Case 1:20-cv-00393-LMB-WEF Document 1469-4 Filed 04/05/23 Page 1 of 11 PageID# 41152
`Case 1:20-cv-00393-LMB-WEF Document 1469-4 Filed 04/05/23 Page 1 of 11 PagelD# 41152
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`EXHIBIT 66
`EXHIBIT 66
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`Case 1:20-cv-00393-LMB-WEF Document 1469-4 Filed 04/05/23 Page 2 of 11 PageID# 41153
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`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and Counterclaim Defendants,
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`v.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
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`Defendants and Counterclaim Plaintiffs.
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`
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`
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`Case No. 1:20cv00393-LO-TCB
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`RAI STRATEGIC HOLDINGS, INC. AND R.J. REYNOLDS VAPOR COMPANY’S
`SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO ALTRIA CLIENT
`SERVICES LLC, PHILIP MORRIS USA, INC., AND PHILIP MORRIS PRODUCTS
`S.A.’S EIGHTH SET OF INTERROGATORIES (NO. 30)
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`Pursuant to Federal Rules of Civil Procedure 26 and 33, RAI Strategic Holdings, Inc. and
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`R.J. Reynolds Vapor Company (collectively, “Reynolds”) hereby supplements its response to
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`Altria Client Services LLC, Philip Morris USA, Inc., and Philip Morris Products S.A.’s
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`(collectively, “Defendants” or “Counterclaim Plaintiffs”) Eighth Set of Interrogatories (No. 30) as
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`follows.
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`PRELIMINARY STATEMENT AND OBJECTIONS TO DEFINITIONS AND
`INSTRUCTIONS
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`Reynolds incorporates and reiterates its preliminary statement and objections to the
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`Definitions and Instructions.
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`INTERROGATORY NO. 30:
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`INTERROGATORIES
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`To the extent you contend that PMP is not entitled to permanent injunctive relief, describe
`in detail the complete factual and legal basis for Your contention, including but not limited to any
`contention (i) that PMP has not suffered irreparable injury, (ii) that remedies available at law, such
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`

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`as monetary damages, are adequate to compensate for that injury, (iii) that considering the balance
`of hardships between You and PMP, a remedy in equity is unwarranted, and (iv) that the public
`interest would be disserved by a permanent injunction, and identify the three (3) individuals most
`knowledgeable of the foregoing subjects, as well as all Documents and things on which You intend
`to rely to support Your contention.
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`OBJECTIONS:
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`Reynolds objects to this interrogatory to the extent it seeks information protected by the
`attorney-client privilege, the attorney work product doctrine, the common interest privilege, or any
`other applicable privilege or immunity. Reynolds objects to this interrogatory as overly broad,
`unduly burdensome, and seeking information that is not relevant to any claim or defense in this
`case to the extent it seeks information relating to Defendants’/Counterclaim Plaintiffs’ overly
`broad definition of the terms “You” and “Your.” For instance, this interrogatory seeks information
`regarding entities on whose behalf Reynolds lacks the authority and information to respond and
`regarding entities that have no involvement or relevance to any claims or defenses in this action.
`Reynolds objects to this interrogatory as overly broad, unduly burdensome, and seeking
`information that is not relevant to any claim or defense in this case to the extent it seeks “all”
`factual and legal bases for Reynolds’s contention that PMP is not entitled to permanent injunctive
`relief. Reynolds objects to this interrogatory because it is composed of multiple discrete subparts
`under Fed. R. Civ. P. 33, which, when counted with other interrogatories served by
`Defendants/Counterclaim Plaintiffs that also contain multiple subparts, exceeds the number of
`interrogatories permitted by the Rule 16(b) Scheduling Order and the parties’ Joint Discovery Plan.
`See Dkt. Nos. 97, 99. Reynolds objects to this interrogatory to the extent it seeks information that
`is not in Reynolds’s possession and/or information that is dependent upon discovery from
`Defendants and third parties.
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`RESPONSE:
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`Subject to and without waiving its objections, Reynolds responds as follows:
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`Reynolds contends that no injunctive relief should be awarded with respect to any alleged
`infringement of the PMP asserted patents because the PMP asserted patents are not infringed
`directly, indirectly, literally, or under the doctrine of equivalents as described in Reynolds’s
`responses to Defendants’ Interrogatory No. 1 and in the rebuttal expert reports of Kelly R. Kodama
`and Jeffrey C. Suhling served March 24, 2021. Moreover, the claims of the PMP asserted patents
`are invalid under one or more sections of the Patent Act, for the reasons described in Reynolds’s
`responses to Defendants’ Interrogatory No. 2 and in the expert invalidity reports of Kelly R.
