Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 1 of 21 PageID# 34441
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`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 OPPOSITION TO 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 1386 Filed 07/13/22 Page 2 of 21 PageID# 34442
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ......................................................................................................... ii
`I.
`INTRODUCTION ............................................................................................................. 1
`II.
`LEGAL STANDARD ........................................................................................................ 1
`III.
`ARGUMENT ..................................................................................................................... 2
`A.
`The Evidence Shows That Alto Does Not Meet The Requirement That “At
`Least One Cavity … For Collecting Liquid Condensate” Is A “Blind
`Hole.” ..................................................................................................................... 2
`1.
`Intrinsic Evidence Was Properly Admitted and Supports the Jury’s
`Verdict........................................................................................................ 3
`Reynolds Presented Sufficient Evidence of Alto Function........................ 6
`2.
`The Evidence Shows That The Alto Does Not Meet The ’911 Dimensional
`Requirement. .......................................................................................................... 8
`The Evidence Shows That The Alto Does Not Meet The Capillary
`Material Requirement .......................................................................................... 12
`CONCLUSION ................................................................................................................ 15
`
`B.
`
`C.
`
`IV.
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`-i-
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 3 of 21 PageID# 34443
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`
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`
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`CASES
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`TABLE OF AUTHORITIES
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`Page
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`Catalina Lighting, Inc. v. Lamps Plus, Inc.,
`295 F.3d 1277 (Fed. Cir. 2002)................................................................................................11
`
`City of Richmond v. Atlantic Co.,
`273 F.2d 902 (4th Cir. 1960) .....................................................................................................2
`
`Cobalt Boats, LLC v. Brunswick Corp.,
`No. 2:15cv21, 2017 WL 6034504 (E.D. Va. Dec. 4, 2017) ......................................................1
`
`DeMarini Sports, Inc. v. Worth, Inc.,
`239 F.3d 1314 (Fed. Cir. 2001)..................................................................................................5
`
`Dotson v. Pfizer, Inc.,
`558 F.3d 284 (4th Cir. 2009) .....................................................................................................1
`
`EEOC v. Massey Yardley Chrysler Plymouth, Inc.,
`117 F.3d 1244 (11th Cir. 1997) .................................................................................................1
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co.,
`No. 2:15-CV-1202-WCB, 2017 WL 1050120 (E.D. Tex. Mar. 17, 2017) ................................7
`
`Fontem Ventures, B.V. v. NJOY, Inc.,
`No. CV 14-1645-GW(MRWx), 2015 WL 12743861 (C.D. Cal. Oct. 22, 2015) ......................7
`
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003)................................................................................................14
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)................................................................................................12
`
`Jeneric/Pentron, Inc. v. Dillon Co., Inc.,
`205 F.3d 1377 (Fed. Cir. 2000)..................................................................................................8
`
`K–2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999)................................................................................................10
`
`Laitram Corp. v. NEC Corp.,
`163 F.3d 1342 (Fed. Cir. 1998)................................................................................................12
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`-ii-
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 4 of 21 PageID# 34444
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Level 3 Commc’ns, LLC v. Limelight Networks, Inc.,
`No. 2:07cv589, 2009 WL 10689350 (E.D. Va. June 23, 2009), aff’d, 374 F.
`App’x 955 (Fed. Cir. 2010)........................................................................................................4
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`Page
`
`
`Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
`244 F.3d 1365 (Fed. Cir. 2001)............................................................................................1, 12
`
`Nobelpharma AB v. Implant Innovations, Inc.,
`141 F.3d 1059 (Fed. Cir. 1998)..................................................................................................1
`
`Summit 6, LLC v. Samsung Elecs. Co.,
`802 F.3d 1283 (Fed. Cir. 2015)..................................................................................................7
`
`Tyco Healthcare Grp. LP v. Mut. Pharm. Co.,
`No. 07-1299 (SRC), 2009 WL 44745 (D.N.J. Jan. 5, 2009) ....................................................11
`
`Wahpeton Canvas Co. v. Frontier, Inc.,
`870 F.2d 1546 (Fed. Cir. 1989)..................................................................................................3
`
`OTHER AUTHORITIES
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`Fed. R. Civ. P. 50 .............................................................................................................................4
`
`Fed. R. Civ. P. 59 .............................................................................................................................1
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`-iii-
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 5 of 21 PageID# 34445
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`I.
