Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 1 of 23 PageID# 8908
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`RAI STRATEGIC HOLDINGS, INC. AND R.J.
`REYNOLDS VAPOR COMPANY
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`
`Plaintiffs and
`Counterclaim Defendants,
`
`
`v.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.;
`and PHILIP MORRIS PRODUCTS S.A.
`
`
`Defendants and
`Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LO-TCB
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`DEFENDANTS’ OPPOSITION TO PLAINTIFFS’
`MOTION TO STRIKE INFRINGEMENT CONTENTIONS
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`REDACTED
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 2 of 23 PageID# 8909
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`
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`I.
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`II.
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`III.
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`IV.
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`FACTUAL BACKGROUND ..............................................................................................3
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`LEGAL STANDARD ..........................................................................................................7
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`ARGUMENT .......................................................................................................................8
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`A.
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`B.
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`C.
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`Defendants’ Supplemental Infringement Contentions Were Provided In A
`Timely Manner After Reynolds’ Belated Discovery Supplementation ...................8
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`Even If Defendants’ Supplemental Infringement Contentions Are
`Somehow Deemed Untimely, Any Alleged Failure To Disclose Is
`“Substantially Justified” And “Harmless” .............................................................12
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`Even If Defendants’ Supplemental Infringement Contentions Are
`Somehow Deemed Untimely, Unjustified And Not Harmless, Preclusion
`Sanctions Are Not Warranted ................................................................................18
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`V.
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`CONCLUSION ..................................................................................................................18
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`i
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 3 of 23 PageID# 8910
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`TABLE OF AUTHORITIES
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`CASES
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`Ace Am. Ins. Co. v. McDonald’s Corp.,
`No. GLR-11-3150, 2012 WL 2523883 (D. Md. June 28, 2012) ......................................... 13, 15
`
`Biedermann Techs. GmbH & Co. KG v. K2M Inc., ...................................................................... 15
`
`Jaguar Land Rover Ltd. v. Bentley Motors Ltd.,
`No. 2:18-cv-320, 2020 WL 6387383 (E.D. Va. Aug. 27, 2020) ............................................... 15
`
`Kinlaw v. Nwaokocha,
`No. 17-cv-772, 2019 WL 2288445 (E.D. Va. May 29, 2019) ..................................................... 8
`
`Lopez-Krist v. Salvagno,
`No. ELH-12-01116, 2013 WL 5705437 (D. Md. Oct. 17, 2013) .............................................. 14
`
`Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co.,
`318 F.3d 592 (4th Cir. 2003) ................................................................................................... 1, 8
`
`Tritchler v. Consolidation Coal Co.,
`91 F.3d 134, 1996 WL 379706 (4th Cir. June 28, 1996) ...................................................... 8, 18
`
`United States ex rel. Skibo v. Greer Labs., Inc.,
`No. 5:13-cv-110, 2019 WL 1992139 (W.D.N.C. May 6, 2019) ............................................... 12
`
`RULES
`
`Fed. R. Civ. P. 37(c)(1) ................................................................................................................... 7
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`ii
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 4 of 23 PageID# 8911
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`I.
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`INTRODUCTION
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`Defendants Altria Client Services LLC and Philip Morris Products USA Inc.
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`(“Defendants”) diligently informed Reynolds of their intention to assert U.S. Patent No.
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`10,420,374 (“the ’374 patent”) claims 16 – 25 within days of Reynolds’ producing the discovery
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`necessary to support assertion of those claims, and served their detailed supplemental infringement
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`contentions directed to those claims three days later. In a baseless attempt to try to avoid facing
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`Defendants’ infringement claims on the merits, Reynolds seeks to strike them based on a gross
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`misrepresentation of the discovery record. What is clear—based upon the actual and undistorted
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`record—is that the timing of Defendants’ supplementation was dictated by Reynolds’ own
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`continuing discovery failures and delays. Reynolds’ motion is another instance of the
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`“gamesmanship” for which Reynolds has already been admonished by this Court (and should be
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`once again now on this motion).
