Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 1 of 17 PageID# 41509
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
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`PHILIP MORRIS PRODUCTS S.A.,
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`Plaintiff,
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`v.
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`
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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-WEF
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`
`R.J. REYNOLDS VAPOR COMPANY’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR ENTRY OF JUDGMENT UNDER RULE 54(b)
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 2 of 17 PageID# 41510
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ......................................................................................................................... 1
`BACKGROUND ........................................................................................................................... 2
`LEGAL STANDARD .................................................................................................................... 4
`ARGUMENT ................................................................................................................................. 6
`I.
`THE JUDGMENT AS TO PMP’S PATENTS IS FINAL .................................... 6
`II.
`THERE IS NO JUST REASON TO DELAY ENTERING FINAL
`JUDGMENT ON PMP’S PATENTS .................................................................... 7
`CONCLUSION ............................................................................................................................ 11
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`TABLE OF AUTHORITIES
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`Page
`
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`CASES
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`3D Sys., Inc. v. Envisiontec, Inc.,
`No. 05-74891, 2011 WL 4691937 (E.D. Mich. Oct. 6, 2011) .................................................10
`
`Augme Techs., Inc. v. Yahoo! Inc.,
`305 F.R.D. 112 (N.D. Cal. 2012), aff’d, 755 F.3d 1326 (Fed. Cir. 2014) .............................5, 9
`
`HTC Corp. v. IPCom GMBH & Co., KG,
`285 F.R.D. 130 (D.D.C. 2012) ...........................................................................................5, 6, 8
`
`Kearns v. Gen. Motors Corp.,
`94 F.3d 1553 (Fed. Cir. 1996)....................................................................................................8
`
`Lucent Techs. Inc. v. Gateway, Inc.,
`Nos. 02-cv-2060-B, 03-cv-0699-B, 03-cv-1108-B, 2007 WL 1306542 (S.D.
`Cal. Apr. 30, 2007) ....................................................................................................................6
`
`MCI Constructors, LLC v. City of Greensboro,
`610 F.3d 849 (4th Cir. 2010) .............................................................................................5, 6, 8
`
`McKiver v. Murphy-Brown LLC,
`No. 7:14-CV-180-BR, 2018 WL 10322924 (E.D.N.C. Aug. 31, 2018) ....................................7
`
`MercExchange, L.L.C. v. eBay, Inc.,
`660 F. Supp. 2d 653 (E.D. Va. 2007) (Friedman, J.) .................................................................6
`
`Sun Pharms. Indus. v. Eli Lilly & Co.,
`No. 07-CV-15087, 2009 WL 3497797 (E.D. Mich. Oct. 29, 2009) ..........................................6
`
`TecSec, Inc. v. IBM,
`No. 1:10-cv-115, Dkt. 1407 (E.D. Va. July 3, 2019) (O’Grady, J.) ..........................................4
`
`TecSec, Inc. v. IBM,
`No. 1:10-cv-115, Dkt. 800 (E.D. Va. May 29, 2015) (Brinkema, J.) ........................................4
`
`W.L. Gore & Assocs. Inc. v. Int’l Med. Prosthetics Rsch. Assocs., Inc.,
`975 F.2d 858 (Fed. Cir. 1992)................................................................................................5, 6
`
`WiAV Sols. LLC v. Motorola, Inc.,
`No. 3:09-cv-447, 2010 WL 883748 (E.D. Va. March 9, 2010) (Payne, J.) ...........................5, 9
`
`ii
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 4 of 17 PageID# 41512
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`STATUTES
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`28 U.S.C. §§ 1292 ............................................................................................................................1
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`28 U.S.C. § 1659 ..............................................................................................................................2
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`OTHER AUTHORITIES
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`Federal Rule of Civil Procedure 54(b) ................................................................................... passim
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`INTRODUCTION
`R.J. Reynolds Vapor Company (“RJRV”) seeks Federal Rule of Civil Procedure 54(b)
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`judgment on all claims regarding Philip Morris Products S.A.’s (“PMP’s”) asserted patents (PMP’s
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`Counterclaims I and III), which were fully resolved in the Court’s Amended Judgment on the jury
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`verdict (Dkt. 1415) and the Court’s March 30th judgment regarding equitable relief (Dkt. 1457).