`
`INTRODUCTION
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`The jury verdict that VUSE Alto does not infringe the ’911 patent is well-supported by the
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`evidence. As set out below, PMP failed to prove that Alto met at least three requirements of the
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`’911 patent, each of which was required for a finding of infringement, and thus each of these three
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`failures of proof independently supports the jury’s verdict. The Court should therefore deny
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`PMP’s motion for judgment as a matter of law or a new trial.
`
`II.
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`LEGAL STANDARD
`
`“A trial court may not appropriately enter [JMOL] unless it concludes, after consideration
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`of the record as a whole in the light most favorable to the non-movant, that the evidence presented
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`supports only one reasonable verdict, in favor of the moving party.” Dotson v. Pfizer, Inc., 558
`
`F.3d 284, 292 (4th Cir. 2009). If the party moving for judgment as a matter of law bears the burden
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`of proof on the claim, the court may only grant the motion if: “(1) the movant has established its
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`case by evidence that the jury would not be at liberty to disbelieve and (2) the only reasonable
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`conclusion is in the movant’s favor.” Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d
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`1059, 1065 (Fed. Cir. 1998) (quoting Hurd v. Am. Hoist & Derrick, Co., 734 F.2d 495, 499 (10th
`
`Cir. 1984)). “Courts grant JMOL for the party bearing the burden of proof only in extreme cases.”
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`Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1375 (Fed. Cir. 2001); see also,
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`e.g., EEOC v. Massey Yardley Chrysler Plymouth, Inc., 117 F.3d 1244, 1250 (11th Cir. 1997)
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`(“Were we to accept the EEOC’s argument, we would have to take the extreme step of directing a
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`verdict in favor of the party having the burden of proof.”).
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`A party seeking a new trial under Rule 59 must shoulder a similarly heavy burden. A party
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`is not entitled to a new trial unless that party can show that the verdict (1) was against the clear
`
`weight of the evidence, (2) is based on evidence that is false, or (3) will result in a miscarriage of
`
`justice. Cobalt Boats, LLC v. Brunswick Corp., No. 2:15cv21, 2017 WL 6034504, at *2 (E.D. Va.
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 6 of 21 PageID# 34446
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`Dec. 4, 2017) (quoting Atlas Food Sys. and Servs., Inc. v. Crane Nat’l Vendors, Inc., 99 F.3d 587,
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`594 (4th Cir. 1996)). A “decision on a motion for a new trial rests within the sound discretion of
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`the trial court.” City of Richmond v. Atlantic Co., 273 F.2d 902, 916 (4th Cir. 1960).
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`III. ARGUMENT The Evidence Shows That Alto Does Not Meet The Requirement That
`“At Least One Cavity … For Collecting Liquid Condensate” Is A “Blind Hole.”
`
`Claim 1 of the ’911 patent requires a “leakage prevention means” comprising “at least one
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`cavity … for collecting liquid condensate” “wherein the at least one cavity is a blind hole.”
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`PX-003, Dkt. 1380-5 (’911 patent) at 18:18-22. As an initial matter, PMP does not dispute that
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`the open space in the Alto that PMP claims is a blind hole does not have walls on two sides, and
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`is not enclosed. To the contrary, PMP relies on the Alto’s lack of walls in its briefing—as it did
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`at trial—in an attempt to support its argument that the Alto open space meets the ’911 patent’s
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`dimensional requirement. See Dkt. 1376 at 10-11; see also Ex. 1 at 227:14-228:5; id. at 835:25-
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`837:6. So if a space must be enclosed around the sides to qualify as a cavity or blind hole, then
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`there is no dispute that the Alto open space does not qualify and Reynolds does not infringe the
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`’911 patent.
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`Though PMP had the burden of proof on infringement, Reynolds put on affirmative
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`evidence that a person of ordinary skill in the art (POSA) would understand that a cavity that is a
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`blind hole would not have open sides. Mr. Kodama testified based on his education, experience
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`designing e-cigarettes, and undisputed qualification as an expert in the fields of mechanical
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`engineering, product design, and industrial design. See Ex. 1 at 591:14-594:22. He specifically
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`testified regarding his experience working with blind holes in relation to e-cigarette design. Id. at
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`604:3-7; see also id. at 606:1-6. Mr. Kodama then explained to the jury that the space in the Alto
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`mouthpiece is not a cavity or a blind hole because it has open sides. Id. at 613:17-23; see also id.
