Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 1 of 15 PageID# 34715
`
`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 REPLY IN SUPPORT OF
`RULE 50(b) RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW AND
`RULE 59 MOTION FOR A NEW TRIAL
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`
`

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`Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 2 of 15 PageID# 34716
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ......................................................................................................... ii
`INTRODUCTION ......................................................................................................................... 1
`ARGUMENT ................................................................................................................................. 1
`I.
`REYNOLDS IS ENTITLED TO JUDGMENT OR A NEW TRIAL ON THE
`’265 PATENT. ................................................................................................................... 1
`A.
`The Asserted Claims of the ’265 Patent Are Invalid as Indefinite. ....................... 1
`B.
`The Alto Thermal Resistor Does Not Have “Dimensions Substantially the
`Same as a Cross-Section of a Cigarette or Cigar.” ................................................ 2
`The Alto Heater Is Not “Configured To Be Connected to the Mouthpiece.” ........ 4
`C.
`The Alto Thermal Resistor Is Not a Metallic Foil or Thin Sheet. ......................... 5
`D.
`REYNOLDS IS ENTITLED TO JUDGMENT OR NEW TRIAL ON THE ’911
`PATENT AS TO SOLO G2. ............................................................................................. 6
`A.
`The Asserted Claims of the ’911 Patent Are Invalid as Obvious. ......................... 6
`B.
`PMP Failed To Prove Solo G2 Infringes the ’911 Patent. ..................................... 7
`1.
`The Solo G2 does not contain a “blind hole.” ........................................... 7
`2.
`The Solo G2 cavity does not meet the required dimensions. ..................... 8
`THE COURT SHOULD GRANT A NEW TRIAL DUE TO PMP’S PATTERN
`OF PREJUDICIAL QUESTIONS AND REMARKS. ...................................................... 9
`CONCLUSION ............................................................................................................................ 10
`
`
`II.
`
`III.
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`-i-
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`Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 3 of 15 PageID# 34717
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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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`Am. Permahedge, Inc. v. Barcana, Inc.,
`105 F.3d 1441 (Fed. Cir. 1997)..................................................................................................9
`
`Eli Lilly & Co. v. Hospira, Inc.,
`933 F.3d 1320 (Fed. Cir. 2019)..................................................................................................9
`
`Enplas Display Device Corp. v. Seoul Semiconductor Co.,
`909 F.3d 398 (Fed. Cir. 2018)..................................................................................................10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...............................................................................................................6, 7
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................2
`
`Parker Compound Bows, Inc. v. Hunter’s Mfg.,
`No. 5:14cv00004, 2016 WL 617464 (W.D. Va. Feb. 12, 2016)................................................1
`
`Varian Med. Sys., Inc. v. ViewRay, Inc.,
`No. 19-cv-5697-SI, 2020 WL 4260714 (N.D. Cal. July 24, 2020) .......................................1, 2
`
`Waddington N. Am., Inc. v. Sabert Corp.,
`No. 09-4883 (GEB), 2011 WL 3444150 (D.N.J. Aug. 5, 2011) ..............................................10
`
`Warsaw Orthopedic, Inc. v. NuVasive, Inc.,
`778 F.3d 1365 (Fed. Cir. 2015), vacated, 577 U.S. 1099 (2016) ..............................................1
`
`STATUTES
`
`35 U.S.C. § 298 ..............................................................................................................................10
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`-ii-
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`INTRODUCTION
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`Despite PMP’s constant refrain that “Reynolds is wrong,” so saying does not make it true.
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`Because PMP has failed to identify sufficient evidence to support the jury’s verdict, and the jury’s
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`verdict is both against the weight of the evidence and contrary to law, the Court should grant
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`Reynolds’s motion for judgment as a matter of law, or, alternatively, a new trial.
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`ARGUMENT
`
`I.
`
`REYNOLDS IS ENTITLED TO JUDGMENT OR A NEW TRIAL ON THE ’265
`PATENT.
`
`A.
`
`The Asserted Claims of the ’265 Patent Are Invalid as Indefinite.
