265 patent is that the heating device must have “a
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`thermal resistor comprising a metallic foil or a thin sheet.” Based on his experience, Dr. Suhling
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`testified that “metallic foil or a thin sheet” means thin metal that can be rolled, cut, patterned, and
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`bent, and is of uniform thickness. Ex. 1 at 788:19-789:21. Dr. Suhling further testified that this
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`definition was supported by the patent specification. Id. at 789:22-790:23. He testified that the
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`Alto thermal resistor does not meet the ’265 requirement because it is screen printed from a
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`metallic “toothpaste” material that results in curved humps, and is not made from a metallic foil
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`or thin sheet. Id. at 791:16-792:21, 794:15-795:16. PMP presented no evidence as to what the
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`terms “foil” or “thin sheet” mean to counter Dr. Suhling’s testimony. PMP’s expert, Mr. Walbrink,
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`testified only that the Alto thermal resistor was made of metals such that the “thermal resistor is,
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`in fact, a metallic foil” and that the Alto thermal resistor was thin, so the requirement was satisfied.
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`See id. at 318:16-320:2. That sort of conclusory, ipse dixit testimony—even from an expert—is
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`inadequate to avoid judgment as a matter of law. See Arthur A. Collins, Inc. v. N. Telecom Ltd.,
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`216 F.3d 1042, 1046 (Fed. Cir. 2000); see also, e.g., Huss v. Gayden, 571 F.3d 442, 460 (5th Cir.
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`2009); Meister v. Med. Eng’g Corp., 267 F.3d 1123, 1125-26 (D.C. Cir. 2001).
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`II.
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`REYNOLDS IS ENTITLED TO JUDGMENT OR NEW TRIAL ON THE ’911
`PATENT AS TO SOLO G2.
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`A.
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`The Asserted Claims of the ’911 Patent Are Invalid as Obvious.
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`At trial, Reynolds presented clear and convincing evidence that the asserted claims of the
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`’911 patent are invalid as obvious over U.S. Patent No. 8,156, 944 (“Han”) (RX-972), combined
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`with WO 0139619 (“Shizumu”) (RX-1224).3 Indeed, PMP’s expert, Dr. Abraham, did not dispute
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`that the prior art Han patent disclosed the limitations of claims 1, 11, and 13, save for the
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`dimensional limitation of claim 1. See Ex. 1 at 844:15-18. Accordingly, for the reasons explained
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`in Reynolds’s Rule 50(a) motion, a reasonable jury could only conclude that the other claim 1
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`limitations, as well as the limitations of dependent claims 11 and 13, are obvious over the prior
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`art. Dkt. 1352 at 7-10, 12, 13. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir.
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`2007).4
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`As to the dimensional limitation of claim 1—“at least one cavity” with “a largest cross-
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`sectional dimension x … between 0.5 mm and 1 mm”—Mr. Kodama testified that the Shizumu
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`reference “discloses a preferable outer diameter for the device of 7 to 15 millimeters,” in order to
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`make it more portable and “make the device sort of replace cigarettes, meaning to look like … an
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`actual cigarette.” Ex. 1 at 649:9-13. Starting with an outer diameter of 7 mm, then adding outer
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`walls, inner walls, and mouth hole, Mr. Kodama testified that “it would be obvious to end up with
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`a dimensional range for the cavity or the blind hole of 0.5 to 1 mm.” Id. at 648:10-649:1. Further,
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`a POSA would have been motivated to combine Shizumu with Han to “simulate or look like
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`cigarettes, so they had a similar diameter and a similar look,” and would have expected success
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`because the diameter of an e-cigarette was a limited design choice. Id.; see, e.g., KSR Int’l, Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007) (obviousness results from “known options” from “a finite
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`number of identified, predictable solutions”). Dr. Abraham did not dispute that e-cigarettes in the
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`art had outer diameters of 7 mm, and he agreed that “the small space inside the e-cigarette is going
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`3 The two other prior art references discussed at trial—Murphy and Xia—are no longer at issue in
`light of the jury’s verdict of no infringement of the ’911 patent by the Alto product.
`4 Although the burden of persuasion did not shift to Philip Morris to rebut Reynolds’s evidence,
`id., Philip Morris did not attempt to impeach Reynolds’s expert, Mr. Kodama, regarding the Han
`patent and these other limitations. See Ex. 1 at 691:2-701:18.
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`to limit the sizes of the internal components that you can fit in there.” Ex. 1 at 852:12-19. Instead,
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`Dr. Abraham testified that a POSA would not “have recognized the importance of the .5 to 1
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`millimeter size” and that “many things determine the size of the structures” within e-cigarettes.
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`Id. at 853:22-854:8. But this testimony does not create a dispute that a POSA in 2010 would have
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`limited design choices regarding the dimensions of a cavity, and the “relatively small logical gap
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`between the prior art and the claim in this case” would be “closed by a person of ordinary skill in
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`the art pursuing known options within his or her technical grasp.” Scanner Techs. Corp. v. ICOS
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`Vision Sys. Corp. N.V., 528 F.3d 1365, 1382 (Fed. Cir. 2008) (internal quotation and alteration
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`omitted). Accordingly, Reynolds renews its Rule 50(a) motion for judgment of invalidity of the
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`’911 patent. See Dkts. 1350, 1352. At a minimum, the jury’s verdict is against the weight of the
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`evidence and the Court should order a new trial on invalidity of the ’911 patent.
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`B.
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`PMP Failed to Prove Solo G2 Infringes the ’911 Patent.
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`Claims 11 and 13 asserted against Solo G2 depend on claim 1 of the ’911 patent, which
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`requires, among other things, a “blind hole” and the 0.5 mm to 1 mm dimensional limitation just
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`discussed. Solo G2 fails to meet either limitation.
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`1.
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`The Solo G2 does not contain a “blind hole.”
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`It is undisputed that the Solo G2 does not contain a “blind hole” as depicted in Figures 3
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`and 4 of the ’911 patent’s specification. Ex. 5, PX-003. Rather, PMP’s expert Dr. Abraham
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`compared Solo G2 to Figure 6 of the patent and testified that the annular groove depicted in that
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`figure qualifies as a “blind hole” under the language of claim 1 and claim 13. Ex. 1 at 208:2-4,
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`210:17-211:15. The language of the claims, as well as the specification and prosecution history,
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`demonstrate the opposite. A POSA reviewing these materials would not have understood the plain
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`and ordinary meaning of “blind hole” to include the annular groove embodiment. See, e.g., Phillips
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`v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (“The person of ordinary skill in the art is
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`deemed to read the claim term not only in the context of the particular claim in which the disputed
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`term appears, but in the context of the entire patent, including the specification.”); id. at 1317 (“the
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`prosecution history can often inform the meaning of the claim language by demonstrating how the
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`inventor understood the invention”). Thus, while the patent discloses an annular groove
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`embodiment, PMP purposefully and deliberately chose not to claim that annular groove
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`embodiment as the invention.
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`First, the ’911 specification expressly distinguishes between a “blind hole” and an “annular
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`groove.” The specification refers to the “annular groove” embodiment as an “alternative” to the
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`“blind hole” embodiment. See Ex. 5 a