Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 1 of 5 PageID# 37064
`Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 1 of 5 PagelD# 37064
`
`
`
`
`EXHIBIT 80
`EXHIBIT 80
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 2 of 5 PageID# 37065
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Lexi,
`
`Sandford, Brett (Bay Area)
`Friday, September 9, 2022 3:54 PM
`Smith, Alexis Adian; RJREDVA; cmolster@molsterlaw.com
`#C-M PMIEDVA - LW TEAM
`RE: PMP v. RJR - Depositions
`
`Your assertions are incorrect and neither resolve the issues nor cure the prejudice to Philip Morris. First, you concede Mr. Ferris
`was not disclosed at any point in this case. Second, you concede that Dr. Sullivan relies on a document that was not produced
`before Reynolds filed its opposition and, even then, a native version was not served until five days after Reynolds filed its
`opposition (after Philip Morris requested it). Further, the metadata in the spreadsheet you provided appears to have been
`wiped and thus contains no data regarding the author, the date created, or the person who last modified the document. The
`suspect circumstances surrounding this spreadsheet, coupled with your refusal to make any declarants available for deposition,
`compounds the prejudice to Philip Morris. It is improper for Reynolds to inject a new witness and document into the case at this
`stage, particularly given our prior agreement that the parties would not rely on internal documents that were not previously
`produced. Philip Morris upheld that agreement and has played by the rules; Reynolds has not.
`
`Your claim that there was no prior agreement that the parties would not rely on previously unproduced internal documents is
`wrong. As you should recall, after Reynolds insisted that Philip Morris make clear it would not rely on any such documents for
`the injunctive relief/ongoing royalty briefing, we had a meet and confer on June 28, 2022 to discuss the issue. See 6/27/22 Email
`from Smith (“If PMP is now saying that it intends to rely on wholly new facts that have never been made available to Reynolds to
`support PMP’s motion, Reynolds does not agree to any proposal that would limit Reynolds’s right to full and appropriate fact
`discovery.”). During that meet and confer, I confirmed to you, Mr. Molster, and Mr. Burnette that Philip Morris would not rely
`on such documents. I reiterated this in my June 28th email. See 6/28/22 Email from Sandford (“In response to your question,
`we agree neither party will rely on internal company documents not produced in this case as part of the injunctive relief
`briefing.”). The June 28, 2022 email that you cite below does not suggest that the parties did not reach agreement. It merely
`states: “We reserve all rights with respect to responsive evidence, including the right to seek additional fact discovery, if
`appropriate.” If Reynolds believed it was “reserving” some right to rely on unproduced documents (while holding Philip Morris
`to its representation not to do so—which we upheld), Reynolds should have sought leave from the Court to rely on this new
`evidence. Reynolds did not. Instead, you (falsely) told the Court in your opposition to our motion to lift the stay that Philip
`Morris “indicated that it may rely on facts Reynolds has never seen before, such as facts that are not yet public, but may become
`public at some future date, presumably of PMP’s own choosing.” Dkt. 1385 at 3 (emphasis original). Suffice to say, Reynolds’
`after-the-fact attempt to unwind the parties’ good-faith negotiations is disappointing.
`
`Given that you refuse to withdraw any reliance on this newly-produced “evidence” (and have not made any of the declarants, or
`Mr. Ferris, available for deposition), we understand that the parties are at an impasse on these issues and will seek appropriate
`relief from the Court.
`
`Regards,
`
`Brett M. Sandford
`LATHAM & WATKINS LLP
`505 Montgomery Street | Suite 2000 | San Francisco, CA 94111-6538
`D: +1.415.395.8150
`
`From: Smith, Alexis Adian <asmith@jonesday.com>
`Sent: Wednesday, September 7, 2022 11:47 AM
`
`1
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 3 of 5 PageID# 37066
`
`To: Sandford, Brett (Bay Area) <Brett.Sandford@lw.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C-M PMIEDVA - LW TEAM <pmiedva.lwteam@lw.com>
`Subject: RE: PMP v. RJR - Depositions
`
`Brett,
`
`First, without addressing the inaccuracies in your response below, we understand from your email that depositions are not in
`dispute.
`
`
`Second, with respect to the information provided by Mr. Ferris, that information was obtained in direct response to new
`theories and arguments raised for the first time by PMP in its opening brief and the declaration of Mr. Meyer. As you know, Mr.
`Meyer previously opined and testified at trial that the royalty rate the parties would agree to for the ’265 patent would be set by
`looking to the “spot on” comparable Fontem-Reynolds license. In PMP’s motion, however, Mr. Meyer took an entirely new
`approach, deriving a royalty rate based on his assessment of the operating profit margin of Alto cartridge sales from January
`through June 2022. In its Opposition, Reynolds appropriately responded to this brand new theory. Finally, your suggestion that
`the parties had an agreement that would have prohibited Reynolds from fully responding to PMP’s new theories in its
`Opposition, is incorrect. Reynolds made no such agreement. See email from A. Smith to Sandford on 6/28/2022.
`
`
`We trust this resolves the issues.
`
`Regards,
`Lexi
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Brett.Sandford@lw.com <Brett.Sandford@lw.com>
`Sent: Tuesday, September 6, 2022 2:21 PM
`To: Smith, Alexis Adian <asmith@jonesday.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: RE: PMP v. RJR - Depositions
`
`** External mail **
`
`Lexi,
`
`
`We never stated that “further fact discovery … is required,” as you state. We simply asked if Reynolds would make its declarants
`available for deposition at a reasonable time before our reply brief is due (not “over the holiday weekend,” as you state). That is
`consistent with our prior positions. See, e.g., Dkt. 1389 at 2 n.2 (“Philip Morris will follow the Court’s guidance on whether to
`include declarations. But the parties should be permitted to depose any declarants before filing response/reply briefs.”). We
`understand from your email that you will not make the declarants available for deposition.
