Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 1 of 75 PageID# 34462
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 1 of 75 PagelD# 34462
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 1 of 75 PagelD# 34462
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 2 of 75 PageID# 34463
`151
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Civil Action
`No. 1:20-cv-00393-LMB/TCB
`June 8, 2022
`1:55 p.m.
`
`)))))))))))))
`
`PHILIP MORRIS PRODCUTS S.A.,
`
`Counterclaim Plaintiff,
`v.
`R.J. REYNOLDS VAPOR COMPANY,
`
`Counterclaim Defendant.
`
`VOLUME 1 - AFTERNOON SESSION
`TRANSCRIPT OF JURY TRIAL PROCEEDINGS
`BEFORE THE HONORABLE LEONIE M. BRINKEMA,
`UNITED STATES DISTRICT COURT JUDGE
`
`APPEARANCES:
`For the Plaintiffs:
`
`Maximilian Antony Grant, Esq.
`Latham & Watkins LLP (DC)
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Max.grant@lw.com
`Clement Joseph Naples, Esq.
`Latham & Watkins, LLP
`885 Third Avenue 25th Floor
`New York, NY 10022
`212-906-1200
`Email: Dement.naples@lw.com
`Gregory K. Sobolski, Esq.
`Latham & Watkins, LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`202-637-2267
`Email: Max.grant@lw.com
`
`Scott L. Wallace, RDR, CRR
`Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 3 of 75 PageID# 34464
`226
`
`Q.
`Let's go to the next demonstrative, Dr. Abraham,
`Number 66. So in summary, what do you find about this fifth
`part of Claim 1, the one that talks about the blind hole for the
`Alto?
`A.
`I find that the Alto has the fifth part of Claim 1.
`Q.
`And that gets us, Dr. Abraham, again to the last, the
`sixth part of Claim 1. What do you find for the Alto on that
`element?
`A.
`Well, I investigated this claim as well, and I found that
`the Alto has this part of the claim as well.
`Q.
`And let's show the jury how you know that, Dr. Abraham.
`MR. SOBOLSKI: Let's please turn to Demonstrative 67.
`A.
`So on your screen you see Figure 4 from the patent, and
`you see an image from the CAD file, PX 265B, and remember the
`patent tells us how to make the measurement. It tells us that
`you measure it from one side to the other of the cavity, and I'm
`showing -- I've added the yellow horizontal lines to show that
`the -- to show how I'm going to make the measurement on the Alto
`product, and you'll also know -- notice that the Alto has the
`same arrangement of cavities, one on top and one below, so it's
`got two cavities just like Figure 4 of the patent, but I took
`that measurement that I'm showing on the screen.
`BY MR. SOBOLSKI:
`Q.
`Let's turn to Slide 68, that demonstrative, sir, and
`explain to the jury how you confirmed that the -- what you've
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 4 of 75 PageID# 34465
`227
`
`identified as the blind hole in the Alto has the sizes that the
`patent requires?
`A.
`Well, I made the measurements, and you can see my
`measurement on the screen at PX 265B. On the right-hand side is
`PX 265A, and my measurement is less than 1 millimeter, which is
`in the range claimed by the cavity, and on the right-hand side
`you can see that I measured perpendicular to the longitudinal
`direction.
`Q.
`Dr. Abraham, when you were testifying about the Solo and
`you were talking about the size of the cavity, you mentioned
`that there was a dispute from Reynolds about that. Do you
`recall that?
`A.
`I do.
`Q.
`What about for the Alto? Does Reynolds dispute the size
`of what you've identified as the Alto cavity, the way to make
`the measurement?
`A.
`They do dispute it.
`Q.
`Explain that to the jury, please.
`MR. SOBOLSKI: Let's bring up Slide 69.
`A.
`Well, remember I was talking about the so-called
`capillaries in the context of trees, essentially little tubes
`that bring the water up to the leaves? That's how you make the
`measurement. You make the measurement from wall -- from one
`side of the cavity to the other side, from one wall to the other
`wall. That's how the patent tells us how to do it; that's how
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 5 of 75 PageID# 34466
`228
`
`these cavities are measured, and that's how I did my
`measurement.
`Now, Reynolds's expert, Mr. Kodama, made a different
`measurement. His measurement does not go from one wall to
`another, and that's why I disagree with his measurement.
`Q.