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`All trial and post-trial proceedings relating to PMP’s patents are now complete and final. There is
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`no just reason to delay appeal of all issues pertaining to PMP’s patents. Indeed, such a delay would
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`be unjust to RJRV, since ongoing royalties continue to accrue and there is a risk of piecemeal
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`appeals relating to PMP’s patents—one with respect to the injunction and interrelated merits,1 and
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`a second appeal for all other issues concerning PMP’s patent claims.
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`Importantly, the requested Rule 54(b) judgment would permit all issues related to PMP’s
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`asserted patents to proceed immediately to appeal without waiting for adjudication of the claims
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`and counterclaims pertaining to the five remaining RJRV and RAI Strategic Holdings (together
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`with RJRV, “Reynolds”) asserted patents, all of which have been stayed since December 7, 2020
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`(and some of which were stayed even earlier in June 2020) in light of other pending proceedings.
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`See Dkts. 27, 432. While the Court’s March 30th Order directed that this case be closed and that
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`the order constituted a final judgment for appellate purposes (Dkt. 1456), given that other claims
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`remain pending, Reynolds respectfully submits that the March 30th judgment (Dkt. 1457) does not
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`constitute a final, appealable judgment.
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`1 The Court’s denial of PMP’s requested injunction is immediately appealable under 28
`U.S.C. §§ 1292(a)(1) and 1292(c)(1). The Federal Circuit may also consider related merits
`determinations, such as those of validity and infringement, that are intertwined with the merits of
`the injunction request. Even if PMP were to immediately appeal the denial of its injunction
`request, Rule 54(b) certification would be still be warranted to clearly ensure that all issues with
`respect to PMP’s patents could be appealed simultaneously.
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`1
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`Accordingly, RJRV respectfully moves this Court to enter a final appealable judgment as
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`to PMP’s asserted patents under Fed. R. Civ. P. 54(b). A proposed order effecting this request has
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`been filed concurrently with this motion. RJRV further requests that the designation of this case
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`be restored from “closed” to “pending.”
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`BACKGROUND
`In April 2020, Reynolds filed its Complaint alleging PMP’s heat-not-burn IQOS® devices
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`
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`infringed five Reynolds patents: U.S. Patent Nos. 9,839,238; 9,901,123; 9,930,915; 9,814,268;
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`and 10,492,542.2 See Dkt. 1. Shortly thereafter, the Court stayed proceedings for three of those
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`patents (U.S. Patent Nos. 9,839,238; 9,901,123; and 9,930,915), pursuant to 28 U.S.C. § 1659
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`because Reynolds also asserted these patents in a co-pending action against PMP in the
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`International Trade Commission (“ITC”). See Dkt. 27. Proceedings as to U.S. Patent Nos.
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`9,814,268 and 10,492,542 moved forward. See Dkt. 52.
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`
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`Meanwhile, in June 2020, PMP counterclaimed that certain of RJRV’s VUSE® products
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`infringed PMP’s U.S. Patent Nos. 9,814,265 and 10,104,911.3 See Dkt. 40; see also Dkt. 464-1
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`(PMP’s amended counterclaims).4 Reynolds moved to sever PMP’s counterclaims regarding
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`PMP’s patents and transfer them to the Middle District of North Carolina. See Dkt. 67. The Court
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`denied that motion at the time, but reserved the right to sever or bifurcate the claims relating to
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`Reynolds’s and PMP’s separate patents and separate products at a later date. See Dkt. 98 at 12.