`
`Reynolds established in its Markman briefing and its Opening Brief (Dkt. 1380) that
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`independent claim 1 of the ’265 patent is invalid because it fails to inform a POSA of its scope and
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`provides no guidance for the claimed “dimensions substantially the same as a cross-section of a
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`cigarette or cigar.” Dkt. 1380 at 1-3. PMP concedes that the specification offers no definition or
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`guidance for the claimed dimensions, and ignores Reynolds’s cited authority (Dkt. 1380 at 2 &
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`n.1) finding “substantially” terms indefinite where “there are no objective boundaries in the patent
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`for when [a dimension] is considered ‘substantially same.’” Varian Med. Sys., Inc. v. ViewRay,
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`Inc., No. 19-cv-5697, 2020 WL 4260714, at *6 (N.D. Cal. July 24, 2020). PMP argues (without
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`support) that “cigarette and cigar sizes are extremely well-known and easily ascertainable,” and
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`cites cases where the parties agreed that the dimensions were well-known,1 but all of that blinks
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`the main issue: the specification provides no objective dimensions or standard for measuring them.
`
`See Dkt. 1387 at 2-3. Conceding that the patent provides no standard, PMP asserts that it may
`
`
`1 See Parker Compound Bows, Inc. v. Hunter’s Mfg., No. 5:14-cv-4, 2016 WL 617464, at *14, *26
`(W.D. Va. Feb. 12, 2016) (party agreement that dimensions of “a user’s foot” were “extremely
`well-known in the art”); Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 1371 (Fed.
`Cir. 2015) (“[T]he parties stipulated that ‘the average dimensions of the human vertebrae are well-
`known, easily ascertainable, and well-documented ….’”), vacated, 577 U.S. 1099 (2016).
`
`-1-
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`define the term “in terms of the environment in which it is to be used,” i.e., a “cigarette or cigar,”
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`id. at 2, but that assertion merely (and circularly) repeats the indefinite language. That Dr. Suhling
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`testified about “dimensions of various cigarettes and cigars, without any suggestion that he did not
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`understand the claim scope,” id., does not render the term definite; what “a POSITA would know”
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`cannot suffice when “the specification does not disclose any dimensions” and thus “the patent
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`lacks information as to the boundaries of the claim.” See Varian, 2020 WL 4260714 at *6.
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`PMP mistakenly argues that Reynolds “waived” its entitlement to relief, but “[w]hen the
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`claim construction is resolved pre-trial, and the patentee presented the same position in the
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`Markman proceeding as is now pressed, a further objection to the district court’s pre-trial ruling
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`may indeed have been not only futile but unnecessary.” O2 Micro Int’l Ltd. v. Beyond Innovation
`
`Tech. Co., 521 F.3d 1351, 1359 (Fed. Cir. 2008). That Reynolds narrowed its case by declining
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`to present its prior-art based invalidity defenses at trial similarly does not affect its preserved
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`indefiniteness challenge to claim 1.
`
`B.
`
`The Alto Thermal Resistor Does Not Have “Dimensions Substantially the
`Same as a Cross-Section of a Cigarette or Cigar.”
`
`Reynolds is entitled to judgment of no infringement or a new trial because the Alto thermal
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`resistor does not meet the “dimensions substantially the same as” limitation. See Dkt. 1380 at 3-
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`4. PMP cannot contest that the claim language requires plural “dimensions,” that dimensions of a
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`circular shape require a measurement of area, and that the invention aimed to provide “a large
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`contact area for the heater,” Dkt. 1380-1 at 358:17-19 (Walbrink). And PMP’s own summation
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`of the evidence debunks its infringement argument. Specifically, PMP can point only to
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`Mr. Walbrink’s misleading demonstration comparing Alto’s entire heater assembly to dimensions
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`of various cigarettes, which jurors “saw with their own eyes” to assess the relevant dimensions.
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`Dkt. 1387 at 3. That show-and-tell, and PMP’s misguided arguments based on it now, cannot form
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`-2-
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`the basis for an infringement verdict, because PMP offered no evidence that the thermal resistor
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`met the limitation. That Mr. Walbrink showed the jury where on the assembly the thermal resistor
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`was located (Dkt. 1387-2 at 321:22-323:21) is beside the point; he failed to measure the resistor,
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`and it was the entire assembly that he circulated to the jury. See Dkt. 1380 at 4.
