Case 1:20-cv-00393-LMB-TCB Document 1387 Filed 07/13/22 Page 1 of 21 PageID# 34540
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
`PHILIP MORRIS PRODUCTS S.A.,
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`
`Plaintiff,
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`
`v.
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`R.J. REYNOLDS VAPOR COMPANY,
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`
`Defendant.
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`Case No. 1:20-cv-00393-LMB-TCB
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`ORAL ARGUMENT REQUESTED
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`
`
`
`
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`PHILIP MORRIS’ OPPOSITION TO REYNOLDS’
`RULE 50(b) RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW AND
`RULE 59 MOTION FOR A NEW TRIAL
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`Case 1:20-cv-00393-LMB-TCB Document 1387 Filed 07/13/22 Page 2 of 21 PageID# 34541
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ...............................................................................................................1
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`ARGUMENT .......................................................................................................................1
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`A.
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`B.
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`C.
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`Reynolds Is Not Entitled To Judgment Or A New Trial On The ’265
`Patent........................................................................................................................1
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`Reynolds Is Not Entitled To Judgment Or A New Trial On The ’911
`Patent........................................................................................................................8
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`There Is No Other Basis For A New Trial .............................................................13
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`III.
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`CONCLUSION ..................................................................................................................15
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`
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`TABLE OF AUTHORITIES
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`CASES
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`BASF Corp. v. Johnson Matthey Inc.,
`875 F.3d 1360 (Fed. Cir. 2017) ................................................................................................... 3
`
`Cargill, Inc. v. WDS, Inc.,
`No. 16-cv-848, 2018 WL 1525352 (W.D.N.C. Mar. 28, 2018) .................................................. 1
`
`Chemours Co. v. Daikin Indus., Ltd.,
`4 F.4th 1370 (Fed. Cir. 2021) .................................................................................................... 10
`
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) ................................................................................................... 2
`
`Dennis v. Gen. Elec. Corp.,
`762 F.2d 365 (4th Cir. 1985) ..................................................................................................... 13
`
`Enovsys LLC v. Nextel Commc’ns, Inc.,
`614 F.3d 1333 (Fed. Cir. 2010) ................................................................................................. 12
`
`Finch v. Covil Corp.,
`388 F. Supp. 3d 593 (M.D.N.C. 2019),
`aff’d, 972 F.3d 507 (4th Cir. 2020) ........................................................................................... 14
`
`Hologic, Inc. v. Minerva Surgical, Inc.,
`No. 15-cv-1031, 2018 WL 3348998 (D. Del. July 9, 2018) ...................................................... 15
`
`i4i Ltd. P’ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010) ..................................................................................................... 9
`
`InTouch Techs., Inc. v. VGo Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................................................... 9
`
`Kowalski v. Ocean Duke Corp.,
`No. 04-cv-55, 2008 WL 903106 (D. Haw. Apr. 1, 2008) ........................................................... 1
`
`Liquid Dynamics Corp. v. Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006) ................................................................................................... 4
`
`Minter v. Wells Fargo Bank,
`762 F.3d 339 (4th Cir. 2014) ............................................................................................... 10, 14
`
`Moore U.S.A., Inc. v. Standard Register Co.,
`229 F.3d 1091 (Fed. Cir. 2000) ................................................................................................... 2
`
`ii
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`
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`OPTi, Inc. v. VIA Techs., Inc.,
`65 F. Supp. 3d 465 (E.D. Tex. 2014) .......................................................................................... 2
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`Parker Compound Bows, Inc. v. Hunter’s Mfg. Co.,
`No. 5:14-cv-4, 2016 WL 617464 (W.D. Va. Feb. 12, 2016) ...................................................... 2
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ................................................................................................. 10
`
`Rhoades v. Forsyth,
`No. 1:18-CV-186, 2022 WL 303364 (N.D.W. Va. Feb. 1, 2022) ....................................... 14, 15
`
`Separation Design Group IP Holdings, LLC v. Inogen, Inc.,
`No. CV15-08323-JAK, 2016 WL 7486596 (C.D. Cal. Oct. 21, 2016) ....................................... 3
`
`TecSec, Inc. v. Adobe Inc.,
`978 F.3d 1278 (Fed. Cir. 2020) ................................................................................................. 13
`
`United States v. Chong Lam,
`677 F.3d 190 (4th Cir. 2012) ..................................................................................................... 15
`
`Warsaw Orthopedic, Inc. v. NuVasive, Inc.,
`778 F.3d 1365 (Fed. Cir. 2015) ................................................................................................... 3
`
`STATUTES
`
`35 U.S.C. § 298 ............................................................................................................................. 15
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`
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`iii
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`
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`I.