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`at 626:4-10. The jury was entitled to rely on that testimony.
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`Besides, contrary to PMP’s assertion, Mr. Kodama’s testimony is far from the “sole”
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`evidence of non-infringement of the ’911 patent presented at trial. The plain language of the ’911
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`patent and the Alto product itself, as well as the testimony of Mr. Hunt and Dr. Abraham, provided
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`support for non-infringement. For example, the requisite characteristics of the ’911 blind hole
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`must be understood in the context of the patent as a whole. As the plain language of claim 1 makes
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`clear, the blind hole cavity is “for collecting liquid condensate.” Indeed, at trial PMP identified
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`the ’911 patent as the “leakage preventer” patent. The jury hardly needed an expert to tell it that
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`an open space will not hold liquid, but, in any event, Mr. Kodama explained that, in the context of
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`the ’911 patent, it would not make sense for the claimed cavity to be open on the sides because an
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`open-sided cavity would not trap and store condensate. See id. at 614:2-615:12. And PMP’s own
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`expert agreed. As PMP acknowledges in its motion, Dr. Abraham explained that “it’s the walls
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`that help hold the liquid condensate.” Dkt. 1376 at 11 (quoting Dkt. 1376-6 at 836:3-837:6). The
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`evidence at trial was that the open-sided space in Alto is designed to hold a silicone seal—not
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`collect condensate—and the open-sided space with a stabilizing rib makes sense given that
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`purpose. Ex. 1 at 614:2-615:12 (Mr. Kodama); see also id. at 721:8-722:6 (Mr. Hunt). This
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`evidence provides an additional basis for the jury to have found that the space in Alto was not the
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`“cavity … for collecting liquid condensate” that is claimed in the ’911 patent.
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`1.
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`Intrinsic Evidence Was Properly Admitted and Supports the Jury’s
`Verdict.
`
`PMP’s so-called “law of the case” argument fails under the very caselaw it cites. As PMP
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`acknowledges, “[c]laim terms are generally given their ordinary and customary meaning as
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`understood by a person of ordinary skill in the art when read in the context of the … prosecution
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`history.” Dkt. 1376 at 3-4 (emphasis added) (quoting Unwired Planet, LLC v. Apple Inc., 829 F.3d
`
`1353, 1358 (Fed. Cir. 2016)); see also Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546,
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 8 of 21 PageID# 34448
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`1552 (Fed. Cir. 1989) (recognizing the relevance of prosecution history to the jury’s determination
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`whether “disputed limitations of claims ... and their equivalents” were found in the accused
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`devices); Level 3 Commc’ns, LLC v. Limelight Networks, Inc., No. 2:07cv589, 2009 WL
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`10689350, at *6 (E.D. Va. June 23, 2009) (permitting expert to “rel[y] on portions of the [ ] patent’s
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`file history in reaching and explaining his non-infringement opinion to the jury”), aff’d, 374 F.
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`App’x 955 (Fed. Cir. 2010). Mr. Kodama’s testimony regarding the need for a space to have walls
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`in order to be considered a cavity or a blind hole falls precisely within this proper use of
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`prosecution history. Mr. Kodama identified the ’911 prosecution history regarding the Rose patent
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`as relevant context for the meaning of “blind hole.” See Ex. 1 at 604:16-606:6.
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`At no time during trial did Reynolds or Mr. Kodama use the word “disclaim” or otherwise
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`suggest to the jury that PMP was legally precluded from arguing that an open space could be a
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`blind hole. See id. And for good reason. That is an issue of law for the Court to decide, and
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`Reynolds preserved its position at claim construction, summary judgment, post-trial motions
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`practice, and Rule 50 argument. See Dkt. 223 at 26-31; Dkt. 686 at 20-22, 25; Dkt. 950 at 24-25;
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`Ex. 1 at 509:21-510:15. But, separate and apart from the legal question of disclaimer, Judge
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`O’Grady ruled that the prosecution history was relevant evidence on the jury question of
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`infringement. See Dkt. 1184 at 23 (Judge O’Grady ruling that “[t]he prosecution history here may
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`be relevant to theories of infringement”). Indeed, though PMP cites Judge O’Grady’s order ruling
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`on the parties’ motions in limine, Judge O’Grady denied PMP’s motion to preclude Reynolds from
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`introducing evidence of the Rose patent and related prosecution history. See id. at 20-24. And, in
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`fact, PMP did not object to Mr. Kodama’s testimony regarding the ’911 prosecution history. See
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`Ex. 1 at 604:16-606:6.