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`PMP’s other arguments do not withstand scrutiny. To start, PMP doubles down on the
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`claims’ lack of “specific numerical dimensions” and asserts that its expert’s failure to measure the
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`resistor is “irrelevant” because supposedly the claimed dimensions need only “enable a device to
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`be made that you can handle like a cigarette.” Dkt. 1387 at 4.2 PMP further suggests that the
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`“plain meaning” of the plural “dimensions” of a cross-section of a circle is something other than
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`“area,” and then incorrectly contends that Dr. Suhling “admitted” that the Alto’s thermal resistor
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`“fills the cross-sectional area of one cigarette he identified.” Dkt. 1387 at 4. Dr. Suhling did no
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`such thing. Even taking PMP’s “super slim” cigarette comparison, Dr. Suhling’s testimony (the
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`only evidence comparing the thermal resistor’s dimensions to cross-sections of various e-
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`cigarettes) showed that at 9 mm2, the resistor did not have “substantially the same dimensions” as
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`the “super slim” cigarette with an area of 15.6 mm2 . See Dkt. 1387-1 at 822:5-22. And contrary
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`to PMP’s assertion, the question is not whether the resistor “fits within” the cigarette’s cross-
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`section but whether its dimensions are “substantially the same.” Finally, PMP persists in its
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`misleading “observation” to the jury in closing remarks that 48 mm2 “is 2 inches” by relying on
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`Reynolds’s opening demonstrative that plainly shows a comparison of cross-sectional area, and
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`ignoring both experts’ agreement that an average cigarette’s area was 48 mm squared. See Dkt.
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`1380-1 at 360:18-21 (Walbrink); Dkt. 1387-1 at 796:17-21 (Suhling).
`
`
`2 That contention is impossible to square with PMP’s argument on the ’911 patent that a POSA
`would not have been motivated to combine Shizumu with Han to achieve a similar look to
`cigarettes because such a goal is supposedly also “irrelevant.” See Dkt. 1387 at 9.
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`C.
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`The Alto Heater Is Not “Configured To Be Connected to the Mouthpiece.”
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`As explained in Reynolds’s brief, PMP’s expert never offered an opinion that the Alto
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`black mouthpiece, alone, meets the “configured to be connected” limitation. PMP acknowledges
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`that Mr. Walbrink’s infringement opinion was that “the mouthpiece and the black tip of the
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`mouthpiece” was configured to be connected to the heater, (Dkt. 1387 at 6 (emphasis partially
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`omitted) (quoting Dkt. 1387-4 at 299:16-18)), not that the heater was configured to be connected
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`to the black mouthpiece, alone. Indeed, Mr. Walbrink testified that he did not offer that opinion:
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`Q. Sure. Your infringement opinion to say that the Vuse Alto
`infringes Claim 1, you – your opinion is that the mouthpiece is
`elements 1, 2, 3, and 4, right?
`A. Yes.
`Q. You’ve never offered an opinion, if the mouthpiece is just
`element 1, right? You haven’t offered that opinion, correct?
`A. No.
`Dkt.1380-1 at 354:4-11. Though PMP now asserts that Mr. Walbrink’s “no” was really a “yes,”
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`context makes clear that Mr. Walbrink testified he did not offer an opinion on whether the black
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`mouthpiece, element 1, would satisfy the ’265 claim limitation. To the extent there could be any
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`doubt as to Mr. Walbrink’s meaning, a review of his trial testimony and his report makes clear that
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`he in fact never did offer that opinion. See Dkt.1380-1 at 298:22-299:25; Dkt. 1380-4. And though
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`PMP cites Eric Hunt’s testimony, as a non-expert, he did not offer an infringement opinion.3
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`With no evidence at trial that the Alto satisfies the “configured to be connected” limitation
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`if the black mouthpiece is properly viewed as the mouthpiece, PMP is left with only two options:
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`(1) its strained argument that the e-liquid tank is also part of the mouthpiece, or (2) its newfound
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`indirect connection theory of infringement. As to its position that a reasonable juror could find
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`3 On the facts, Mr. Hunt testified that the black mouthpiece is manufactured separately from other
`components and “[i]t is separable.” Dkt.1380-1 at 718:25-719:5, 720:1-12. And the mouthpiece
`touches only a gasket and the e-liquid tank when Alto is assembled. See id. at 717:14-718:19.