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`Reynolds cites no authority for the extraordinary exclusion relief it seeks on its motion—
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`none. Defendants are aware of no case in this Court or elsewhere in which supplementation of
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`contentions under Federal Rule of Civil Procedure 26(e) has been found untimely and stricken
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`where, as here, a party diligently supplemented within days of receiving new information
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`supporting the supplementation, the delay (if any) in receiving such new information was of the
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`other side’s own making, two months remain in discovery at the time of supplementation, expert
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`discovery has not yet commenced, and no trial date has been set.
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`Regardless, even if Defendants’ supplementation were somehow deemed untimely (it is
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`not), Reynolds falls far short of meeting any of the five factors enumerated in Southern States Rack
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`& Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596 (4th Cir. 2003) that Courts look to in
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`considering whether such supplementation is “substantially justified or harmless” under Federal
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`Rule of Civil Procedure 37(c)(1).
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`1
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`First, Reynolds cannot claim surprise under Southern States Factor 1 by the newly asserted
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`claims where, as here, the facts giving rise to assertion of claims 16 – 25 were possessed by
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`Reynolds alone. Reynolds’ feigned surprise cannot be squared with Reynolds’ own pleadings in
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`this case. Defendants’ counterclaim was not limited to specific claims of the ’374 patent, and
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`Reynolds’ answers to that counterclaim pled affirmative defenses of invalidity and non-
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`infringement directed to all of the ’374 patent claims. (Dkt. 70 at 17; Dkt. 274 at 18.) Reynolds
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`was no doubt aware of the pressure sensor oscillation circuitry and its operation in its own products
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`that ultimately provided the basis for Defendants’ assertion of claims 16 – 25 in its supplemental
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`infringement contentions. Reynolds was also aware that Defendants were actively pursuing this
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`information through discovery. Both sides have repeatedly supplemented their discovery
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`responses in this case. Defendants’ supplementation—after Reynolds belatedly produced its
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`pressure sensor oscillation circuitry—could not have been a surprise to Reynolds.
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`Second, Reynolds cannot credibly claim an inability to cure, or disruption of trial, under
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`Southern States Factors 2 and 3, with two months remaining in discovery and no trial date. Expert
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`discovery has yet to begin and both sides are actively immersed in fact discovery. Although
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`complaining that Markman proceedings have already concluded (in which the Court rejected all
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`13 of Reynolds’ proposed claim constructions), Reynolds fails to identify even a single term in the
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`newly-asserted claims that requires construction. And even if Reynolds’ hypothetical claim
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`construction concern were to materialize, there is ample time before the yet unscheduled trial for
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`the Court to address it.
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`Third, Reynolds cannot credibly claim that the assertion of claims 16 – 25 is unimportant
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`under Southern States Factor 4. To do so would gut its contrived claim of prejudice. If the newly-
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`asserted claims are unimportant and redundant, as Reynolds contends, there should be no new
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`2
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`issues. If on the other hand, the newly asserted claims are different (and they are), then such claims
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`are by definition important. For example, it would be important for Defendants to have the
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`opportunity to present to the jury the full range of infringed claims as a backstop to Reynolds’
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`invalidity challenges in this case.
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`Finally, Defendants have irrefutably explained the timing of their supplementation under
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`Southern States Factor 5. That timing was dictated by Reynolds’ repeated and continuing
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`discovery delays and failures.
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`Reynolds cites no authority that comes close to supporting discovery sanctions on this
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`record. But even if Defendants contentions are somehow deemed untimely, unjustified and not
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`harmless, more than ample time remains for Reynolds to prepare its response to Defendants’
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`supplemental infringement contentions. Reynolds cites no authority for the draconian preclusion
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`relief it seeks on the facts here—the request is entirely unsupported by law.
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`Defendants, in their communications with Reynolds leading up to the meet and confer on
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`this motion, implored Reynolds not to perpetuate its pattern of baseless discovery conduct. (See
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`Ex. 2 (11/25/2020 M. Grant email to C. Molster).) Reynolds nevertheless proceeded with its ill-
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`founded motion. Reynolds’ motion should be denied, and Reynolds should once again be
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`admonished for its discovery (mis)conduct in filing the present motion based on a
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`misrepresentation of the record and without legal basis.
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`II.