`And just so it's clear, in Slide 69, the measurement,
`that Reynolds's expert, that gentleman performed, that's what
`you've indicated in red; is that correct?
`A.
`That is right, and it's a -- I just want to say the name
`of the exhibit, it's PX 265B, but, yes, his measurement is in
`red and my measurement is in yellow.
`Q.
`Thank you, Dr. Abraham.
`MR. SOBOLSKI: Let's go to Demonstrative 70. Go back to
`the claims.
`BY MR. SOBOLSKI:
`Q.
`In sum, what did you find on that last element of Claim 1
`for the Alto.
`A.
`The Alto meets the last element of Claim 1.
`Q.
`And let's turn to the -- to dependent Claim 2, sir. Tell
`the jury what you conclude.
`A.
`So I found in my investigation that the Alto has an
`aerosol-generating system, according to Claim 1, wherein at
`least one cavity contains a capillary material.
`Q.
`And tell the jury a little bit about what that capillary
`material element means in the context of the '911 Patent and the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 6 of 75 PageID# 34467
`245
`
`Q.
`In fact, isn't the Hahn Patent one of the Shell family
`patents that you talked about?
`A.
`It is.
`Q.
`The Hahn Patent came before the '911 Patent, correct?
`A.
`That is correct.
`Q.
`And the Hahn Patent discloses a leakage prevention
`structure, doesn't it?
`A.
`If I recall, the Hahn Patent discloses an area for the
`collection of droplets.
`Q.
`To prevent leakage, right?
`A.
`Yeah, that's right.
`Q.
`In fact, Mr. Kodama, Reynolds' expert on the '911 Patent,
`he contends that the Hahn Patent invalidates the '911 Patent,
`right?
`A.
`That is correct.
`Q.
`This now, you said you have a few of your own patents,
`right?
`A.
`Yes.
`Q.
`You're pretty familiar with the parts of a patent?
`A.
`Yes.
`Q.
`A patent has several parts. We saw that in the video
`this morning. Were you here for that?
`A.
`I was.
`Q.
`And there's patent specification that describes the
`invention, right?
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 7 of 75 PageID# 34468
`246
`
`A.
`Yes, that's correct.
`Q.
`And the patent specification discloses something called
`an embodiment; is that right?
`A.
`It does.
`Q.
`In fact, the patent specification may describe multiple
`embodiments, right?
`A.
`Yes.
`Q.
`And an embodiment is just one example of how an invention
`might work, correct?
`A.
`I agree.
`Q.
`The patent also includes claims, right?
`A.
`Yes.
`Q.
`You talked a lot about the claims of the '911 Patent
`today. We saw them in the video, right?
`A.
`Yes.
`Q.
`And the bounds of the patent are limited by the plain
`language, correct?
`A.
`Yes.
`Q.
`And the specification and the embodiments that we talked
`about earlier, that's not what defines the protection of a
`patent, correct?
`A.
`Correct.
`Q.
`You can't sue somebody for infringing the specification
`of your patent, right?
`A.
`That's my understanding.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 8 of 75 PageID# 34469
`247
`
`Q.
`You can only sue someone for infringing a patent claim,
`correct?
`A.
`That's my understanding.
`Q.
`Would you agree that the patent claims are the most
`important part of the patent?
`A.
`Yes, I would.
`Q.
`Now, the claims in a particular patent may not cover all
`of the embodiments that are disclosed in the specification,
`correct?
`A.
`That is correct.
`Q.
`And if an embodiment is not covered by a claim, that
`embodiment is not protected by the patent rights, correct?
`A.
`Correct.
`Q.
`Let's talk about the Vuse Alto product. We heard a lot
`about that today, and I wanted to make sure the jury
`understands. Your opinions about the infringement of the '911
`Patent, you're pointing to the mouthpiece of the Alto, correct?
`A.
`I was referring to the cartridge part that comes out of
`the device.
`Q.
`Right, but when you're pointing to what you contend is a
`blind hole, you're pointing to the mouthpiece, correct?
`A.
`Yes.
`Q.
`And the mouthpiece is this black cap that's on the top of
`the cartridge, correct?
`A.
`It -- yes, that's correct.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 9 of 75 PageID# 34470
`258
`
`Q.
`Now, I'm going to go back to the Vuse Alto and your
`opinions about infringement. The claims require --
`MR. MAIORANA: And sorry for being repetitive, Your Honor,
`but I want to make sure this is clear.