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`-4-
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`that the e-liquid tank is part of the mouthpiece, PMP cites the ’265 patent language. See Dkt. 1387
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`at 6. But evidence of how the mouthpiece of the ’265 invention is configured does not support a
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`jury finding as to the configuration of Alto. If anything, that language only proves Reynolds’s
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`point—the fact that Alto does not match the ’265 patent (because a plain review of Alto makes
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`clear that the e-liquid tank is not in the mouthpiece) shows non-infringement.
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`As to its indirect connection theory, PMP apparently concedes that Dr. Suhling offered the
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`only testimony as to how a POSA would define “configured to be connected,” as PMP fails to
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`identify any competing definition provided to the jury. See Dkt. 1387 at 7. Instead, PMP relies
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`on the generic instruction that the jury should apply the plain meaning of patent terms. But the
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`charge was not “plain meaning” in a vacuum: “You should give the words in the claims their plain
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`and ordinary meaning to a person of ordinary skill in the art in the context of the patent
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`specification and prosecution history.” Ex. 7, at 1031:11-13 (emphasis added). PMP offers no
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`evidentiary basis for the jury to have adopted any plain meaning to a POSA other than the one put
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`forth by Dr. Suhling. Nor does PMP offer any response to the numerous courts that have found
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`that the plain meaning of “configured to” has a specific meaning and requires that a product be
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`designed/manufactured in a way to promote the intended result. See Dkt. 1380 at 6 & n.2. Here,
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`that plain meaning, as supported by Dr. Suhling’s unrebutted testimony, requires that the
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`mouthpiece be designed/manufactured in a way to promote connection, i.e. designed/manufactured
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`for physical, direct connection. Because PMP failed to identify any evidence that would support
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`a finding that Alto satisfies this limitation, Reynolds is entitled to judgment as a matter of law.
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`D.
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`The Alto Thermal Resistor Is Not a Metallic Foil or Thin Sheet.
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`In its brief, Reynolds noted that “PMP presented no evidence as to what the terms ‘foil’ or
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`‘thin sheet’ mean.” Dkt. 1380 at 8. PMP made no response. And indeed, there was nothing for
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`PMP to say because its expert, Mr. Walbrink, did not define “foil” or “thin sheet,” or otherwise
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`-5-
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`explain why the Alto thermal resistor satisfied the claim language. See Dkt. 1380-1 at 318:16-
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`320:2. With only Mr. Walbrink’s ipse dixit conclusion to weigh against Dr. Suhling’s testimony,
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`no reasonable juror could have found the “metallic foil or a thin sheet” limitation met. PMP makes
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`no argument that an expert’s pure ipse dixit can support a verdict. Instead, PMP criticizes
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`Dr. Suhling’s opinion by suggesting that his definition of “metallic foil” and “thin sheet” are not
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`supported by the claim language, but Dr. Suhling unambiguously testified that his definitions were
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`based on his career as a scientist and work in the field. Id. at 789:12-21. Further, Dr. Suhling
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`testified that intrinsic evidence from the specification embodiments supported his interpretation.
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`Id. at 789:22-790:10, 790:20-23. In any event, finding fault with Dr. Suhling’s testimony does not
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`resolve PMP’s undisputed lack of proof. The only reliable evidence before the jury as to whether
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`the Alto thermal resistor satisfied the “metallic foil or a thin sheet” limitation was Reynolds’s
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`evidence, so Reynolds is entitled to judgment as a matter of law, or, at the very least, a new trial.
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`II.