`
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`2 Reynolds previously asserted infringement of U.S. Patent No. 8,314,591 (Dkt. 1), but
`Reynolds withdrew that claim (see Dkt. 52, omitting claims regarding that ’591 patent).
`3 PMP also alleged infringement of its U.S. Patent No. 10,555,556 (Dkt. 40), but it
`dismissed its claims with respect to that patent prior to trial. See Dkts. 1261 and 1271.
`4 Former Defendants and Counterclaim Plaintiffs Altria Client Services and Philip Morris
`USA Inc. also brought counterclaims for infringement of one patent each (see Dkt. 39), but those
`counterclaims were dismissed prior to trial. See Dkts. 1293 and 1300.
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`2
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`PMP also challenged the validity of Reynolds’s patents in inter partes review (“IPR”) and
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`post grant review (“PGR”) petitions filed with the Patent Trial and Appeal Board (“PTAB”). The
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`Court then stayed the entire case—with respect to both PMP’s asserted patents and Reynolds’s
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`asserted patents, pending a decision from the PTAB as to Reynolds’s patents challenged in PMP’s
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`IPR and PGR petitions. See Dkt. 432.5 PMP thereafter moved to lift the stay on its patents. See
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`Dkts. 446, 447, 449.
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`The Court lifted the stay only on PMP’s patents, separating those claims from Reynolds’s
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`affirmative patent claims. See Dkt. 456. PMP’s patents proceeded to a jury trial, and the jury
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`rendered its verdict resolving all remaining questions of infringement and validity of PMP’s
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`patents. Dkt. 1361. This Court entered judgment on that verdict (Dkt. 1362) and later an amended
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`judgment (Dkt. 1415). This Court also denied PMP’s requested injunction and granted PMP
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`ongoing royalties. Dkt. 1456. The Court’s March 30th order regarding those equitable issues also
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`indicated that it was a “Final Judgment in this civil action for appellate purposes” and directed that
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`the case be closed. See Dkt. 1456 at 2. The Court then entered judgment on the equitable issues
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`on March 30, 2023. Dkt. 1457.
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`There are no remaining issues with respect to PMP’s patents. Reynolds’s claims remain
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`stayed. See Dkts. 27, 432, 456. Reynolds respectfully asks that the case remain open pending
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`resolution of its affirmative claims discussed above.
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`5 There are currently pending appeals regarding PMP’s IPR and PGR proceedings
`pertaining to three of Reynolds’s asserted patents: Appeal No. 22-1846 pertaining to U.S. Patent
`No. 9,901,123 (not yet scheduled for argument); Appeal No. 22-1748 pertaining to U.S. Patent
`No. 9,930,915 (not yet scheduled for argument); and Appeal No. 22-1862 pertaining to U.S. Patent
`No. 10,492,542 (not yet scheduled for argument).
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`3
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`The table below sets forth a summary of the status of the patents at issue in this matter:
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`Patentee
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`Reynolds
`
`Reynolds
`
`Reynolds
`
`Reynolds
`
`Reynolds
`
`Philip
`Morris
`Philip
`Morris
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`
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`Patent
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`9,814,268
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`9,901,123
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`9,839,238
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`Current status
`Remains stayed pending PTAB challenges to Reynolds’s patents
`(Dkt. 432).
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`IPR proceedings found the asserted claims 16 and 17 unpatentable,
`no appeal taken.
`Remains stayed pending ITC (Dkt. 27); see also Dkt. 432 (staying
`entire case pending PTAB challenges).
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`ITC concluded the asserted claims were valid and infringed;
`Federal Circuit affirmed on appeal. IPR upholding validity is
`currently on appeal to the Federal Circuit and not yet argued.
`Remains stayed pending ITC (Dkt. 27); see also Dkt. 432 (staying
`entire case pending PTAB challenges).
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`ITC concluded the asserted claims were invalid and not infringed;
`no appeal taken.
`Remains stayed pending ITC (Dkt. 27); see also Dkt. 432 (staying
`entire case pending PTAB challenges).