`BY MR. MAIORANA:
`Q.
`The claims require the measurement of the largest
`cross-sectional dimension of the blind hole, right?
`A.
`Yes.
`Q.
`And that language in the claim, "largest cross-sectional
`of dimension," tells a person of skill in the art where and how
`to make the measurement to determine that the particular blind
`hole is within that claim, right?
`A.
`I agree.
`Q.
`Now, you said earlier on your direct examination
`something about wall-to-wall measurement, right? Do you
`remember that?
`A.
`Yes.
`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.
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 10 of 75 PageID#
`34471
`
`259
`
`your question.
`Q.
`No need to apologize. My question was unclear.
`Let's talk about your opinions about the Solo G2.
`MR. MAIORANA: Could I have that identified, Mr. Burns.
`BY MR. MAIORANA:
`Q.
`Now, you showed a lot of cross-sectional pictures of the
`G2 during your direct examination; is that right?
`A.
`I showed cross-sectional views of the G2 during direct.
`Q.
`And you had like pictures of the cross-section next to
`the patent figures, and you had yellow lines to try to make it
`look like the Solo G2 space was the same as the '911 Patent
`figures, right?
`A.
`That's correct.
`Q.
`But the correct legal comparison for determining
`infringement is not between the accused products and the figures
`of the patent, right?
`A.
`I agree.
`Q.
`The proper legal comparison is between the accused
`product and the claim language, right?
`A.
`I agree.
`Q.
`So looking at this Demonstrative Number 5, that is the
`mouthpiece of the Solo G2, right?
`A.
`Well, it is a cross-section of the Solo G2. There's a
`mouthpiece and some other structures.
`Q.
`Thanks for clarifying. Appreciate it.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 11 of 75 PageID#
`34472
`
`262
`
`binder.
`A.
`It is, thank you.
`Q.
`Yep. This is a picture from -- withdraw that.
`This is an image you took of the Vuse Alto mouthpiece,
`right?
`A.
`Yes.
`Q.
`Now, I'm going to show you another image of what you
`contend is the blind hole in the Vuse Alto.
`MR. MAIORANA: If you can pull up Dem 11, please,
`Mr. Burns.
`BY MR. MAIORANA:
`Q.
`Now, we saw this picture during the video deposition of
`Mr. Hunt. Do you remember that?
`A.
`Yes.
`Q.
`That pink space is what you contend is a blind hole in
`the Vuse Alto, right?
`A.
`Correct.
`Q.
`Now, I'm going to go back to RX 539. I apologize for
`jumping around. I want to show the jury what you measured in
`the Alto mouthpiece.
`This is from your report, right?
`A.
`Yes.
`Q.
`And the two green lines, those are the dimensions that
`you measured to try to show what the largest cross-sectional
`dimension is of the alleged blind hole in the Alto mouthpiece,
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 12 of 75 PageID#
`34473
`
`263
`
`right?
`A.
`Yes.
`Q.
`And you only took measurements in one direction, right,
`going up and down in this photo, RX 139?
`A.
`That's correct.
`Q.
`Now, let's go to Dem 12 and show again the pink picture
`that's from the Alto CAD drawings. I've added a line to this
`demonstrative, which is labeled A. That's the dimensions that
`you measured, right?
`A.
`Correct.
`Q.
`And you never took a measurement of the Dimension B that
`we see here on Demonstrative 12, right?
`A.
`That's correct, I did not.
`Q.
`And you agree that Dimension B meets the part of the
`claim that requires a cross-sectional dimension perpendicular to
`the longitudinal direction of the cavity, right?
`A.
`I disagree.
`Q.
`You think B is not cross-section to the -- excuse me.
`You think B is not cross-sectional -- a cross-section of
`dimension perpendicular to the longitudinal cavity?
`A.
`B -- it's my opinion B is not the cross-sectional
`dimension as claimed in the patent.
`Q.
`That's not what I asked you, Dr. Abraham. Please answer
`my questions.
`A.
`I'm sorry, restate the question.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 13 of 75 PageID#
`34474
`
`264
`
`Q.
`Sure. I asked you a different question. I know you
`don't believe B is the largest cross-sectional dimension. I'm
`going to get to that. What I'm asking is a different question.