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`REYNOLDS IS ENTITLED TO JUDGMENT OR NEW TRIAL ON THE ’911
`PATENT AS TO SOLO G2.
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`The Asserted Claims of the ’911 Patent Are Invalid as Obvious.
`
`A.
`The asserted claims of the ’911 Patent are invalid as obvious over the prior art.4
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`Specifically, independent claim 1’s dimensional limitation is obvious in light of Han, combined
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`with Shizumu, as Mr. Kodama testified at trial. See Dkt. 1380 at 8-9; Dkt. 1352 at 6-7. PMP does
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`not dispute that Shizumu disclosed an outer diameter of 7 mm, and cannot deny Dr. Abraham’s
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`testimony that “the small space inside the e-cigarette is going to limit the sizes of the internal
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`components that you can fit in there,” Dkt. 1380-1 at 852:12-19, thus giving the POSA a limited
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`design choice for the dimensions of the claimed cavity. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
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`4 The jury’s verdict of no infringement of the ’911 patent by Alto means that Reynolds’s
`defenses as to claims 2 and 12 are not at issue (Dkt. 1380 at 9 n.3), but at any rate, those claims
`are invalid, see Dkt. 1352 at 7-10.
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`-6-
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`398, 421 (2007). Instead, PMP attempts to dispatch with Mr. Kodama’s testimony on motivation
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`to combine and expectation of success by suggesting that simulating the look and feel of a
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`conventional cigarette is irrelevant. Dkt. 1380 at 9-10. To argue that the goal of resembling a
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`conventional cigarette is irrelevant to designing an e-cigarette does not pass muster. See Dkt.
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`1380-5 at 8:27-30. In any event, PMP cannot ignore the evidence, on which a reasonable jury
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`could reach only the conclusion that a POSA possessed motivation to combine and expectation of
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`success. Indeed, PMP’s argument stands at odds with its argument that the look and feel of a
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`conventional cigarette is the only defining feature of the ’265 patent claim’s dimensions. See supra
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`Part I.B. Reynolds is entitled to judgment or a new trial on invalidity of the ’911 patent.
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`B.
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`PMP Failed To Prove Solo G2 Infringes the ’911 Patent.
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`1.
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`The Solo G2 does not contain a “blind hole.”
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`As Reynolds explained in its brief, the ’911 patent nowhere says that a toroidal shape is a
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`blind hole and instead distinguishes between those two shapes in every instance. Though PMP
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`nominally cites the ’911 patent, its assertions regarding the patent are not true. First, PMP asserts
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`the patent “teaches that purported annular grooves are blind holes because they are cavities that
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`‘do not extend to the outside of the aerosol-generating system.’” Dkt. 1387 at 10-11 (citing ’911
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`Patent at 10:50-52, 12:22-24). But what the patent says at the cited excerpts is: “The cavity 305
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`is a blind hole. That is to say, the cavity 305 does not extend to the outside of the aerosol generating
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`system”; “[T]he cavity 505 is a blind cavity. That is to say, the cavity 505 does not extend to the
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`outside of the aerosol generating system.” Dkt. 1380-5 at 10:50-52, 12:22-24. Cavity 305,
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`identified as a blind hole, is not a toroid. Cavity 505, identified as a blind cavity (not a blind hole),
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`is what PMP identifies as a toroid. So that language does not teach that a toroid is a blind hole; it
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`teaches the opposite. See Dkt. 1380-1 at 269:23-270:2 (“Q. And the patent specification refers to
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`505 as a blind cavity, right? [Dr. Abraham] It does. Q. It doesn’t refer to 505 as a blind hole,
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`-7-
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`right? A. That’s correct.”). PMP’s cite to claim 13 is similarly disingenuous. PMP says “claim
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`13 expressly recites a cavity that is a ‘blind hole’ with a ‘toroidal shape.’” Dkt. 1387 at 11. Again,
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`claim 13 speaks for itself, and the term “blind hole” appears nowhere. Dkt. 1380-5 at 19:1-4.