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`INTRODUCTION
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`After carefully considering the testimony of twelve witnesses, over a hundred exhibits, and
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`this Court’s instructions on the law, the jury returned a unanimous verdict finding both asserted
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`patents infringed and not invalid. Reynolds now asks the Court to overturn nearly every decision
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`that the jury made. But Reynolds’ motion does little more than reargue and contradict claim
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`construction and other issues that Judge O’Grady already decided. That is improper post-trial
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`reconsideration. Reynolds provides no basis to reconsider any of Judge O’Grady’s prior rulings
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`and turns a blind eye to the substantial evidence supporting the verdict. The law does not permit
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`such disregard for the jury’s work. The Court should deny Reynolds’ Motion.
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`II.
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`ARGUMENT
`A.
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`Reynolds Is Not Entitled To Judgment Or A New Trial On The ’265 Patent
`1.
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`The ’265 Patent Is Not Indefinite
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`Reynolds argues that the limitation “dimensions substantially the same as a cross-section
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`of a cigarette or a cigar” in claim 1 is indefinite. Reynolds made this legal argument during claim
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`construction. Dkt. 226 at 19. Judge O’Grady rejected it. Dkt. 360 at 1. That is dispositive and
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`Reynolds does not even attempt to meet the high standard required for reconsideration.
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`Separately, Reynolds waived its indefiniteness argument. A party “must have moved under
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`Rule 50(a) for relief on similar grounds to move after trial under Rule 50(b),” and the failure to do
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`so “results in waiver.” Cargill, Inc. v. WDS, Inc., No. 16-cv-848, 2018 WL 1525352, at *2
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`(W.D.N.C. Mar. 28, 2018); Kowalski v. Ocean Duke Corp., No. 04-cv-55, 2008 WL 903106, at
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`*1-2 (D. Haw. Apr. 1, 2008) (denying Rule 50(b) motion on indefiniteness that “fail[ed] to meet
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`the renewal requirement of Rule 50(b)” where party did not “argue or even allude to
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`indefiniteness” in its Rule 50(a) motion). Reynolds did not raise indefiniteness in its Rule 50(a)
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`Motion. And Reynolds withdrew its invalidity defenses for the ’265 Patent at trial. Reynolds is
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`1
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`now “effectively ambush[ing]” Philip Morris “by using trial evidence—directed at issues
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`presented to the jury—in support of its already resolved, purely legal arguments.” OPTi, Inc. v.
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`VIA Techs., Inc., 65 F. Supp. 3d 465, 476 (E.D. Tex. 2014). This is improper.
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`Reynolds’ arguments fare no better on the merits for the reasons Philip Morris already
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`briefed and Judge O’Grady credited. Dkt. 224, 310. The claim language requires specific
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`“dimensions” (the “cross-section”) of well-known objects (a “cigarette or cigar”). That is more
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`than “reasonable certainty.” Parker Compound Bows, Inc. v. Hunter’s Mfg. Co., No. 14-cv-4,
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`2016 WL 617464, at *14, *26 (W.D. Va. Feb. 12, 2016) (finding dimensions to “allow a user’s
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`foot to be inserted” without numerical ranges not indefinite because they are “extremely well-
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`known”). Reynolds’ own technical expert, Dr. Suhling, testified about the cross-sectional
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`dimensions of various cigarettes and cigars, without any suggestion that he did not understand the
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`claim scope. Ex. 1 (6/13 a.m. Tr.) at 796:1-797:22. Reynolds three arguments fail.
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`First, Reynolds’ assertion that the term “substantially” renders the claim indefinite is legal
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`error because the Federal Circuit has consistently found that “substantially” simply means
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`“approximately.” See, e.g., Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1360 (Fed. Cir.