`
`ITC concluded the asserted claims were valid and infringed;
`Federal Circuit affirmed on appeal. IPR found asserted claims
`unpatentable; currently on appeal to the Federal Circuit and not yet
`argued.
`Remains stayed pending PTAB challenges to Reynolds’s patents
`(Dkt. 432).
`
`PGR found all challenged claims unpatentable; currently on appeal
`to the Federal Circuit and not yet argued.
`10,104,911 All claims resolved by judgment on jury verdict (Dkt. 1415) and
`judgment on equitable relief (Dkt. 1457).
`9,814,265 All claims resolved by judgment on jury verdict (Dkt. 1415) and
`judgment on equitable relief (Dkt. 1457).
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`9,930,915
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`10,492,542
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`LEGAL STANDARD
`Rule 54(b) authorizes the Court to enter judgment with respect to less than all claims or
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`parties in an action “if the court expressly determines that there is no just reason for delay.” Fed.
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`R. Civ. P. 54(b); see TecSec, Inc. v. IBM, No. 1:10-cv-115, Dkt. 800 (E.D. Va. May 29, 2015)
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`(Brinkema, J.) (certifying Rule 54(b) judgment while staying counterclaims); see also TecSec, Inc.
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`4
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`v. IBM, No. 1:10-cv-115, Dkt. 1407 (E.D. Va. July 3, 2019) (O’Grady, J.) (certifying Rule 54(b)
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`judgment with respect to claims against one party, while claims against other parties remained
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`pending).
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`The Rule 54(b) inquiry proceeds in two steps. “First, the district court must determine
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`whether the judgment is final . . . in the sense that it is an ultimate disposition of an individual
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`claim entered in the course of a multiple claims action.” MCI Constructors, LLC v. City of
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`Greensboro, 610 F.3d 849, 855 (4th Cir. 2010).6 “Second, the district court must determine
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`whether there is no just reason for the delay in the entry of judgment.” Id. For this inquiry, courts
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`“consider such factors as whether the claims under review [are] separable from the others
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`remaining to be adjudicated and whether the nature of the claims already determined was such that
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`no appellate court would have to decide the same issues more than once.” W.L. Gore & Assocs.
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`Inc. v. Int’l Med. Prosthetics Rsch. Assocs., Inc., 975 F.2d 858, 862 (Fed. Cir. 1992) (citing Curtiss-
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`Wright Corp. v. General Elec. Co., 446 U.S. 1, 8 (1980)).
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`Accordingly, numerous district courts have certified judgment on patent claims under Rule
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`54(b) when a claim remains pending on a separate patent(s). See, e.g., Augme Techs., Inc. v.
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`Yahoo! Inc., 305 F.R.D. 112, 114-15 (N.D. Cal. 2012), aff’d, 755 F.3d 1326 (Fed. Cir. 2014)
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`(certifying judgment of noninfringement of plaintiffs’ two patents while defendant’s counterclaim
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`for patent infringement remained pending); HTC Corp. v. IPCom GMBH & Co., KG, 285 F.R.D.
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`130, 132-33 (D.D.C. 2012) (granting a Rule 54(b) certification of a noninfringement judgment as
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`to two patents even though claims for a third asserted patent remained); WiAV Sols. LLC v.
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`Motorola, Inc., No. 3:09-cv-447, 2010 WL 883748, at *2-3 (E.D. Va. March 9, 2010) (Payne, J.)
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`(granting a Rule 54(b) certification of dismissal of seven of the nine asserted patents for lack of
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`6 All internal citations or quotations are omitted unless otherwise noted.
`5
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 10 of 17 PageID# 41518
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`standing even though two asserted patents remained); Sun Pharms. Indus. v. Eli Lilly & Co., No.