`You agree that Dimension B meets the part of the claim
`that requires the largest cross-sectional dimension -- I know
`what the problem is in my question. Let me try it again.
`You agree that Dimension B is a cross-sectional dimension
`of what you allege is the blind hole perpendicular to the
`longitudinal direction of the cavity, right?
`A.
`I disagree.
`Q.
`B and A are on the same plane, correct?
`A.
`Yes.
`Q.
`And you contend A is a cross-sectional dimension
`perpendicular to the longitudinal direction of the cavity,
`right?
`A.
`Yes.
`Q.
`And yet you contend B is not perpendicular to the
`longitudinal direction of the cavity, right?
`A.
`B is perpendicular to the longitudinal direction.
`Q.
`Right. And B is also a cross-sectional dimension of what
`you allege is the blind hole, right?
`A.
`I disagree.
`Q.
`Why is that?
`A.
`Because that's not how the cross-section is measured.
`Q.
`That's not what I'm asking you, Dr. Abraham. You're
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 14 of 75 PageID#
`34475
`
`265
`
`answering a different question because you don't want to answer
`my question. I would appreciate it if you can answer my
`question.
`THE COURT: Counsel, hold on.
`He's asking you just, I believe, a generic question about
`what this type of cross -- what this type of measurement is. So
`forget the patent.
`As I understand what you're doing; is that right?
`MR. MAIORANA: Let me try to clarify, Your Honor --
`THE COURT: All right.
`MR. MAIORANA: -- because I think maybe we're talking past
`each other. I apologize.
`BY MR. MAIORANA:
`Q.
`The claim of '911 Patent requires to you look at a
`cross-sectional dimension of the blind hole that's perpendicular
`to the longitudinal direction of the cavity, right?
`THE WITNESS: Yes.
`BY MR. MAIORANA:
`Q.
`You agree -- now I understand, you don't contend B is the
`largest cross-sectional dimension, but you do agree that B is a
`cross-sectional dimension of what you contend is a blind hole,
`and that is taken in a direction perpendicular to the
`longitudinal direction of the device, right?
`A.
`I disagree.
`THE COURT: Would you explain why you disagree?
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 15 of 75 PageID#
`34476
`
`266
`
`THE WITNESS: Because it -- he's using the word
`"cross-section," and B is not a cross-section.
`THE COURT: What would you call B?
`THE WITNESS: A longitudinal direction or a length -- a
`length direction.
`THE COURT: A length direction. That's his view.
`MR. MAIORANA: Okay.
`THE COURT: Move on. All right?
`MR. MAIORANA: Sure.
`THE COURT: Thank you, Doctor.
`BY MR. MAIORANA:
`Q.
`You agree that lines -- withdraw that. You agree that
`Dimension A and Dimension B are on the same plane, right?
`A.
`Yes.
`Q.
`And yet your opinion is that A is a cross-sectional
`dimension, but B is not?
`A.
`Yes.
`Q.
`You never took a measurement of Dimension B, right?
`A.
`I did not.
`Q.
`The dimension that's Label A is shorter than the
`dimension Label B, right?
`A.
`Yes.
`Q.
`And of those two dimension, A and B, B is the largest
`dimension of those two, right?
`A.
`Yes.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 16 of 75 PageID#
`34477
`
`267
`
`Q.
`A.
`
`Now, Mr. Kodama actually did measure Dimension B, right?
`He did.
`MR. MAIORANA: Could we have the next slide, please,
`Mr. Burns.
`BY MR. MAIORANA:
`Q.
`Mr. Kodama measured Dimension B, and he found it was 2.82
`millimeters, right?
`A.
`Yes.
`Q.
`And you don't dispute that Mr. Kodama made that
`measurement, right?
`A.
`No, I don't dispute that.
`Q.
`You don't dispute the accuracy of that measurement, do
`you?
`A.
`No, I don't.
`Q.
`And you agree that 2.82 millimeters is outside of the
`claim range of .5 to 1 millimeters, right?
`A.
`Yes, it is.
`Q.
`Now, if the jury agrees with Mr. Kodama that that is the
`correct measurement, you agree that the Vuse Alto does not
`infringe Claim 1 of the '911 Patent, correct?
`A.
`Well, it would be outside of the -- it would be outside
`of the claimed range.
`Q.