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`2003). Second, Reynolds asserts that the patent does not provide a “standard” for measuring the
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`claimed cross-section. But “[t]here is nothing wrong with defining the dimensions of a device in
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`terms of the environment in which it is to be used,” as the ’265 Patent does. Moore U.S.A., Inc. v.
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`Standard Register Co., 229 F.3d 1091, 1111 (Fed. Cir. 2000). As Mr. Walbrink, Philip Morris’
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`technical expert, testified, the patent explains that this limitation requires the thermal resistor to be
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`sized to enable a conventional cigarette or cigar smoking experience. See Ex. 2 (6/9 a.m. Tr.) at
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`320:15-323:19; Dkt. 40-1 at 1:32-38, 4:12-15. Third, Reynolds asserts that cigarettes and cigars
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`“come in … various sizes.” Mot. at 2. But conventional cigarette and cigar sizes are extremely
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`2
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`well-known and easily ascertainable by laypersons and experts alike. See Warsaw Orthopedic,
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`Inc. v. NuVasive, Inc., 778 F.3d 1365, 1371 (Fed. Cir. 2015) (finding claim reciting “length” and
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`“depth” of a “vertebrae” sufficiently definite because “[t]he average dimensions of the human
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`vertebrae are well-known, easily ascertainable, and well-documented”); BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1367 (Fed. Cir. 2017). Reynolds’ own expert identified and testified
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`about cross-sectional dimensions of various cigarettes and cigars. See Ex. 1 (6/13 a.m. Tr.) at
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`796:1-797:22; Separation Design Grp. IP Holdings, LLC v. Inogen, Inc., No. 15-cv-8323, 2016
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`WL 7486596, at *9-10 (C.D. Cal. Oct. 21, 2016).
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`2.
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`Substantial Evidence Supports The Jury’s Finding That The Alto
`Infringes Claims 1 and 4 of the ’265 Patent
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`(i) “dimensions substantially the same as a cross-section of a cigarette or cigar.” Philip
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`Morris presented substantial evidence that supports the jury’s conclusion that the Alto’s thermal
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`resistor meets this limitation. Mr. Walbrink (i) showed the jury the “actual heater assembly … of
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`the Alto that [he] took out” (Ex. 2 (6/9 a.m. Tr.) at 321:19-25; PPX-19), (ii) identified the “S-
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`shaped resistive element” as the “thermal resistor” (Ex. 2 (6/9 a.m. Tr.) at 321:19-25, 318:8-15),
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`and (iii) demonstrated that the S-shaped resistive element has dimensions substantially the same
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`as cigarettes with various cross sections (id. at 322:1-324:4). The jurors physically inspected and
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`held the actual heater assembly and a conventional cigarette. Id. at 322:16-324:4; PPX-19. They
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`saw with their own eyes that the relevant dimensions are “substantially the same.” Ex. 2 (6/9 a.m.
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`Tr.) at 322:16-324:4. Reynolds’ four arguments fail across the board.
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`First, Reynolds argues that the term “dimensions” means “area.” Mot. at 3. Reynolds’
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`expert, Dr. Suhling, admitted the word “area” does not appear in claim 1 and that Reynolds’
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`3
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`position requires “chang[ing] the claim language from ‘cross section’ to ‘cross-sectional area.’”1
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`Ex. 1 (6/13 a.m. Tr.) at 818:15-25; see also Ex. 2 (6/9 a.m. Tr.) at 370:7-12. This is inconsistent
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`with Judge O’Grady’s claim construction order giving the “dimensions” limitation its plain
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`meaning. Dkt. 360 at 1; Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed.
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`Cir. 2006) (finding “expert opinion evidence [] irrelevant because it [is] based on an impermissible
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`claim construction”). Regardless, Dr. Suhling admitted the Alto’s thermal resistor fills the cross-
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`sectional area of one cigarette he identified and thus has “substantially the same” cross-sectional
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`area a cigarette. Ex. 1 (6/13 a.m. Tr.) at 823:11-24.