`Kodama and Jeffrey C. Suhling served February 24, 2021. Injunctive relief can only be awarded
`upon a finding of infringement, and there can be no infringement of an invalid patent. See, e.g.,
`Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1323 (Fed. Cir. 2001).
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`Reynolds maintains that PMP must set forth a theory and basis for its requested injunctive
`relief and explain in detail why PMP allegedly is entitled to such relief. When PMP does so,
`Reynolds will respond. Reynolds further states that it is premature to identify the three persons
`most knowledgeable about its contention that PMP is not entitled to injunctive relief because
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`2
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`Reynolds will be formulating those theories in response to PMP’s theory and basis for requesting
`injunctive relief.
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`Preliminarily, however, Reynolds identifies PMP’s request for “[a]n award of damages
`adequate to compensate PMP for the infringement that has occurred, pursuant to 35 U.S.C. § 284,
`including prejudgment and post-judgment interest” and other money damages in its prayer for
`relief in its second amended counterclaims, as well as the Opening Expert Report of Paul K. Meyer,
`as evidence, should PMP prevail on liability, that PMP has not suffered irreparable injury and that
`remedies available at law, such as monetary damages, are adequate to compensate PMP for any
`alleged injury. Reynolds will supplement its response to this interrogatory as discovery on PMP’s
`request for injunctive relief progresses and to the extent that PMP provides its contentions with
`respect to why it claims to be entitled to injunctive relief for alleged infringement by any Reynolds
`accused product of any asserted claim of the PMP asserted patents in response to Reynolds’s
`Interrogatory Nos. 23-24 and/or in an expert report.
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`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 30 (Apr. 30, 2021):
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`
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`Subject to and without waiving its objections, Reynolds supplements its response as
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`follows:
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`I.
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`PMP’s Irreparable Harm Theory Relies Exclusively On The Alleged Impact That
`The Reynolds Accused Products Have On Sales Of IQOS Products, Which Theory
`Will Disappear If And When The Infringing IQOS Products Are Excluded From
`The US Market.
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`PMP rests its new claim of irreparable harm on the notion that sales of the VUSE Solo,
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`Vibe, Ciro, and Alto (collectively, the “Reynolds Accused Products”) are somehow impeding the
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`success of, and taking sales away from, the IQOS products. (PMP Resp. to 6th Set of
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`Interrogatories (Nos. 23-24), at 6-7 (April 9, 2021) [hereinafter “PMP Resp.”].) As discussed in
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`Part II below, this theory is groundless as a matter of fact, since—according to PMP’s own market
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`research and experts before the U.S. International Trade Commission (“ITC”)—the abject failure
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`of the IQOS products in the marketplace (and particularly in the United States) has absolutely no
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`relation to the Reynolds Accused Products. Before turning to those facts, however, it is important
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`to note that PMP’s entire theory of irreparable harm, and thus its entire claim for injunctive relief,
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`will evaporate should Reynolds prevail in parallel proceedings before the ITC, which will be
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`decided this year.
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`On April 9, 2020, Reynolds and its affiliates filed a complaint in the ITC against
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`Defendants and their affiliates, accusing certain IQOS products of infringing Reynolds’s U.S.
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`Patent Nos. 9,901,123 (the “Robinson ’123 patent”); 9,839,238 (the “Worm ’238 patent); and
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`9,930,915 (the “Worm ’915 patent”). See Certain Tobacco Heating Articles and Components
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`Thereof, Inv. No. 337-TA-1199, Notice of Institution of Investigation (U.S.I.T.C. May, 11, 2020)
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`(the “ITC Investigation”).
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`In the ITC Investigation, Reynolds seeks, and upon prevailing will obtain, both an
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`exclusion order prohibiting importation of IQOS into the United States, and a cease-and-desist
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`order prohibiting sale of already-imported IQOS products. That outcome would close the U.S.
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`market to IQOS, and would be fatal to PMP’s injunctive contentions, which are tied to the IQOS
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`products that PMP says are “[t]he cornerstone of the [PMP’s] [smoke-free] transformation.” (PMP
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`Resp. at 7.) And, because ITC exclusion and cease-and-desist orders issue pursuant to statute, see
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`19 U.S.C. § 1337, PMP cannot avoid the exclusion order using the eBay equitable arguments that
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`it is advancing here.1
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`If the ITC excludes IQOS from the U.S. market, then it will be Defendants’ own infringing
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`acts that are “hindering U.S. IQOS adoption, triggering loss of R&D, loss of market share, loss of
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`business opportunities, and loss of profits and future sales” and that would “undermine and dilute
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`the branding, goodwill, and reputation of [PMP], its smoke-free transformation efforts, and its
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`past, present, and future non-combustible product offerings in the Unites States.” (PMP Resp. at
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`6.) If the IQOS products are barred from the U.S. market as a result of Defendants’ infringement
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`of Reynolds’s patents, as they should be, then there can be no claim that the Reynolds Accused
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`Products have caused any harm at all to PMP.