`
`
`Separately, Dr. Sullivan relies extensively on information from hearsay discussions (occurring, according to Dr. Sullivan, on
`August 18 and 25, 2022) with RAI Services employee Robert Ferris in his declaration. See, e.g., Dkt. 1421-3 (Sullivan Decl.) ¶¶ 9,
`20-25. Reynolds never disclosed Mr. Ferris at any point in this case before serving Dr. Sullivan’s declaration on September 2,
`2022. And Dr. Sullivan relies on two internal Reynolds documents “provided by Robert Ferris,” which were not produced in this
`case. See id. at Attachments A-6, A-7. Reynolds’ reliance on documents that were never produced and information from a
`
`2
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 4 of 5 PageID# 37067
`
`witness that was never disclosed is improper, violates party agreement (see 6/28/22 Sandford email), and prejudices Philip
`Morris. Please confirm by 5 pm ET tomorrow that you will withdraw any reliance on the aforementioned documents and
`paragraphs of Dr. Sullivan’s declaration. If you refuse, we intend to seek relief from the Court.
`
`
`Regards,
`
`Brett M. Sandford
`
`
`LATHAM & WATKINS LLP
`505 Montgomery Street | Suite 2000 | San Francisco, CA 94111-6538
`D: +1.415.395.8150
`
`
`From: Smith, Alexis Adian <asmith@jonesday.com>
`Sent: Saturday, September 3, 2022 1:24 PM
`To: Sandford, Brett (Bay Area) <Brett.Sandford@lw.com>; RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: #C-M PMIEDVA - LW TEAM <pmiedva.lwteam@lw.com>
`Subject: RE: PMP v. RJR - Depositions
`
`Brett:
`
`In light of Judge Brinkema’s instruction that the Court does not hear evidence for injunction motions, as well as PMP’s repeated
`statements that no further depositions relating to injunction/ongoing royalty should be allowed, we were surprised to receive
`your email on the day our response brief was due. You now assert for the first time that further fact discovery on
`injunction/ongoing royalty issues is required, and that RJRV must make its declarants available for deposition, and on an
`accelerated basis over the holiday weekend. Presentation of fact and/or expert declarations was contemplated by the parties
`and the Court when the briefing schedule was set. PMP offered three such declarations as part of its own briefing. RJRV abided
`by this structure, including PMP’s representations that no additional discovery was permitted, and by the Court’s briefing
`schedule. We trust that PMP will do the same, and that this resolves the issue.
`
`Regards,
`Lexi
`
`Alexis Smith (Lexi) (bio)
`Partner
`JONES DAY® - One Firm WorldwideSM
`555 South Flower Street, Fiftieth Floor
`Los Angeles, CA 90071
`Office +1.213.243.2653
`asmith@jonesday.com
`
`From: Brett.Sandford@lw.com <Brett.Sandford@lw.com>
`Sent: Friday, September 2, 2022 9:03 AM
`To: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: PMP v. RJR - Depositions
`
`** External mail **
`
`Counsel,
`
`
`To the extent Reynolds intends to submit fact or expert declarations in support of its opposition to Philip Morris’ motion for a
`permanent injunction or, alternatively, an ongoing royalty, Philip Morris reserves the right to depose any declarant. While Philip
`Morris will decide whether to proceed with any depositions after reviewing Reynolds’ opposition brief and any supporting
`3
`
`

`

`Case 1:20-cv-00393-LMB-WEF Document 1425-24 Filed 09/09/22 Page 5 of 5 PageID# 37068
`
`declarations, we write in advance to ensure that any declarant(s) are made available for deposition sufficiently in advance of the
`September 9 reply brief filing deadline. In view of that date, which is only a week after Reynolds will file its opposition brief and
`supporting declarations, please confirm that Reynolds will make any declarant available for deposition on September 5 or 6, so
`that Philip Morris has adequate time to review and incorporate the deposition testimony in its reply brief. If Reynolds refuses,
`we reserve the right to seek appropriate relief from the Court, including moving for an extension of the reply brief filing date or
`leave to file a supplemental reply brief to incorporate any deposition testimony.
`
`
`Regards,
`
`Brett M. Sandford
`
`
`LATHAM & WATKINS LLP
`505 Montgomery Street | Suite 2000 | San Francisco, CA 94111-6538
`D: +1.415.395.8150
`
`
`_________________________________
`
`This email may contain material that is confidential, privileged and/or attorney work product for the sole use of the intended
`recipient. Any review, disclosure, reliance or distribution by others or forwarding without express permission is strictly
`prohibited. If you are not the intended recipient, please contact the sender and delete all copies including any attachments.
`
`Latham & Watkins LLP or any of its affiliates may monitor electronic communications sent or received by our networks in order
`to protect our business and verify compliance with our policies and relevant legal requirements. Any personal information
`contained or referred to within this electronic communication will be processed in accordance with the firm's privacy notices
`and Global Privacy Standards available at www.lw.com.
`***This e-mail (including any attachments) may contain information that is private, confidential, or protected by
`attorney-client or other privilege. If you received this e-mail in error, please delete it from your system without copying
`it and notify sender by reply e-mail, so that our records can be corrected.***
`***This e-mail (including any attachments) may contain information that is private, confidential, or protected by
`attorney-client or other privilege. If you received this e-mail in error, please delete it from your system without copying
`it and notify sender by reply e-mail, so that our records can be corrected.***
`
`4
`
`