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`At trial, PMP agreed that the prosecution history “absolutely can be discussed,” id. at
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`660:18, but PMP sought to introduce Judge O’Grady’s order on disclaimer to blunt the impact of
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`that properly admitted evidence. See id. at 659:2-661:3. This Court denied that improper request
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`and instead ruled that Reynolds’s introduction of the prosecution history evidence was not
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`inconsistent with Judge O’Grady’s ruling on disclaimer. See id. at 662:24-663:5. Thus, though
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`PMP has repeatedly tried to run from the fact that its statements in prosecuting the ’911 patent are
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`facially inconsistent with the positions it has taken in this case, those statements were properly
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`admitted at trial—without objection from PMP. PMP was entitled to present its contrary view of
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`the prosecution history statements, and in fact did so with its own expert, prior to Mr. Kodama
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`testifying. Id. at 278:16-281:4.
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`PMP’s argument that Mr. Kodama’s testimony regarding the ’911 specification
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`embodiments was somehow improper hardly bears mention. PMP does not, and cannot, dispute
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`that patent embodiments are relevant to determining the plain and ordinary meaning of patent
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`claims. See, e.g., DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1327 (Fed. Cir. 2001) (“We
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`note that claim terms are not construed in a vacuum. Rather, to interpret claim terms we look to
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`all of the intrinsic evidence as it pertains to the terms in question.”). That the ’911 embodiments
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`do not match the Alto is an unhelpful fact for PMP, but that does not transform the embodiments
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`from admissible evidence to inadmissible evidence. Indeed, PMP did not object to Mr. Kodama’s
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`testimony at trial regarding the ’911 embodiments. As relevant to PMP’s argument, not only did
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`Mr. Kodama not suggest that the ’911 patent was necessarily limited to the embodiments included
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`in the patent, he specifically testified that the embodiments are “just one alternative that’s related
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`to the patent,” and that the patent should not be limited to what is shown in the figures. Ex. 1 at
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`612:9-12. Again, Mr. Kodama’s testimony was proper, and the jury was entitled to rely on it.
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`2.
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`Reynolds Presented Sufficient Evidence of Alto Function.
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`As evidence of Alto’s function, Reynolds presented, inter alia, expert testimony from Mr.
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`Kodama, fact witness testimony from Mr. Hunt, documentary evidence in the form of the ’911
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`patent, and the Alto product itself. Mr. Kodama testified regarding the steps he took to reach his
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`non-infringement opinion, explaining that he analyzed the ’911 patent, tore down the Alto product,
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`analyzed the Alto PMTA, and reviewed the CAD file for Alto. Id. at 595:14-596:8. Based on that
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`analysis and his expertise, Mr. Kodama concluded that the open-sided space in the Alto that PMP
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`asserts is a cavity to collect liquid condensate is actually designed to hold a silicone gasket. Id. at
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`614:9-615:12. Mr. Hunt, director of vapor product deployment at Reynolds, confirmed that the
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`identified Alto space is designed to hold the silicone gasket, and that the gasket would be
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`compressed between the mouthpiece and the cartomizer tank so that condensate could not form
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`there. See id. at 721:8-722:6, 740:20-741:1. Both Mr. Kodama and Mr. Hunt testified that silicone
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`is not a material used to collect liquid. Id. at 615:25-616:16 (Mr. Kodama); id. at 722:24-723:7
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`(Mr. Hunt). Mr. Hunt also testified that he was not aware of anyone at Reynolds ever testing
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`whether there was a capillary force in that space in the Alto (id. at 742:6-20), which presumably
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`would have been done if the space were designed to collect liquid condensate. And the jury had
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`the physical product in evidence and saw numerous images of Alto presented by both parties, all
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`of which showed the undisputed structure of the Alto with two raised ribs/lips holding a silicone
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`gasket. Any one of these pieces of evidence would support a jury finding that the identified space
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`in Alto was not “for collecting liquid condensate,” and that Reynolds therefore did not infringe the
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`’911 patent, either literally or under the doctrine of equivalents. In combination, this evidence is
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`more than sufficient to support the jury’s verdict.