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`1 eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391-92 (2006).
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`The hearing for the ITC Investigation was held on January 25-February 1, 2021. The initial
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`determination is due May 14, 2021, and the target date for the completion of the ITC Investigation
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`is September 15, 2021. Thus, the IQOS products may (and should) be excluded from the U.S.
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`market before the parties reach trial in this case, thereby mooting PMP’s request for injunctive
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`relief.
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`II.
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`Even Setting Aside The Likelihood That The ITC Will Exclude The IQOS Products
`From The US Market, PMP Cannot Meet Its Burden To Show That It Suffered Any
`Irreparable Harm Attributable To The Alleged Infringement Of The ’911, ’265, or
`’556 Patents, And That Cannot Be Remedied By Money Damages.
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`In its response to Interrogatory No. 23, PMP suggests that infringement of the ’911, ’265,
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`and ’556 patents by the Reynolds Accused Products has caused PMP irreparable harm, and
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`specifically that the Reynolds Accused Products “have detracted, are detracting, and will continue
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`to detract from the [PMP] smoke-free ecosystem by hindering U.S. IQOS adoption, triggering loss
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`of R&D, loss of market share, loss of business opportunities, and loss of profits and future sales.
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`Such harms also undermine and dilute the branding, goodwill, and reputation of [PMP], its smoke-
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`free transformation efforts, and its past, present, and future non-combustible product offerings in
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`the United States.” (PMP Resp. at 6.) This response lacks the evidentiary support that would be
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`required for PMP to carry the high burden under eBay necessary to justify PMP’s request to
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`permanently enjoin the Reynolds Accused Products from the market.
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`A.
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`PMP Improperly Relies On Alleged Harms Suffered By Other, Unrelated
`Entities As A Proxy Because It Cannot Establish Irreparable Harm To Itself.
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`First, the speculative parade of horrible outcomes offered by PMP focuses on the alleged
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`harm to the Philip Morris International enterprise as a whole and to PMP’s unrelated U.S.
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`distributor. For purposes of the request for injunctive relief, however, that is not appropriate. The
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`patent owner must establish that it has suffered irreparable harm. See, e.g., Voda v. Cordis Corp.,
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`536 F.3d 1311, 1329 (Fed. Cir. 2008); Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 809 F.
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`App’x 965, 976 (Fed. Cir. 2020); see also, e.g., ActiveVideo Networks, Inc. v. Verizon Commc’ns,
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`Inc., 694 F.3d 1312, 1338–39 (Fed. Cir. 2012); Humanscale Corp. v. CompX Int’l Inc., No. 3:09-
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`CV-86, 2010 WL 1779963, at *3 (E.D. Va. Apr. 29, 2010). Harm to other entities, including
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`licensees or corporate affiliates, is irrelevant. See, e.g., Voda v. Cordis Corp., 536 F.3d at 1329;
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d at 1338-39.
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`Here, for example, PMP is the owner of the asserted ’911, ’265, and ’556 patents and IQOS
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`technology,
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`.
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` (See
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`PMP_EDVA00001413 at 420.)
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`Indeed, the IQOS products sold by PM USA in the U.S. do not even practice any of the
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`’911, ’265, and ’556 patents at issue here (
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`). The
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`sole use that PMP makes of these patents is its attempt to assert them against Reynolds, first to
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`seek a royalty, and most recently to seek exclusion of the important VUSE product line from the
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`U.S. market.
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`Consistent with its backseat role,
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`. (See PMP’s 8th Suppl. Resp. to ITC
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`Interrogatory Nos. 1-19, at 3 (Sept. 25, 2020) [hereinafter “PMP ITC Resp.”].)
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` (See id. at 3, 27.) Instead, according to PMP,
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` (See id. at 18, 27.)
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`. (See id.)
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`. (See id. at 20.)
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` (See id. at 27.)
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`In other words,
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`II.E below,
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`. As discussed further in Section
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`. (See, e.g.,
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`PMP_EDVA00001413-39; PMP_EDVA00001373-412; PMP_ITC08717802-20; PMP ITC Resp.