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`FACTUAL BACKGROUND
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`On June 29, 2020, Defendants asserted its counterclaims of infringement in this case,
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`including its counterclaim that Reynolds’ Vuse products (i.e., Ciro, Alto, Vibe, and Solo) infringe
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`the ’374 patent. (Dkt. 39 (Counterclaims) at ¶¶ 28-47.) All of the ’374 patent claims are directed
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`to electronic vaping devices comprising a “puff sensor” and other limitations. Defendants’
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`3
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`counterclaims identified “one or more claims of the ‘374 patent, including claim 1” as infringed
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`by Reynolds. (Id. at ¶ 29.)
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`Reynolds answered Defendants’ counterclaims on August 3, 2020, asserting among others,
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`an affirmative defense of non-infringement on all claims of the ’374 patent—i.e., that Reynolds
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`does “not infringe any valid and enforceable claim” of the ’374 patent. (Dkt. 70 at 17.) Reynolds
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`repeated its affirmative defense as to all ’374 patent claims in its amended answer, filed October
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`30, 2020. (Dkt. 274 at 18.) Reynolds’ affirmative defense was thus directed not only to initially
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`identified ’374 patent claim 1, but all of the ’374 patent claims, including ’374 patent claims 16 –
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`25 asserted in Defendants’ supplemental infringement contentions. Like claim 1, claim 16 is
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`directed to an “electronic vaping device” comprising a “puff sensor” and other limitations. (Ex. 3
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`(’374 patent) at 12:60-13:23, 14:47-65.) However, claim 16 (and its associated dependent claims
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`17 – 25) additionally recite a feature absent in claim 1: a “controller including an oscillation
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`circuit,” wherein the controller is configured to “measure a variation in an oscillation frequency of
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`the oscillation circuit, and to selectively actuate a heater based on the variation in an oscillation
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`frequency of the oscillation circuit.” (Id. at 14:47-65.) Reynolds presumably investigated its
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`asserted affirmative defenses about its own commercial products, and most certainly was aware at
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`least as of the filing of Defendants’ counterclaims of the potential future assertion of additional
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`claims of the ’374 patent.
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`Document Requests. In August 2020, Defendants served requests for production on
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`Reynolds seeking specific technical information relating to the pressure/puff sensors used in the
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`accused Vuse products. (Ex. 4 (8/11/2020 First Set of RFP) at RFP Nos. 106, 113, 114, 126, 129.)
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`In October, Defendants noted significant deficiencies in Reynolds’ production and followed up
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`several times on these requests,
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`. (Ex. 5 (10/9/2020 Humphrey letter), Ex.
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`6 (10/16/2020 Humphrey email).) Reynolds refused to provide responsive documents that were
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`within its control, and Defendants moved to compel. (Dkt. 219.)
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`The Court granted Defendants’ motion
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`to compel, noting
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`that Defendants’
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`“document requests were served on August 11, 2020, and substantial completion was due on
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`October 23, 2020.” (Dkt. 263.) The Court ordered Reynolds to produce the technical documents
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`and “fully cure all deficiencies in their production” by November 6, 2020. Reynolds failed to meet
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`this deadline, and sought an extension of the Court-ordered deadline. (Dkt. 301, 304.) Reynolds
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`continued to produce nearly 70,000 pages of documents after the October 23, 2020 substantial
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`completion deadline, for the next four weeks, through November 20, 2020. (Ex. 1, Koh Decl. ¶ 2.)
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`Interrogatories. In September 2020, Defendants served interrogatories on Reynolds,
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`seeking the description and identification of “any puff sensor assembly… in each of the RJR
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`Accused Products, including, but not limited to, the manufacturer, designer, components,
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`properties, dimensions, operation, and materials comprising the puff sensor.” (Ex. 7 (Defendants’
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`Interrogatory No. 20).) In response, on October 29, Reynolds
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` (Ex. 8 (Reynolds’ Response to Interrogatory No. 20).) It was not until November 3,
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`2020—after Reynolds was compelled to produce technical documents on the pressure/puff sensor
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`from its suppliers—that Reynolds finally identified
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`. (Ex. 9
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`(Reynolds’ Second Supplemental Response to Interrogatory No. 20) at 3.)
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`Reynolds again supplemented its interrogatory response on November 17, 2020—three
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`days before Defendants were scheduled to take the Rule 30(b)(6) deposition
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`. (Id. at 3-4.)