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`Second, Reynolds argues that “Mr. Walbrink never offered a measurement for the thermal
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`resistor.” Mot. at 3. This is irrelevant. The claims do not require specific numerical dimensions
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`because “cigarettes come in various shapes – or various sizes.” Ex. 2 (6/9 a.m. Tr.) at 321:11-18;
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`322:24-323:7; see also Ex. 1 (6/13 a.m. Tr.) at 819:11-820:3 (Dr. Suhling agreeing that cigarettes
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`come in different sizes). In fact, Judge O’Grady already rejected Reynolds’ attempt to inject
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`specific numerical measurements into this limitation. See Dkt. 226 at 19; Dkt. 360. As discussed,
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`the claimed “dimensions” are those that “enable a device to be made that you can handle like a
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`cigarette and smoke it like a conventional combustible cigarette.” Ex. 2 (6/9 a.m. Tr.) at 320:20-
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`321:18, 322:24-323:7, 323:24-324:4; PPX-19; Dkt. 40-1 at 1:32-38, 4:12-15. The Alto’s thermal
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`resistors have the claimed dimensions.
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`Third, Reynolds asserts that Philip Morris “invit[ed] the jury to conclude that the entire
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`device, rather than the resistor, must have [the claimed] dimensions.” Mot. at 3-4. Reynolds is
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`wrong. Mr. Walbrink explicitly pointed to the “S-shaped resistive element” (the thermal resistor)
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`and compared “the resistive heating element, that sinuous line on the back of the heater” to
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`1 All emphases added and citations omitted unless otherwise noted.
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`4
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`cigarette cross-sections. Ex. 2 (6/9 a.m. Tr.) at 321:19-322:15; see also, e.g., id. at 323:8-17. The
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`record belies Reynolds’ suggestion that the jury looked at the entire heater assembly.
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`Fourth, Reynolds asserts that Philip Morris made “misleading arguments” in closing by
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`pointing out that the Alto thermal resistor fits within the cross-section of each cigarette that
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`Reynolds’ expert identified. Mot. at 4-5. This argument—which Reynolds never objected to—is
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`not “misleading.” It demonstrates that the accused thermal resistor enables a device that can be
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`smoked like a conventional cigarette exactly as required. Ex. 2 (6/9 a.m. Tr.) at 320:20-321:3,
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`321:11-18, 322:24-323:7; Dkt. 40-1 at 1:32-38, 4:12-15. Reynolds also asserts that Philip Morris
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`misled the jury by stating that 48 mm is 2 inches. Mot. at 4. According to Reynolds, the proper
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`measurement is 48 mm squared. Id. But in opening statements, Reynolds’ counsel showed an
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`image along the length of a cigarette and labeled it “48.89 mm”—not 48 mm squared. Ex. 3 (Op.
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`Slide) at 8. Philip Morris’ observation that the 48 mm shown by Reynolds is 2 inches was directly
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`responsive, not objected to, and proper.
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`(ii) “configured to be connected to the mouthpiece.” At trial, there was no dispute that
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`the Alto includes a “mouthpiece” and that the “mouthpiece” identified by Mr. Walbrink met the
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`“configured to be connected” limitation. Ex. 1 (6/13 a.m. Tr.) at 806:2-5; Ex. 4 (6/8 p.m. Tr.) at
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`298:5-299:18; Ex. 2 (6/9 a.m. Tr.) at 354:4-7; Ex 5 (PX-80).2 The jury could properly credit Mr.
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`Walbrink’s testimony and find infringement. Reynolds’ three arguments to the contrary fail.
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`2 Reynolds mischaracterizes Mr. Walbrink’s testimony to suggest that he agreed with Reynolds’
`argument that only the black tip “is the mouthpiece.” Mot. at 5. In the cited testimony, Mr.
`Walbrink agreed that the black tip goes into a user’s mouth and that “Reynolds says” (or that
`“Reynolds’ position” is) that the black tip alone is the mouthpiece. Ex. 2 (6/9 a.m. Tr.) at 348:9-
`11, 349:15-22. Regardless, Mr. Walbrink testified that both the black tip alone and with the
`cartomizer tube meet this limitation, which more than sufficiently supports the jury’s verdict. See,
`e.g., Ex. 4 (6/8 p.m. Tr.) at 299:16-21; Ex. 2 (6/9 a.m. Tr.) at 368:14-369:11.