`That's not what I asked you. If the jury agrees with
`Mr. Kodama that the measurement we see on the screen, 2.82
`millimeters, is the proper dimension to measure to determine
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 17 of 75 PageID#
`34478
`
`268
`
`that this Alto --
`THE COURT REPORTER: I'm sorry, counsel. Slow down a
`little bit.
`BY MR. MAIORANA:
`Q.
`If the jury agrees with Mr. Kodama that the measurement
`we see on the screen, 2.82 millimeters, is the proper dimension
`to be measured, then you agree that the Vuse Alto mouthpiece
`would not infringe Claim 1 of the '911 Patent, correct?
`A.
`Correct.
`Q.
`Now I'm going to pull another one of your demonstratives.
`MR. MAIORANA: Mr. Burns, PDX 2, page 67.
`BY MR. MAIORANA:
`Q.
`And here you're -- again, you're comparing the accused
`device to the patent figure, right?
`A.
`I'm showing the accused device and a figure from the
`patent.
`Q.
`And the reason you're doing that is you're trying to
`compare the patent figure to the accused product, correct?
`A.
`No. I'm showing how the measurement should be made.
`Q.
`And you're doing that by comparing -- withdraw that. You
`drew yellow lines around the outside of blind hole 305, and you
`drove those all the way across to the space you contend is a
`blind hole in the accused product, right?
`A.
`Yes, that's correct.
`Q.
`And your testimony is you're not doing a comparison
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 18 of 75 PageID#
`34479
`
`278
`
`the U.S., right?
`A.
`Yes.
`Q.
`And we looked at the PMTA for the Solo product, right?
`A.
`Yes.
`Q.
`And you're aware, aren't you, that the FDA actually
`approved Reynolds's application for the Solo product?
`A.
`That's my understanding.
`MR. MAIORANA: I have no further questions, Your Honor.
`THE COURT: All right. Any redirect?
`MR. SOBOLSKI: Yes, Your Honor, if I may.
`THE COURT: All right.
`MR. SOBOLSKI: May I proceed, Your Honor?
`THE COURT: Yes, sir.
`REDIRECT EXAMINATION OF JOHN ABRAHAM
`BY MR. SOBOLSKI:
`Q.
`Dr. Abraham, counsel asked you some questions about the
`Rose reference. Do you recall that?
`A.
`Yes.
`Q.
`But I don't think he actually showed you the Rose
`reference, right?
`A.
`Correct, he did not.
`MR. SOBOLSKI: Let's pull up that Rose reference that he
`referenced from the file history of the patent. Think it's
`Exhibit RX 374. Let's give it a moment to load. Let's blow that
`up, please, so the jury can see it.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 19 of 75 PageID#
`34480
`
`279
`
`BY MR. SOBOLSKI:
`Q.
`RX 374, Dr. Abraham, is this the Rose reference that you
`were being asked about?
`A.
`It is.
`MR. SOBOLSKI: Now, let's turn to Figure 5 of the Rose
`reference for a moment. It's on the third page there. Let's
`blow that up.
`BY MR. SOBOLSKI:
`Q.
`Do you see that, Dr. Abraham?
`A.
`I do.
`Q.
`Would you explain to the jury what the Rose reference is
`about?
`A.
`Yes. This is, again, a cross-sectional image where the
`device has been cut open, and the top and bottom have what are
`called hashmarks -- hatch marks. That means that they've been
`cut through, and there are a bunch of diagonal items numbered
`62, and those are called fingers in Rose, so those are like
`fingers sticking off of the wall, and this device is very
`different from the invention of the '911, and the applicants
`were attempting to show the difference between fingers emanating
`from a wall from the cavities of the '911.
`Q.
`Tell the jury more about what that difference is.
`A.
`Well, first of all, there's no cavities, and secondly,
`these are -- these aren't blind. These are visible from the
`outside. So that's another difference.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 20 of 75 PageID#
`34481
`
`280
`
`MR. SOBOLSKI: Now, let's, if we can leave that figure up
`there, but bring up Dr. Abraham's slide, Number 56, so we can put
`them side-by-side. Why don't we blow up the image on Slide 56.
`BY MR. SOBOLSKI:
`Q.
`Now, to remind the jury, what's on the right-hand side
`from your Demonstrative 56, Dr. Abraham?
`A.
`The right-hand side shows two images from Reynolds's
`engineering CAD files, PX 698 at page 4 and PX 595 at page 3,
`and I've highlighted the cavities in that -- in that image and
`that's for the Alto.