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`Though PMP now suggests the jury could not properly rely on Mr. Kodama’s testimony,
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`PMP has never challenged Mr. Kodama’s expert qualifications. Nor did PMP move to exclude
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 11 of 21 PageID# 34451
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`Mr. Kodama’s opinions based on his methodology or the fact that he did not perform “functional
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`testing” of Alto. Any attempt to resurrect that abandoned Daubert argument is untimely.
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`Regardless, there is no requirement that an expert perform any specific testing of a product. See,
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`e.g., Fontem Ventures, B.V. v. NJOY, Inc., No. CV 14-1645-GW(MRWx), 2015 WL 12743861, at
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`*12 (C.D. Cal. Oct. 22, 2015) (“Sheehan’s visual inspection of the accused products is a perfectly
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`acceptable way for Sheehan to assess whether or not the accused products infringe the asserted
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`claims. … Defendants’ argument that Sheehan should have performed some other testing that
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`they contend is more reliable, is more appropriate for cross-examination than a motion to
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`exclude.”); see also Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-
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`WCB, 2017 WL 1050120, at *8 (E.D. Tex. Mar. 17, 2017) (Bryson, J., sitting by designation)
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`(“Dr. Bell was not required to perform any actual tests before his testimony could be admitted.”).
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`To the extent PMP relies on its disputes with Mr. Kodama’s analysis of Alto because he
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`did not perform “functional testing,” PMP had the opportunity to cross-examine him on that point,
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`and did so. See Ex. 1 at 669:11-670:1, 671:9-13. Mr. Kodama, in turn, explained that he did not
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`need to perform testing to reach his infringement opinion, due to his prior extensive experience
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`with e-cigarettes. Id. at 702:4-10. It was for the jury to weigh this evidence. See Summit 6, LLC
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`v. Samsung Elecs. Co., 802 F.3d 1283, 1299 (Fed. Cir. 2015) (“Where the methodology is sound
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`and the evidence relied upon is sufficiently related to the case, disputes over the expert’s credibility
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`or over the accuracy of the underlying facts are for the jury.”). That PMP disagrees with the jury’s
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`verdict does not provide grounds for judgment as a matter of law or a new trial. The jury’s verdict
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`of non-infringement is well supported by the evidence.
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 12 of 21 PageID# 34452
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`B.
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`The Evidence Shows That Alto Does Not Meet The ’911 Dimensional
`Requirement.
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`Likewise, substantial evidence supports the jury’s verdict that, even if Alto has a cavity
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`that is a blind hole (it does not), it fails to meet the dimensional limitation of claim 1 that the “at
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`least one cavity” has “a largest cross-sectional dimension x … between 0.5 mm and 1 mm.”
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`PX-003, Dkt. 1380-5 (’911 patent) at 18:22-30. The ’911 patent thus requires measuring the
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`largest cross-sectional dimension of a blind hole, and strict numerical boundaries in a patent
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`limitation must be applied faithfully. Jeneric/Pentron, Inc. v. Dillon Co., Inc., 205 F.3d 1377,
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`1381 (Fed. Cir. 2000).
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`The alleged blind hole in the Alto identified by Dr. Abraham has a generally rectangular
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`shape larger in one direction than the other. Dkt. 1376 at 10. As Mr. Kodama testified, based on
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`both the ’911 patent and the prosecution history, a POSA would measure “the largest dimension
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`that represents the cavity.” Ex. 1 at 619:11-25; see also id. at 620:16-621:25 (explaining that PMP
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`narrowed the claim during prosecution by “removing the word ‘preferably’” and adding “the word
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`‘largest,’ which again specifies not just any dimension inside the cross-section; it needs to be the
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`largest dimension that defines that blind hole or blind cavity”). Mr. Kodama performed both a
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`physical inspection of the Alto mouthpiece and an analysis of the Alto CAD file to determine the
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`cross-sectional dimensions of the alleged blind hole cavity. Id. at 622:24-623:2. Mr. Kodama
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`disagreed that Dr. Abraham’s dimensional measurement—noted as A in the demonstrative
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`below—is the correct measurement when “there are other cross-sectional dimensions, which are
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`definitely larger and certainly would qualify it more closely to the claim requirement of ‘largest.’”