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`5
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`First, Reynolds asserts that “no reasonable juror could adopt Mr. Walbrink’s position” that
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`the “mouthpiece” includes the “cartomizer tube” that holds the liquid. Mot. at 5. Reynolds is
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`incorrect. The ’265 Patent consistently describes a “mouthpiece” as including the liquid reservoir.
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`Dkt. 40-1 at 2:19-29 (“In addition to the reservoir, the mouthpiece only comprises …”), 2:50-53
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`(“The reservoir in the mouthpiece”), Fig. 2, Table 1. Reynolds’ own expert testified that the
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`“mouthpiece” is the part that “we place in our mouth” and that at least some of the cartomizer tube
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`“goes into the user’s mouth.” Ex. 1 (6/13 a.m. Tr.) at 779:4-12, 817:23-818:3. He also agreed the
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`cartomizer tube “goes inside” the black tip and is thus also placed in a user’s mouth. Id. at 816:7-
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`13, 817:4-7; Ex. 4 (6/8 p.m. Tr.) at 298:5-299:18; Ex. 2 (6/9 a.m. Tr.) at 354:4-7; Ex. 5 (PX-80).
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`Second, Reynolds asserts that only the black tip is the “mouthpiece,” and it allegedly does
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`not infringe because “the undisputed evidence at trial is that indirect connection does not satisfy
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`the ‘configured to be connected’ limitation.” Mot. at 6. The evidence shows the opposite: the
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`black tip is “configured to be connected” to the heater despite intervening components. Ex. 4 (6/8
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`p.m. Tr.) at 299:16-18 (“Q. And so in your opinion is the mouthpiece and the black tip of the
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`mouthpiece configured to be connected to the heater? A. Yes. I find that it is.”), 299:19-21; Ex. 2
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`(6/9 a.m. Tr.) at 368:14-369:11; Ex. 6 (6/10 a.m. Tr.) at 720:1-10 (Mr. Hunt testifying that the
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`black tip is “designed with a one-way snap” and is not sold separately from the rest of the
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`cartridge); Ex. 1 (6/13 a.m. Tr.) at 815:13-25. Reynolds’ only rebuttal is to suggest the black tip
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`“can be snapped on and off.” Mot. at 5. While perhaps theoretically possible, Mr. Hunt agreed
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`the black tip is not designed (or sold) separate from the heater.3 Ex. 6 (6/10 a.m. Tr.) at 720:1-10.
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`3 Reynolds suggestion that Mr. Walbrink “agreed that he offered no infringement opinion that the
`black mouthpiece is configured to be connected to the heater” is incorrect. Mot. at 5. The cited
`trial testimony concluded with the question “You haven’t offered that opinion, correct,” to which
`Mr. Walbrink responded “No,” i.e., not correct. Ex. 2 (6/9 a.m. Tr.) at 354:8-11. Regardless, the
`jury was free to credit Mr. Walbrink’s testimony that both the black tip alone and with the
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`6
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`Third, Reynolds’ position hinges on construing the simple term “configured to be
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`connected” as “designed/manufactured to be directly, physically connected” because “Dr. Suhling
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`provided the only testimony as to how a person of ordinary skill (“POSA”) would define
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`‘configured to be connected.’” Mot at 6-7.4 Reynolds is wrong. The jury was instructed to apply
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`the plain meaning. They could have (and should have) rejected Reynolds’ wordy, litigation-driven
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`construction. Ex. 4 (6/8 p.m. Tr.) at 298:10-299:21; Ex. 2 (6/9 a.m. Tr.) at 368:2-369:11. Dr.
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`Suhling even conceded that he changed the claim language from “connected” to “directly
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`connected.” Ex. 1 (6/13 a.m. Tr.) at 811:2-25, 812:6-10, 814:23-815:6. And he agreed that the
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`patent expressly uses the terms “direct” or “in contact with” when referring to direct connections.
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`Id. at 811:7-25, 812:13-813:9. Substantial evidence establishes that “configured to be connected”
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`includes both direct and indirect connections.