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`Deposition Testimony. On November 20, Defendants took
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`Despite Defendants’ repeated requests for supplementation and this Court’s Order to
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`produce technical production, prior to Reynolds’ November interrogatory supplementation and
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`document production, and the Daugherty deposition, Reynolds had not yet identified
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`r. Such information was first provided to Defendants in the patchwork of
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`Reynolds’ untimely supplemental interrogatory response
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`.1
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`One day after Mr. Daugherty’s deposition, on November 21, Defendants notified Reynolds
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`of their intent to assert claims 16 – 25 of the ’374 patent, based on recently obtained discovery and
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`Defendants’ continued and ongoing investigation. (Ex. 11 (11/21/2020 Ltr. to J. Michalik).) On
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`November 24, 2020, Defendants served their supplemental infringement contentions to include
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`claims 16-25, citing to Mr. Daugherty’s deposition testimony and Reynolds’ late-produced
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`documents, including documents identified in Reynolds’ November 17 interrogatory responses.
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`III. LEGAL STANDARD
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`A party has a duty to disclose supplemental interrogatory responses in a “timely manner”
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`under Federal Rule of Civil Procedure 26(e). Rule 37(c)(1) is applicable to failures by a party to
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`provide required supplementation under Rule 26(e). Upon a showing of a failure to timely
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`supplement, a court may strike such supplementation, unless such failure “was substantially
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`justified or is harmless.” Fed. R. Civ. P. 37(c)(1). Courts consider the following factors to
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`determine whether a nondisclosure of evidence is “substantially justified or harmless”: (1) the
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`surprise to the party against whom the evidence would be offered; (2) the ability of that party to
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`cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the
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`1 As discussed below, Reynolds attempts to justify its discovery delays by reference
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`Most tellingly, Reynolds itself failed to identify or refer to the document in its interrogatory
`responses or its supplemental interrogatory responses directed to the puff sensors used in its
`commercial products. Reynolds’ reliance on this document (and another one like it) as
`justification for its delay
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`borders on specious.
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`7
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`REDACTED
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`importance of the evidence; and (5) the non-disclosing party’s explanation for its failure to disclose
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`the evidence. Southern States, 318 F.3d at 596.
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`Courts recognize that “[g]enerally, preclusion is considered a drastic remedy.” Tritchler
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`v. Consolidation Coal Co., 91 F.3d 134, 1996 WL 379706, at *2 (4th Cir. June 28, 1996). Rule
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`37(c)(1) expressly authorizes the district court to consider lesser remedies to preclusion, and
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`district courts have broad discretion to select an appropriate remedy in light of the totality of the
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`circumstances. Southern States, 318 F.3d at 593.
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`IV. ARGUMENT
`A.
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`Defendants’ Supplemental Infringement Contentions Were Provided In A
`Timely Manner After Reynolds’ Belated Discovery Supplementation
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`Defendants timely notified Reynolds of their intent to supplement their infringement
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`contentions to include claims 16 – 25 of the ’374 patent on November 21, 2020—the day after
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`Reynolds’ 30(b)(6) witness
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`. Defendants supplemented their infringement contentions
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`a mere three days later, on November 24, 2020. Fact discovery is ongoing, and does not close
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`until January 27, 2021. (Dkt. 334, 360.) Because Defendants disclosed their supplemental
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`infringement contentions in a timely manner before the close of discovery, Rule 37(c)(1) is
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`inapplicable, and Reynolds’ motion to strike must be denied. Kinlaw v. Nwaokocha, No. 17-cv-
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`772, 2019 WL 2288445, at *4 (E.D. Va. May 29, 2019) (Rule 26(e) supplementation before the
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`close of discovery is a “timely supplementation under Fed. R. Civ. P. 26(e)”).
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`Further, the timing of Defendants’ supplementation is a direct result of Reynolds’ dilatory
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`discovery responses and belated document production. Defendants’ supplemental infringement
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`contentions adding ’374 patent claims 16 – 25 are based on discovery Reynolds provided just days
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`prior to the contentions. (See Dkt. 362-2, Ex. B.) Defendants’ supplemental infringement
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`contentions rely on information disclosed in Reynolds’ November 3 and 17, 2020 supplemental
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`interrogatory responses, three technical documents from Reynolds’ production, and the deposition
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`testimony of Mr. Daugherty. (Id.)
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`Reynolds’ supplemental interrogatory responses
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`t. Id.