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`07-CV-15087, 2009 WL 3497797, at *2-3 (E.D. Mich. Oct. 29, 2009) (granting a Rule 54(b)
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`certification of invalidity and non-infringement on one patent even though another claim of a
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`second patent remained pending); Lucent Techs. Inc. v. Gateway, Inc., Nos. 02-cv-2060-B, 03-cv-
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`0699-B, 03-cv-1108-B, 2007 WL 1306542, at *1-2 (S.D. Cal. Apr. 30, 2007) (entering a Rule
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`54(b) judgment of infringement as for two patents even though the judgment did not dispose of
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`other patents asserted in the consolidated case).
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`ARGUMENT
`The two requirements for certification under Rule 54(b) are readily met in this case because
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`the judgments as to PMP’s patents are final and there is no just reason to delay appeals pertaining
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`to those patents pending resolution of claims relating to Reynolds’s patents.
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`I. THE JUDGMENT AS TO PMP’S PATENTS IS FINAL.
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`
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`Under Rule 54(b), a judgment is “final” if it is “an ultimate disposition of an individual
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`claim entered in the course of a multiple claims action.” MCI, 610 F.3d at 855. Stated differently,
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`“a district court’s judgment is final” on a claim “where it ends the litigation on the merits and
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`leaves nothing for the court to do but execute the judgment.” W.L. Gore, 975 F.2d at 863; see also
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`HTC, 285 F.R.D. at 131-32 (explaining that the court must determine whether the “judgment to be
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`certified for appeal was ‘final,’ i.e. whether it was the ultimate disposition of an individual claim”).
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`
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`This Court’s judgments with respect to PMP’s two patents ends this litigation with respect
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`to those patents and is final. Following a jury trial, the jury returned a verdict on June 15, 2022
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`regarding infringement, validity, and damages for those two patents. See Dkt. 1361. Entering
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`judgments pursuant to jury verdicts are final judgments, requiring certification by the district court,
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`despite the existence of additional issues, such as accounting. See, e.g., MercExchange, L.L.C. v.
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`eBay, Inc., 660 F. Supp. 2d 653, 659 (E.D. Va. 2007) (Friedman, J.); Lucent, 2007 WL 1306542,
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`at *1-2 (entering a Rule 54(b) judgment of infringement following jury verdict). Thus, the Court’s
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`Amended Judgment on that verdict (see Dkt. 1415) is final. Furthermore, the Court’s judgment
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`on PMP’s requested injunction and ongoing royalties is similarly final, and it disposes of PMP’s
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`equitable claims for relief pertaining to its patents. See Dkt. No. 1457; see also Dkt. 1456
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`(indicating the intent that there be a “Final Judgment … for appellate purposes.”).
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`Accordingly, there is nothing left for the Court to do regarding PMP’s patents. Therefore,
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`Rule 54(b)’s finality requirement is “easily” satisfied. McKiver v. Murphy-Brown LLC, No. 7:14-
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`CV-180-BR, 2018 WL 10322924, at *2 (E.D.N.C. Aug. 31, 2018) (stating, because plaintiffs’
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`claims “in the first trial [have] been fully adjudicated,” that “the court is dealing with a final
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`judgment”). See also Dkt. 1456 (indicating this Court’s intention that the order be a final judgment
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`concerning PMP’s patents).
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`II. THERE IS NO JUST REASON TO DELAY ENTERING FINAL JUDGMENT ON
`PMP’S PATENTS.
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`Rule 54(b) also requires the Court determine whether there is “just reason” to delay entry
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`of final judgment, considering the following factors, if applicable:
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`(1) the relationship between the adjudicated and unadjudicated claims;
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`(2) the possibility that the need for review might or might not be mooted by future
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`developments in the district court;
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`(3) the possibility that the reviewing court might be obliged to consider the same issue a
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`second time;
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`(4) the presence or absence of a claim or counterclaim which could result in a set-off against
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`the judgment sought to be made final;
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`(5) miscellaneous factors such as delay, economic and solvency considerations, shortening
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`the time of trial, frivolity of competing claims, expense, and the like.