`Q.
`And from your perspective as an expert in mechanical and
`thermal engineering, how does Rose on the left compare to the
`cavity blind hole that you've identified in the Alto?
`MR. MAIORANA: Your Honor, objection. We're getting into
`the {indiscernible} here asking him to compare the prior art to a
`picture of the --
`THE COURT: Well, this issue -- whether it does or
`doesn't, this topic was adequately raised in direct and cross,
`and I want the jury to be as unconfused as possible, so I'm going
`to permit it. Overruled.
`MR. MAIORANA: Thank you, Your Honor.
`THE WITNESS: They're totally different. In Rose you have
`fingers sticking out from a wall, and in the Alto you have this
`cavity that's confined by walls, and those are different, very
`different.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 21 of 75 PageID#
`34482
`
`281
`
`BY MR. SOBOLSKI:
`Q.
`And what would happen if the structure from Rose were
`applied to the Alto CAD? What would be the result?
`A.
`It would not function. It would not prevent leakage.
`Q.
`Thank you, sir.
`MR. SOBOLSKI: We can take that down.
`BY MR. SOBOLSKI:
`Q.
`Dr. Abraham, you were also asked whether in Figure 6 that
`that structure 505 is a blind cavity or a blind hole. Do you
`recall that?
`A.
`I do.
`Q.
`Now, let's bring up your Demonstrative 16.
`MR. SOBOLSKI: And let's zoom in on that "Interview
`Summary" on the bottom half, please.
`BY MR. SOBOLSKI:
`Q.
`Explain to the jury what we're looking at on the screen.
`A.
`What we're looking at on the screen is PX 8A at page
`16296, and this is the conclusion or the view of the patent
`examiner after an interview with the applicant, so this is what
`the patent examiner wrote, and the patent examiner wrote that
`"The two blind holes of Figure 3 and 4 and/or the blind hole
`being toroid of Figures 5 and 6" -- so the patent examiner
`agreed -- or I agree with the patent examiner that the toroid or
`the doughnut of Figure 5 and 6 is a blind hole.
`Q.
`And just to make it clear for the jury, what's the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 22 of 75 PageID#
`429
`34483
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Civil Action
`No. 1:20-cv-00393-LMB/TCB
`June 9, 2022
`2:05 p.m.
`
`)))))))))))))
`
`PHILIP MORRIS PRODCUTS S.A.,
`
`Counterclaim Plaintiff,
`v.
`R.J. REYNOLDS VAPOR COMPANY,
`
`Counterclaim Defendant.
`
` VOLUME 2 - AFTERNOON SESSION
`TRANSCRIPT OF JURY TRIAL PROCEEDINGS
`BEFORE THE HONORABLE LEONIE M. BRINKEMA,
`UNITED STATES DISTRICT COURT JUDGE
`
`APPEARANCES:
`For the Plaintiffs:
`
`Maximilian Antony Grant, Esq.
`Latham & Watkins LLP (DC)
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Max.grant@lw.com
`Clement Joseph Naples, Esq.
`Latham & Watkins, LLP
`885 Third Avenue 25th Floor
`New York, NY 10022
`212-906-1200
`Email: Dement.naples@lw.com
`Gregory K. Sobolski, Esq.
`Latham & Watkins, LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`202-637-2267
`Email: Max.grant@lw.com
`
`Scott L. Wallace, RDR, CRR
`Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 23 of 75 PageID#
`34484
`
`509
`
`Mr. Walbrink did give a doctrine of equivalents opinion on the
`vaporizer membrane, but that's a separate element or a limitation
`of Claim 1. And for the three limitations that I have just
`discussed, the configured to be connected to the mouthpiece,
`metallic foil or thin sheet, and substantially the same as a
`cross-section of a cigar or cigarette, there was no testimony
`from Mr. Walbrink on the doctrine of equivalents. So only
`literal infringement would satisfy those three limitations.
`And then finally they have asserted Claim 4 of the '265
`Patent. I have no further arguments about that, but it's a
`dependent claim.
`THE COURT: All right.
`MR. BURNETTE: All right. And then for the '911 Patent,
`we are moving on the claim limitation of Claim 1 that it
`contained a cavity. The Alto product does not contain a cavity.