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`Having found no support in the patent itself, PMP again relies primarily on the prosecution
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`history statement in which an Examiner referred to “the blind hole being toroid of Figures 5 and
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`6,” but PMP fails to acknowledge Dr. Abraham’s concession that the patent itself does not support
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`the Examiner’s one-off statement. See Dkt. 1380 at 12 (quoting Dkt. 1380-1 at 191:19-20).
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`Further, the evidence is that Figures 5 and 6, to which the Examiner referred, are not covered by
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`the issued claims because PMP narrowed the patent language. As introduced at trial, that is not a
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`question of disclaimer (which is a separate legal question for the Court), but rather a question of
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`infringement. Mr. Kodama properly relied on the prosecution history to support his opinion as to
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`the plain and ordinary meaning of “blind hole.” Indeed, PMP has elsewhere acknowledged the
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`relevance of prosecution history to a term’s plain and ordinary meaning. See Dkt. 1376 at 3-4.
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`Ultimately, PMP chose to limit its patent claims to both require that at least one cavity is a
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`blind hole, and distinguish between a blind hole and a blind cavity that is toroid. PMP is bound
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`by the claims it submitted, and, under those claims, the Solo G2’s cavity is not a blind hole. As
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`such, no reasonable jury could find that the Solo G2 infringes claims 1, 11, or 13.
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`2.
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`The Solo G2 cavity does not meet the required dimensions.
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`It is telling that in arguing that Mr. Kodama’s measurement “contradicts the ’911 Patent,”
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`PMP does not actually cite the patent. That is because the plain language of the patent resolves
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`the issue in Reynolds’s favor. Claim 1 requires that “the at least one cavity has a largest cross-
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`sectional dimension x taken along a cross-section of the cavity in a direction perpendicular to the
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`longitudinal direction of the cavity, where x is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.”
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`Dkt. 1380-5 at 18:26-30. That is the only guidance in the patent, and PMP’s expert failed to apply
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`-8-
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`it when he measured a cross-section that is not the “largest cross-sectional dimension.” PMP can
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`identify no patent language supporting its argument that a diameter is an improper measurement
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`under the patent. Nor can PMP rely on the patent specification embodiments to change the plain
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`language of the patent claims. Am. Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1444 (Fed.
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`Cir. 1997) (“Claims, not the specification embodiments, define the scope of the protection.”). In
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`place of actual evidence, PMP repeats its argument that the cross-sectional dimension must be
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`measured from one wall to another. As Reynolds has elsewhere explained, that argument finds no
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`support in the ’911 patent. See Dkt. 1386 at 9-12. Moreover, the diameter taken by Mr. Kodama
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`is a measurement from one wall to another. The difference between the experts’ wall-to-wall
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`measurements is that only Mr. Kodama measured the largest dimension, as claim 1 requires.
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`Finally, PMP’s allegation of waiver does not change the plain language of the ’911 patent
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`or the meaning of “largest.” First, Reynolds did not introduce the possibility of measuring the
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`Solo annular groove by adding the two line segments of the annulus; rather, PMP itself introduced
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`that alternative measurement through Dr. Abraham. See Dkt.1380-1 at 208:11-209:11; Ex. 8,
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`Abraham Slide 39. Second, prosecution history estoppel is a legal question. See Eli Lilly & Co.
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`v. Hospira, Inc., 933 F.3d 1320, 1330 (Fed. Cir. 2019). So Reynolds’s argument that the
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`prosecution history supports Mr. Kodama’s method of measuring the largest cross-sectional
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`dimension as a matter of law could not have been waived by a failure to present evidence at trial,
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`and was preserved via summary judgment briefing. See Dkt. 686 at 23-24; Dkt. 748 at 14-16.
`
`III. THE COURT SHOULD GRANT A NEW TRIAL DUE TO PMP’S PATTERN OF
`PREJUDICIAL QUESTIONS AND REMARKS.