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`MCI, 610 F.3d at 855. Analysis of each applicable factor demonstrates there is no just reason for
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`delay.
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`Regarding the first factor, PMP’s claims regarding its U.S. Patent Nos. 9,814,265 and
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`10,104,911 are entirely separable from the claims regarding Reynolds’s stayed patents: U.S.
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`Patent Nos. 9,839,238; 9,901,123; 9,930,915; 9,814,268; and 10,492,542. To start, PMP’s claims
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`and Reynolds’s claims each involve separate and unrelated patents. As the Federal Circuit has
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`explained, “each patent establishes an independent and distinct property right,” an “independent
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`and distinct cause of action.” Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1555-56 (Fed. Cir.
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`1996) (explaining “infringement of one patent is not a ground of liability for infringement of a
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`different patent” and “infringement must be separately proved as to each patent”); see also HTC
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`Corp., 285 F.R.D. at 132 (granting a motion for certification under Rule 54(b) where the
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`adjudicated and unadjudicated patents “deal with different technologies, the infringement evidence
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`for each is unique, and [the] invalidity argument for each is distinct.”).
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`PMP conceded that its patents are “unrelated” and “there is no overlapping subject matter”
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`to Reynolds’s stayed patents in the case, including those before the ITC. Dkt. 449 at 3. PMP’s
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`patents have different assignees and inventors from Reynolds’s stayed patents. In addition, none
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`of the prior art references identified by Reynolds at trial were identified as relating to Reynolds’s
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`patents. Further each side’s claims involve different accused products. Reynolds accused PMP’s
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`heat-not-burn IQOS® devices of infringing its patents. E.g., Dkt. 1 at 8. By contrast, PMP accused
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`devices in RJRV’s family of VUSE® products of infringing its separate e-vapor patents. See Dkt.
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`473, Ex. A at pp. 22-30, 37-44 (ordered effective by Dkt. 483). PMP itself conceded the products
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`are different, stating that its IQOS® system “heats (but does not burn) tobacco” while, by contrast,
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`RJRV’s VUSE® products “heat vaping liquid, not tobacco.” Dkt. 449 at 6. Accordingly, the
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`claims relating to PMP’s patents are entirely separable from those relating to Reynolds’s stayed
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`patents, weighing in favor of Rule 54(b) certification. See WiAV Sols., 2010 WL 883748 at *2
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`(finding that where there was no overlap in inventors, no overlap in claim terms in dispute, and
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`different prior art at issue, “the factual distinctions between the claims counsel in favor of
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`certification.”); see also Dkt. 449 at 6, (PMP arguing that [“PMP’s] Patents are unrelated to the
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`[Reynolds’s] stayed patents in this case and in the ITC).
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`Regarding the second factor, because the jury has fully adjudicated issues of validity,
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`infringement, and damages with respect to PMP’s patents, there will be no future developments
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`regarding these patents in the district court that will moot the need for appellate review.
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`Regarding the third factor, similarly, because the remaining issues for adjudication are
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`untethered to the PMP patents or RJRV’s VUSE® products—i.e., they are related solely to
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`Reynolds’s stayed patents and PMP’s IQOS® products—entry of judgment now under Rule 54(b)
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`would not oblige the Federal Circuit to reconsider any of the same factual or legal issues at a later
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`time. See Augme, 305 F.R.D. at 115 (certifying a judgment on one side’s patents under Rule 54(b)
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`while the other side’s patent remained pending where the claims were separable and, “[e]ven if the
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`[unadjudicated] patent and the [adjudicated] patents share common technology and products, [non-
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`moving party] has not identified one legal or factual issue the Federal Circuit will have to decide
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`more than once.”)
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`Regarding the fourth factor, the presence of Reynolds’s stayed claims favors certification.