`Those raised lips that you saw yesterday and the presentation
`from Dr. Abraham do not contain a cavity because they are open on
`two sides. Claim 1 also requires a blind hole. The Solo does
`not contain a blind hole because it has that annular groove and
`the annular groove is not a blind hole.
`The Alto, you recall the prosecution history about the
`Rose prior art, and I had the fingers extending into the area,
`and they were open on the sides. Under the prosecution
`disclaimer, there can be no literal infringement when the
`arguments to the examiner disclaimed something that could be a
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 24 of 75 PageID#
`34485
`
`510
`
`blind hole because it was open around the sides.
`I will note this issue was raised at summary judgment and
`later in the Daubert briefing before Judge O'Grady, and he had
`rejected the disclaimer arguments, finding that they weren't
`clear and unmistakable. But we do think this is clear and
`unmistakable disclaimer of patent coverage for asserted blind
`holes when they were open around the sides.
`The applicant, PMP in this case, repeatedly told the
`examiner that this is the opposite of what is claimed, that these
`are non-blind. We had the same in the Alto. It is non-blind, it
`is open around the sides; it is simply the space between the
`outside wall of the mouthpiece and that lip inside that holds the
`gasket around the mouthpiece on the inside. That's the
`contention here about what creates a blind hole in a cavity in
`the Alto product.
`And turning to the dimensional requirements of the '911
`Patent, the largest cross-sectional dimension between
`0.5 millimeters and 1 millimeter. For the Solo, Dr. Abraham
`arrived at a measurement of .77 millimeters by just considering
`the segments of the groove that goes around the mouthpiece. The
`patent requires measuring from the outer diameter of the ring
`itself, the angular groove.
`If you measure between the outer groove of one side to the
`outer groove of another side, then that's 4 millimeters, well
`outside of the -- there was no evidence, I should say, from
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 25 of 75 PageID#
`585
`34486
`
` UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Civil Action
`No. 1:20-cv-00393-LMB/TCB
`June 10, 2022
`9:13 a.m.
`
`)))))))))))))
`
`PHILIP MORRIS PRODCUTS S.A.,
`
`Counterclaim Plaintiff,
`v.
`R.J. REYNOLDS VAPOR COMPANY,
`
`Counterclaim Defendant.
`
` VOLUME 3 - MORNING SESSION
`TRANSCRIPT OF JURY TRIAL PROCEEDINGS
`BEFORE THE HONORABLE LEONIE M. BRINKEMA,
`UNITED STATES DISTRICT COURT JUDGE
`
`APPEARANCES:
`For the Plaintiffs:
`
`Maximilian Antony Grant, Esq.
`Latham & Watkins LLP (DC)
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Max.grant@lw.com
`Clement Joseph Naples, Esq.
`Latham & Watkins, LLP
`885 Third Avenue 25th Floor
`New York, NY 10022
`212-906-1200
`Email: Dement.naples@lw.com
`Gregory K. Sobolski, Esq.
`Latham & Watkins, LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`202-637-2267
`Email: Max.grant@lw.com
`
`Scott L. Wallace, RDR, CRR
`Official Court Reporter
`
`
`
`Case 1:20-cv-00393-LMB-TCB Document 1386-1 Filed 07/13/22 Page 26 of 75 PageID#
`34487
`
`591
`
`THE COURT: All right. Counsel.
`MR. MAIORANA: Thank you, Your Honor.
`DIRECT EXAMINATION OF KELLY KODOMA
`BY MR. MAIORANA:
`Q.
`Good morning, Mr. Kodama.
`A.
`Good morning.
`Q.
`Could you introduce yourself to the jury, please?
`A.
`Yes, my name is Kelly Kodama. I'm the CEO of a company
`called Zoe Design Associates, which I founded in 1991, and we're
`a product design and industrial design company that consults for
`a wide range of different products and product companies.
`Q.
`Have you ever testified in court before, Mr. Kodama?
`A.
`I have not, no. This is my first time.
`Q.
`How long have you been working in product development?
`A.
`I graduated in 1988 and I've been working in product
`development ever since, so about 34 years.
`Q.
`And you can make sure you're close enough to the mic so
`everyone can hear you?
`A.
`Oh, sorry. Sure.
`Q.
`Thanks. Tell us about your educational background,
`please?
`A.
`Yes. I have a bachelor of science in product design
`engineering, which is part of the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