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`(iii) “metallic foil or thin sheet.” Substantial evidence showed that the Alto’s S-shaped
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`thermal resistor is “a metallic foil or thin sheet.” Mr. Walbrink testified that the S-shaped thermal
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`resistor is both a “metallic foil” and “thin sheet” based on his measurement of the thermal resistor
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`to be 0.14 mm in thickness (which is thin) and the PMTA’s disclosures that it is “made of low
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`chromium nickel iron alloy” (which is metallic). Ex. 2 (6/9 a.m. Tr.) at 318:6-320:2; Ex. 7 (PX-
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`28) at 34; Ex. 8 (PX-82). Reynolds’ own technical witness testified that the Alto’s resistor is a
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`“thin heater film,” supporting the jury’s verdict. Ex. 6 (6/10 a.m. Tr.) at 737:20-22.
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`cartomizer tube meet this limitation. See, e.g., Ex. 4 (6/8 p.m. Tr.) at 299:16-21; Ex. 2 (6/9 a.m.
`Tr.) at 368:14-369:11.
`4 Reynolds’ suggestion that Mr. Walbrink somehow adopted Reynolds’ strained construction is
`also wrong. Mot. at 5. Reynolds improperly cites Mr. Walbrink’s expert report, which is not in
`evidence and does not say anything about a “direct connection.” Mr. Walbrink’s testimony that
`the mouthpiece and heater are “definitely connected” and “come together” also does not limit
`“connected” to “directly connected.”
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`7
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`Reynolds’ arguments fail. First, Reynolds asserts that the S-shaped thermal resistor has
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`“humps.” Mot. at 6. But Dr. Suhling confirmed the Alto’s thermal resistor is even thinner than
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`those described in the ’265 Patent, and the “humps” only appear under substantial magnification.
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`Ex. 1 (6/13 a.m. Tr.) at 808:3-809:22; Ex. 2 (6/9 a.m. Tr.) at 370:2-6. Second, Reynolds again
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`relies on an improper claim construction—this time, that “metallic foil or thin sheet” supposedly
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`means “thin metal that can be rolled, cut, patterned, and bent, and is of uniform thickness.” Mot.
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`at 8. This contradicts the claim language, which does not use the words “rolled,” “cut,” “punched,”
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`“bent” or “uniform thickness.” Dkt. 40-1 at cl. 1; Ex. 1 (6/13 a.m. Tr.) at 807:1-9. It also imposes
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`requirements on “how the thermal resistor is made” (Ex. 1 (6/13 a.m. Tr.) at 778:6-11, 789:22-
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`790:10 (testimony about “forming the thermal resistor”), although Dr. Suhling testified the claim
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`imposes no such requirements. Id. at 807:10-19. Because the terms are given their plain meaning,
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`the jury could properly reject Reynolds’ proposed construction and credit Mr. Walbrink’s
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`testimony that the “thin” and “metallic” thermal resistor is both a “thin sheet” and “metallic foil.”
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`B.
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`Reynolds Is Not Entitled To Judgment Or A New Trial On The ’911 Patent
`1.
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`Substantial Evidence Supports The Jury’s Finding That Claims 1, 11
`and 13 Of The ’911 Patent Are Not Obvious
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`The jury correctly found Reynolds failed to prove by clear and convincing evidence that
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`claims 11 and 13 of the ’911 Patent (which depend on claim 1) are obvious.5
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`First, Reynolds and its expert conceded that neither Shizumu nor Han discloses the claimed
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`dimensions for the blind hole. Mot. at 8-9; Ex. 6 (6/10 a.m. Tr.) at 647:18-648:1, 694:23-695:6,
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`700:14-19; Ex. 1 (6/13 a.m. Tr.) at 840:1-16, 841:11-18. And Philip Morris’ expert, Dr. Abraham,
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`testified the combination of Han and Shizumu would not yield the claimed dimensions because
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`5 Reynolds’ brief does not even mention claims 2 and 12, let alone challenge the jury’s finding of
`no obviousness as to those claims. Thus, any challenge to those claims is now waived.
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`8
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`the references did not disclose “any internal dimensions” at all—let alone the claimed dimensions.
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`Ex. 1 (6/13 a.m. Tr.) at 840:1-16, 841:11-18. The jury could properly find Reynolds did not meet
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`its high burden to establish a prima facie case of obviousness. This is alone dispositive.