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`Reynolds’s patents have been stayed since June and December 2020, and remain stayed at this
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`time. Thus, any potential set-off to damages or costs would not occur for some time. Indeed, there
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`are pending appeals at the Federal Circuit pertaining to inter partes review proceedings regarding
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`two of the ITC-related patents. (Appeal No. 22-1846 pertaining to U.S. Patent No. 9,901,123 and
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 14 of 17 PageID# 41522
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`Appeal No. 22-1748 pertaining to U.S. Patent No. 9,930,915). In addition, Reynolds’s U.S. Patent
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`No. 10,492,542 that underwent post-grant review is also currently on appeal to the Federal Circuit
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`(Appeal No. 2022-1862). Thus, accounting for any potential set-off would not occur until after
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`any final mandates by the Federal Circuit, the exhaustion of any additional appellate review
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`mechanisms, and after subsequent district court litigation on Reynolds’s patents, including
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`summary judgment or trial. Much like this Court’s reasoning that “interests of judicial economy
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`cannot blindly override the obligation to adjudicate live cases and controversies,” PMP’s claims
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`pertaining to its patents are ripe for appeal. Dkt. 456 at 1.
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`Regarding the fifth factor, there is no just reason to delay appeals relating to PMP’s
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`patents. Absent certification, RJRV would be forced to wait for a final judgment in regard to
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`Reynolds’s stayed claims before it could appeal claims pertaining to PMP’s patents where
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`Reynolds has been found to infringe. See 3D Sys., Inc. v. Envisiontec, Inc., No. 05-74891, 2011
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`WL 4691937, at *7 (E.D. Mich. Oct. 6, 2011) (noting that “delay in appellate review severely
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`prejudices” a party “having been found guilty as an infringer” due to, for example, harm to “good
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`will and reputation” built with its customers). Indeed, three of Reynolds’s patents were stayed
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`prior to even beginning discovery. And the other two were stayed in the midst of fact discovery.
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`Thus, once the stay is lifted, and even if it were lifted tomorrow,7 the parties would still need to
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`conduct and conclude fact discovery, expert discovery, claim construction, dispositive motions,
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`pretrial motions (e.g., motions in limine and Daubert motions), and trial on Reynolds’s claims, all
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`7 There are appeals pending with respect to IPRs and a PGR on three of the Reynolds
`asserted patents. Reynolds’s position is that, consistent with the current stay orders, claims relating
`to Reynolds’s affirmative patents should all remain stayed until all collateral proceedings on those
`patents have concluded. This will allow the most efficient resolution of Reynolds’s patent claims
`at one time given the interrelation of Reynolds’s patents and that all of Reynolds’s patent claims
`are directed toward the same accused IQOS products.
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`10
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 15 of 17 PageID# 41523
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`before Reynolds would be permitted to appeal the final judgment with respect to PMP’s patent
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`claims. There is simply no just reason to force RJRV to wait.
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`In sum, PMP’s claims regarding its patents are final for appeal and there is no just reason
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`to delay certification of those final judgments for appeal.
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`CONCLUSION
`RJRV respectfully requests that this Court enter an Order granting its motion, directing
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`entry of final appealable judgment with respect to PMP’s asserted patents (Counterclaims I and
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`III) under Rule 54(b).
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`11
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 16 of 17 PageID# 41524
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`Dated: April 21, 2023
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`
`
`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 N. Wacker
`Suite 4800
`Chicago, IL 60606
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@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 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, III
`THE LAW OFFICES OF
`CHARLES B. MOLSTER, III PLLC
`2141 Wisconsin Avenue, N.W. Suite M
`Washington, DC 20007
`Telephone: (703) 346-1505
`Email: cmolster@molsterlaw.com
`
`Counsel for RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
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`12
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`Case 1:20-cv-00393-LMB-WEF Document 1480 Filed 04/21/23 Page 17 of 17 PageID# 41525
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of April, 2023, a true and correct copy of the foregoing
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`was served using the Court’s CM/ECF system, with electronic notification of such filing to all
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`counsel of record.
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`
`
`/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
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`13
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