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`Id. at 623:23-25.
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`Case 1:20-cv-00393-LMB-TCB Document 1386 Filed 07/13/22 Page 13 of 21 PageID# 34453
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`+-----------------------------.... I
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`B
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`t
`I I A
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`I
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`
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`Ex. 2 (Kodama Demonstrative); Ex. 1 at 623:3-8. As Mr. Kodama testified, dimension B “would
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`also be a dimension of the supposed cavity or blind hole that’s in the Alto,” and it “is clearly in
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`the same plane as A, right, it’s taken in the same cross-section, so it is a dimension, a cross-
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`sectional dimension just like A is.” Ex. 1 at 624:1-3, 624:16-21.1 And dimension B is “clearly …
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`larger than A” and therefore the appropriate dimension to measure under “the claim language for
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`the patent.” Id. at 624:3-5. Yet, Mr. Kodama’s undisputed measurement of dimension B—2.82
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`millimeters—is almost three times larger than the patent’s claimed range. Id. at 625:3-12. At trial,
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`PMP did not cross-examine Mr. Kodama about his opinions on the Alto cross-sectional dimension,
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`or otherwise attempt to impeach this testimony.2
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`Now, PMP’s sole argument is that Mr. Kodama’s measurement of the cross-sectional
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`dimension is improper because the ’911 patent requires that the measurement be taken from wall
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`to wall. This is so, PMP claims, because the “cavity” whose dimensions are to be measured must
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`be “in a wall of the aerosol-forming chamber” and also “a blind hole recessed in a wall of the
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`aerosol-forming chamber,” and for support, PMP cites the embodiments in the specification
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`1 There is no dispute that both dimensions A and B are “perpendicular to the longitudinal direction
`of the cavity” that “extend[s] between the open end and the closed end,” PX-003, Dkt. 1380-5
`(’911 patent) at 18:22-29—assuming that the shaded area in the Alto can be a blind hole cavity.
`See Ex. 1 at 264:17-266:5 (Dr. Abraham so testifying).
`2 It is misleading to state that Mr. Kodama “measured the ‘width of the rib.’” Dkt. 1376 at 2, 10.
`Mr. Kodama measured dimension B, which is a measurement of what PMP alleges to be the blind
`hole cavity in the Alto, but in its largest cross-sectional dimension.
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`depicting fully enclosed blind holes. There are two threshold problems with this argument. First,
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`it is impossible to square with PMP’s prior claim-construction positions. PMP opposed
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`Reynolds’s request during the Markman proceedings for the Court to construe these very terms—
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`the term “wall” in the limitation “at least one cavity in a wall of the aerosol-forming chamber,”
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`and the terms “recessed” and “wall” in the limitation “recessed in the wall of the aerosol-forming
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`chamber”—arguing that they should be given their plain and ordinary meaning. See Dkt. 310 at
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`24-27. Second, PMP’s argument is logically inconsistent with its position that the shaded area in
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`the Alto is a cavity. If such an area need not be bounded by walls on all sides to be a “cavity,”
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`then the “largest cross-sectional dimension x taken along a cross-section of the cavity” need not
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`be measured from one wall to another. PMP cannot tout “the importance of the wall” and claim
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`that “[t]he walls matter” (Ex. 1 at 836:15-17) for the dimensional limitation, while at the same
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`time denying the need for walls to enclose a cavity for the remaining limitations of the claim.
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`The reality is that the ’911 patent contains no requirement that the cross-sectional
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`dimension be measured from wall to wall. No such requirement appears in the claim limitation
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`itself, which merely recites “a largest cross-sectional dimension x taken along a cross-section of
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`the cavity in a direction perpendicular to the longitudinal direction of the cavity, where x is 0.5
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`mm, or 1 mm, or between 0.5 mm and 1 mm.” PX-003, Dkt. 1380-5 (’911 patent) at 18:26-30.