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`Second, substantial evidence supports rejecting Reynolds’ argument that a POSA “would
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`have been motivated to combine Shizumu with Han to ‘simulate or look like cigarettes, so they
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`had a similar diameter and a similar look.’” Mot. at 9. Whether the combination results in devices
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`that “look like cigarettes” or “had a similar diameter and a similar look” to cigarettes is irrelevant
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`to the limitations about the dimensions of cavities inside the e-cigarette. Ex. 6 (6/10 a.m. Tr.) at
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`648:13-15; Ex. 1 (6/13 a.m. Tr.) at 840:1-16, 841:11-18. Mr. Kodama’s supposed “analysis” about
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`“motivation to combine” was nothing more than a conclusory statement that Shizumu’s disclosures
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`about a 7 mm outer diameter would motivate a POSA to use the precise claimed dimensions to
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`modify Han’s cavities. Ex. 6 (6/10 a.m. Tr.) at 648:19-649:13; Ex. 1 (6/13 a.m. Tr.) at 840:1-16,
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`841:11-842:1. Since Mr. Kodama “failed to provide the necessary articulated reasoning with some
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`rational underpinning” to support an obviousness finding, the jury was “free to disbelieve” his
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`conclusory testimony and credit Dr. Abraham’s testimony about no motivation to combine.
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`InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014); i4i Ltd. P’ship
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`v. Microsoft Corp., 598 F.3d 831, 848 (Fed. Cir. 2010); Ex. 1 (6/13 a.m. Tr.) at 841:19-842:3.
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`Third, substantial evidence supports a finding that Reynolds did not establish a reasonable
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`expectation of success for the proposed combination. Reynolds cites no evidence about why
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`Shizumu’s disclosures about the outer diameter of an e-cigarette have any bearing on “a reasonable
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`expectation of success” with respect to modifying Han’s cavities to have the claimed sizes. See
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`Mot. at 8-10. To the contrary, Dr. Abraham’s testimony establishes that there would not be a
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`9
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`reasonable expectation of success in combining Shizumu and Han, which is substantial evidence
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`supporting the jury’s verdict. Ex. 1 (6/13 a.m. Tr.) at 840:10-16, 841:19-842:3.
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`Fourth, Reynolds ignores the substantial evidence of objective indicia of non-obviousness,
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`which “must” be considered. Chemours Co. v. Daikin Indus., Ltd., 4 F.4th 1370, 1377 (Fed. Cir.
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`2021). The Solo G2 “embodies the claimed features[] and is coextensive with them” because it
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`practices claims 11 and 13, giving rise to the presumption of a nexus to the claims. Polaris Indus.,
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`Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018). Because the Solo G2 is undisputedly
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`commercially successful, there is unrebutted record evidence of objective indicia of non-
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`obviousness, which supports the jury’s verdict. See, e.g., Ex. 9 (6/9 p.m. Tr.) at 469:9-470:2; Ex.
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`10 (6/14 a.m. Tr.) at 985:10-11; Ex. 11 (Gilley Dep.) at 75:16-18, 75:20-21 (played at trial).6
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`2.
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`Substantial Evidence Supports The Jury’s Finding That The Solo G2
`Infringes Claims 11 and 13 of The ’911 Patent
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`(i) “blind hole.” The evidence establishes that the Solo G2 includes a “blind hole” in a
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`toroidal (doughnut) shape. Dkt. 1376-7 at -16296; Ex. 12 (PX-30) at 13; Ex. 4 (6/8 p.m. Tr.) at
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`182:10-18, 201:18-24, 204:11-19, 205:4-25, 211:8-15; Ex. 6 (6/10 a.m. Tr.) at 669:18-21, 671:9-
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`13, 690:24-691:1. Dr. Abraham confirmed that the Solo G2’s toroidal “blind hole” collects liquid
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`condensate as claimed. Ex. 4 (6/8 p.m. Tr.) at 201:13-24. This is unrebutted: Mr. Kodama
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`admitted he performed no functional testing and no testing to replicate Dr. Abraham’s testing. Ex.
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`6 (6/10 a.m. Tr.) at 669:18-21, 671:9-13, 690:24-691:1. Reynolds’ arguments fail.