`
`In light of the serious holes in PMP’s evidence described above, PMP’s pattern of
`
`prejudicial statements and remarks incurably tainted the verdict, and the Court should grant a new
`
`trial. Even now, despite the Court’s post-verdict observations, PMP expresses no remorse for its
`
`
`
`
`
`-9-
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`
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 13 of 15 PageID# 34727
`
`
`repeated “unfair and inappropriate” references to the fact that certain of Reynolds’s suppliers are
`
`located in China, Dkt. 1380-1 at 1083:18-21, and indeed claims it did nothing wrong because
`
`Reynolds purportedly “opened the door” to such animus by presenting the innovation story for its
`
`products, Dkt. 1387 at 14. PMP similarly argues (id. at 15) that it was entitled to flout 35 U.S.C.
`
`§ 298 and the Court’s Order on Reynolds’s MIL 6 by asking Dr. Figlar about advice of counsel as
`
`the clincher of its cross-examination. PMP’s post-hoc rationalizations fail to justify its actions.
`
`Reynolds’s question about a “policy on respecting patents” did not open the door to this leading
`
`question (which by its nature suggested to the jury its answer); nor did the elimination of
`
`willfulness from the case extinguish the prejudice. Lastly, PMP defends its emphasis on
`
`Reynolds’s choice not to call a damages expert as a “reasonable inference[]” from a snippet of
`
`deposition testimony (id. at 14), but PMP’s spotlight insinuated to the jury that Reynolds, not PMP,
`
`bore the burden to prove damages, contrary to the Court’s jury charge and the rule that a defendant
`
`is “not required to produce a witness to rebut [the patentee’s] damages theory,” Enplas Display
`
`Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 411 n.1 (Fed. Cir. 2018).5 PMP’s
`
`comparison to Reynolds’s theme that PMP had failed to present “inventors and witnesses who
`
`understood e-cigarettes” (Dkt. 1387 at 13 n.9) is inapt because that theme presented no risk of
`
`burden-shifting. Taken together, PMP’s questions and remarks were neither “cursory” nor
`
`“passing” (id.at 14)—they create a reasonable probability of improper influence on the verdict.
`
`CONCLUSION
`
`Reynolds respectfully requests that this Honorable Court grant its motion for judgment as
`
`a matter of law, or alternatively for a new trial.
`
`
`
`
`
`5 “[S]ubstantial or repeated” prejudicial conduct creates a “lose-lose situation,” so “a new trial is
`warranted even if opposing counsel does not object to every single violation.” Waddington N.
`Am., Inc. v. Sabert Corp., No. 09-4883, 2011 WL 3444150, at *5 (D.N.J. Aug. 5, 2011).
`
`-10-
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`
`
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 14 of 15 PageID# 34728
`
`Dated: July 19, 2022
`
`Respectfully submitted,
`
`Stephanie E. Parker
`Jason T. Burnette
`JONES DAY
`1221 Peachtree Street, N.E.
`Suite 400
`Atlanta, GA 30361
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@jonesday.com
`Email: jtburnette@jonesday.com
`
`Anthony M. Insogna
`JONES DAY
`4655 Executive Drive
`Suite 1500
`San Diego, CA 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Email: aminsogna@jonesday.com
`
`William E. Devitt
`JONES DAY
`110 North Wacker Drive
`Suite 4800
`Chicago, IL 60606
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@jonesday.com
`
`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
`
`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: (212) 326-3939
`Facsimile: (212) 755-7306
`Email: jjnormile@jonesday.com
`
`Alexis A. Smith
`JONES DAY
`555 South Flower Street
`Fiftieth Floor
`Los Angeles, CA 90071
`Telephone: (213) 243-2653
`Facsimile: (213) 243-2539
`Email: asmith@jonesday.com
`
`Charles B. Molster
`THE LAW OFFICES OF
`CHARLES B. MOLSTER, III PLLC
`2141 Wisconsin Avenue, N.W. Suite M
`Washington, DC 20007
`Telephone: (202) 787-1312
`Email: cmolster@molsterlaw.com
`
`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
`
`

`

`Case 1:20-cv-00393-LMB-TCB Document 1393 Filed 07/19/22 Page 15 of 15 PageID# 34729
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 19th day of July, 2022, a true and correct copy of the foregoing
`
`was served using the Court’s CM/ECF system, with electronic notification of such filing to all
`
`counsel of record.
`
`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`
`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
`
`