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`PMP’s reliance on other limitations of claim 1 referring to the location of the cavity “in a wall” or
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`“a blind hole recessed in the wall of the aerosol-forming chamber” is misplaced. The location of
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`the cavity in a wall does not limit how one is to measure the dimensions of the cavity—especially
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`here, where PMP’s view is that the cavity need not be enclosed by a continuous wall. See, e.g.,
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`K–2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims;
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`instead, we give effect to the terms chosen by the patentee.”). There is simply no requirement in
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`the dimensional limitation of claim 1 that the measurement be made from one wall to another. At
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`trial, Dr. Abraham agreed:
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`Q. Now, you said earlier on your direct examination something
`about wall-to-wall measurement, right? Do you remember that?
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`A. Yes.
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`Q. The ’911 claims don’t say anything about measuring wall-to-
`wall, right?
`
`A. Well, they show it in the figures. They don’t say it in words.
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`Q. I was asking about the claims, so let me ask it again. The ’911
`claims don’t say anything about wall-to-wall measurement, right?
`
`A. You are correct, and I apologize for misunderstanding your
`question.
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`Ex. 1 at 258:14-259:1.
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`Figure 4 of the specification does show a measurement “x” of the cross-sectional dimension
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`from one enclosed side of the blind hole cavity to another.3 That measurement is possible because
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`the cavity in Figure 4 is an actual cavity—it is fully enclosed around the sides, unlike the alleged
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`blind hole cavity of the Alto. Consequently, Figure 4 does not prove what PMP asserts, which is
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`that the only permissible measurement is from wall to wall. But even if the patent specification
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`included a depiction of a cavity with a non-continuous wall, it is axiomatic that “infringement is
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`to be determined by comparing the asserted claim to the accused device, not by comparing the
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`accused device to the figures of the asserted patent,” Catalina Lighting, Inc. v. Lamps Plus, Inc.,
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`295 F.3d 1277, 1286 (Fed. Cir. 2002), and the claim does not require a wall-to-wall measurement,
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`see Tyco Healthcare Grp. LP v. Mut. Pharm. Co., No. 07-1299 (SRC), 2009 WL 44745, at *4
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`3 Figure 6 does not depict a cavity or blind hole but rather an annular groove. See Dkt. 1380 at 10-
`12. But even granting PMP’s contention that the figure shows a blind hole, it does not support
`PMP’s argument for the reasons discussed in the text.
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`(D.N.J. Jan. 5, 2009) (rejecting argument that court should “include[e] a limitation to the
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`measurement method described in Example 1” of the specification when “the claims do not speak
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`to how surface area is measured”). Instead, claim 1 requires measurement of the “largest cross-
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`sectional dimension,” which is the dimension measured by Mr. Kodama and which Dr. Abraham
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`never measured. Ex. 1 at 263:11-13. Dr. Abraham agreed, moreover, that an embodiment in the
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`specification is just one example of how an invention might work, and it is the patent claims that
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`are the most important part of the patent. Ex. 1 at 246:8-247:6.
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`For the same reasons, the references in the specification to capillary action do not justify
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`Dr. Abraham’s method of measurement as the sole permissible method under the patent claims.
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`Claim 1 of the ’911 patent explicitly requires that the measurement must be made of the “largest”
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`cross-sectional dimension of the cavity, not some other cross-section in the direction of “capillary
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`action,” a phrase that nowhere appears in the claim. See, e.g., Hill-Rom Servs., Inc. v. Stryker
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`Corp., 755 F.3d 1367, 1372-73 (Fed. Cir. 2014) (“Nothing in the specification or prosecution
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`history makes clear that the invention is limited to use of a cable as a datalink. Absent such
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`language, we do not import limitations from the specification into the claims.”); Laitram Corp. v.
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`NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“[I]t is the claims, not the written description,
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`which define the scope of the patent right.”). Because the ’911 patent contains no such limitation,
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`nor mandates a wall-to-wall measurement of the cross-sectional dimension, the jury was entitled
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`to reject Dr. Abraham’s opinions in favor of the substantial evidence provided by Mr. Kodama’s
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`testimony.
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`C.
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`The Evidence Shows That Alto Does Not Meet The Capillary Material
`Requirement
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`Substantial evidence supports the jury’s verdict that PMP failed to prove by a
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`preponderance of evidence that the Alto meets asserted claim 2’s requirement that “the at least