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`First, Reynolds argues that the patent “distinguishes between a ‘blind hole’ and an ‘annular
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`groove’” (i.e., a toroidal shape). Mot. at 11. That is wrong. The specification teaches that
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`purported annular grooves are blind holes because they are cavities that “do[] not extend to the
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`6 Reynolds does not, and cannot, argue any evidence was “false” or upholding the verdict would
`cause “a miscarriage of justice.” Minter v. Wells Fargo Bank, 762 F.3d 339, 346 (4th Cir. 2014).
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`10
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`outside of the aerosol-generating system.” Dkt. 40-3 at 10:50-52, 12:22-24. As Dr. Abraham
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`testified, the Solo G2 blind holes have a “toroidal shape that’s very similar to” the annular groove
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`blind hole contemplated by the specification and Figure 6. Ex. 4 (6/8 p.m. Tr.) at 208:16-19,
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`211:8-15; Ex. 6 (6/10 a.m. Tr.) at 745:19-23. Indeed, during prosecution of the ’911 patent, the
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`Examiner expressly referred to “the blind hole being toroid of Figures 5 and 6.” Ex. 6 (6/10 a.m.
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`Tr.) at 676:9-13, 678:5-9; Dkt. 1376-7 at -16296.7 And claim 13 expressly recites a cavity that is
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`a “blind hole” with a “toroidal shape” (i.e., “annular groove”), confirming that the “blind hole”
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`element necessarily includes such shapes. Dkt. 40-3 at claim 13.
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`Second, Reynolds argues that the Applicants “amended the application to narrow the
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`claimed invention” to the “blind hole” shown in Figures 3 and 4. Mot. at 11. That argument
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`contradicts Judge O’Grady’s claim construction order finding no disclaimer and giving “blind
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`hole” its plain meaning. Dkt. 360 at 1. Mr. Kodama never acknowledged, much less applied,
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`Judge O’Grady’s claim construction order. Ex. 6 (6/10 a.m. Tr.) at 680:11-13. The jury properly
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`disregarded his opinions limiting “blind holes” to Figures 3 and 4 of the ’911 patent.
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`(ii) “largest cross-sectional dimension.” Dr. Abraham identified the “largest cross-
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`sectional dimension” of the Solo G2’s blind hole based on the patent’s guidance and measured it
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`to be 0.71477 mm. Ex. 4 (6/8 p.m. Tr.) at 192:7-19, 206:17-207:18; Ex. 13 at PDX-2.037. This
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`is undisputedly within the claimed range. Id. This evidence is more than sufficient to sustain the
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`jury’s verdict. Reynolds contends that the jury’s finding that the Solo G2 meets the cross-sectional
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`dimension element should be vacated for three reasons. Mot. at 12-14. Each argument fails.
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`7 Mr. Kodama’s only response to this unambiguous evidence was to improperly argue that the
`Examiner, who he admitted has “expertise in the art of the ’911 Patent,” “might have chosen the
`wrong wording in their reply.” Ex. 6 (6/10 a.m. Tr.) at 675:14-16, 680:21-22. At trial, the Court
`properly excluded such improper testimony (Dkts. 1346, 1358), and it provides no basis to second
`guess the jury’s infringement finding.
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`11
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`First, Reynolds asserts that Dr. Abraham “improperly” measured the “largest cross-
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`sectional dimension.” Mot. at 13. That is incorrect. Dr. Abraham’s measurement of the wall-to-
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`wall distance of the Solo G2 cavity is consistent with the specification’s guidance. Ex. 4 (6/8 p.m.
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`Tr.) at 207:2-18; Ex. 1 (6/13 a.m. Tr.) at 836:3-837:6. It is also consistent with the claim language,
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`which requires “at least one cavity in a wall” and “the at least one cavity is a blind hole recessed
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`in the wall.” Dkt. 40-3 at claim 1. As Dr. Abraham explained, it is proper to measure “from one
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`wall to another” because “it’s the walls that help hold the liquid condensate” in the cavity. Ex. 1
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`(6/13 a.m. Tr.) at 836:3-837:6.8 In contrast, Mr. Kodama measured “the diameter of that annular
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`groove,” which contradicts the ’911 Patent. Ex. 6 (6/10 a.m. Tr.) at 633:11-17.
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`Second, Reynolds contends that “cross-sectional dimension x” excludes “a radius” or “a
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`line segment that did not traverse the center of the hole.” Mot. at 13-14. This argument