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`at 27; PM USA’s 8th Suppl. Resp. to ITC Interrogatory Nos. 1-19, at 17-41 (Sept. 25, 2020)
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`[hereinafter “PM USA ITC Resp.”]; see also, e.g., Manson Tr. at 25:14-26:11, 34:17-35:3, 36:25-
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`37:7, 42:4-45:2.) Thus, any alleged harms associated with
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`. (Compare,
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`e.g., PMP ITC Resp. at 114-15, with PM USA ITC Resp. at 145 (discussing corporate parents of
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`PMP and PM USA, respectively); see also Manson Tr. at 22:12-18; 85:23-86:13.) But those other
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`entities, such as PM USA, do not own the patents at issue, and have no standing to seek injunctive
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`relief associated with those patents. Thus, any supposed injuries that might be suffered by PM
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`USA or other entities that (unlike PMP) are actually involved in the marketing and sale of IQOS
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`Case 1:20-cv-00393-LMB-WEF Document 1469-4 Filed 04/05/23 Page 9 of 11 PageID# 41160
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`products in the United States, have no bearing on whether PMP should be granted an injunction
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`here. See, e.g., Voda v. Cordis Corp., 536 F.3d at 1329; ActiveVideo Networks, Inc. v. Verizon
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`Commc’ns, Inc., 694 F.3d at 1338–39.
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`Furthermore, as explained in greater detail in Section III.A below,
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`Outside of these
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`limited markets, not even PM USA could claim any harm of lost IQOS
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`sales, let alone PMP, which is at least two steps removed.
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`Finally, to the extent that PMP has claimed harm to the “branding, goodwill, and reputation
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`of [PMP],” it does not and cannot assert any nexus between any conduct by Reynolds and that
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`alleged harm to PMP, which does not even
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` that it alleges is
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`hindered by Reynolds alleged infringement of patents that are not practiced by IQOS.
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`B.
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`PMP’s Own Actions Belie Any Claim Of Irreparable Harm.
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`Moreover, PMP’s own actions—or rather inaction—belie any claim that it has suffered
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`irreparable harm, or that the requested permanent injunctive relief is warranted here. PMP has had
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`a right to enforce at least two of the asserted patents for years. Its ’911 patent issued in October
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`2018. PMP alleges that all four VUSE products infringe that patent, yet it waited until June 29,
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`2020 to assert that patent. Similarly, PMP could have asserted its ’265 patent against the Alto
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`product since that product was introduced in August 2018, but again waited until June 29, 2020.
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`And PMP could have asserted the ’556 patent against the Vibe product as soon as it issued in
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`February 2020. PMP did not assert any of these patents until after Reynolds accused the IQOS
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`product of infringement. Clearly, PMP was not actually suffering significant irreparable harm, but
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`instead was looking for a counterweight to try to settle the very serious claims of infringement
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`brought against it by Reynolds and that should result in exclusion of the IQOS product from the
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`U.S. market. PMP’s lead counsel has admitted as much, telling the Court that Defendants want an
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`Case 1:20-cv-00393-LMB-WEF Document 1469-4 Filed 04/05/23 Page 10 of 11 PageID#
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`41161
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`Dated: April 30, 2021
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`Stephanie E. Parker
`JONES DAY
`1420 Peachtree Street, N.E.
`Suite 800
`Atlanta, GA 30309
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@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
`77 West Wacker
`Suite 3500
`Chicago, IL 60601
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@jonesday.com
`
`Sanjiv P. Laud
`JONES DAY
`90 South Seventh Street
`Suite 4950
`Minneapolis, MN 55402
`Telephone: (612) 217-8800
`Facsimile: (844) 345-3178
`Email: slaud@jonesday.com
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` Respectfully submitted,
`
`
`
`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
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`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Tel: (212) 326-3939
`Fax: (212) 755-7306
`Email: jjnormile@jonesday.com
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`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, III (VA Bar No. 23613)
`The Law Offices of Charles B. Molster III PLLC
`2141 Wisconsin Ave., N.W., Suite M
`Washington, DC 20007
`Telephone: (703) 346-1505
`Email: cmolster@molsterlaw.com
`
`Counsel for Plaintiffs RAI Strategic Holdings,
`Inc. and R.J. Reynolds Vapor Company
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`41162
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 30, 2021, the foregoing was served on counsel for
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`Defendants/Counterclaim Plaintiffs using
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`the
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`following designated
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`email
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`address:
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`pmiedva.lwteam@lw.com.
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`
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`Dated: April 30, 2021
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`
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`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
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`46
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