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` And, as described below, Reynolds produced two of the three documents in November—
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`only after the Court compelled Reynolds to produce responsive documents in its control. The
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`third relied-upon document, alone without the supplemental interrogatory responses, late-
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`produced documents, and Daugherty testimony, was insufficient to support Defendants’
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`supplemental infringement contentions.
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`Reynolds produced the first document relied on in Defendants’ supplemental infringement
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`contentions, RJREDVA_001619092, on November 13, 2020. (Dkt. 392-8 Ex. H; Koh Decl. ¶ 3.)
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`This document
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`.” (Id.; Ex. 3 (’374 patent) at 14:47-65.)
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`Reynolds produced the second of the relied upon documents, RJREDVA_001616380, on
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`November 5, 2020. (Dkt. 392-5 Ex. E; Koh Decl. ¶ 4.) This document
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`9
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`.
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`Reynolds produced the third document, RJREDVA_000841859, on September 17, 2020.
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`(Dkt. 392-3 Ex. C; Koh Decl. ¶ 5.) This Reynolds document
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`(Id. at RJREDVA_000841863.)
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`Reynolds makes much of this third document, and bases its motion on it (and one other
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`similarly non-descript early document previously produced by Reynolds). But this third
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`document,
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`, is not cumulative of the other cited documents, and absent
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`the other later-produced documents, supplemental interrogatory responses, and Daugherty
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`testimony, fails to provide sufficient basis for Defendants’ contentions. For example,
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`10
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`On its face, the third document could not have served as a basis for Defendants’
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`infringement claims, as confirmed by Reynolds’ own interrogatory responses. None of Reynolds’
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`interrogatory responses or supplemental interrogatory responses identified this third document
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`(or the other one like it cited by Reynolds in its motion). (See Ex. 9 (Reynolds’ Second Supp.
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`Response to Interrogatory No. 20).) In fact, the significance of this document was not divined
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`until Mr. Daugherty’s November 20 deposition, where he testified
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`) Prior to that testimony, this document, which is
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`the foundation of Reynolds’ entire motion, was never identified by Reynolds or in any manner
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`linked to the puff sensors in the actual accused products.
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`Rather than support Reynolds’ motion, the third document (and the other one like it)
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`compels its denial.
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`non-descript document in its production and failed to identify it in connection with the accused
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` Either way, the fact that Reynolds buried this
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`sensors is fatal to its motion.
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`11
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 15 of 23 PageID# 8922
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`Reynolds thus stymied the production of highly relevant documents
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` until November 2020, after the Court
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`compelled Reynolds to do so, undermining Defendants’ investigation. Only after Defendants
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`obtained this critical information from Reynolds, confirmed
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`through 30(b)(6) testimony, and consulted with their expert about this
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`newly obtained information, were Defendants able to supplement their contentions to include
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`claims 16 – 25. Defendants did so promptly, within days of obtaining the information. It was
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`Reynolds—not Defendants—who directly caused any alleged “delay” of Defendants’ contentions.
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`Defendants’ disclosure is therefore timely. United States ex rel. Skibo v. Greer Labs., Inc., No.
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`5:13-cv-110, 2019 WL 1992139, at *4 (W.D.N.C. May 6, 2019) (supplemental disclosures based
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`on receipt of new information and documents, when there was no specific deadline for Rule 26(e)
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`supplementation, were timely).
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`B.
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`Even If Defendants’ Supplemental Infringement Contentions Are Somehow
`Deemed Untimely, Any Alleged Failure To Disclose Is “Substantially
`Justified” And “Harmless”
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`Even if Defendants’ supplementation is somehow deemed untimely in the face of
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`Reynolds’ repeated discovery delays and failures, Reynolds fails to show that Defendants’
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`infringement contentions for claims 16 – 25 should be stricken. Analysis of the five Southern
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`States factors compels a finding that Defendants’ supplemental disclosures, even if untimely
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`(which they are not), are “substantially justified or harmless,” as follows.
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`Factor 1 (Surprise). Reynolds contends that it was “surprised” by Defendants’ disclosure
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`of claims 16 - 25, because Defendants did not identify these claims in their initial infringement
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`contentions on September 30. Dkt. 392 at 10. But there is no requirement in this case that
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`contentions are limited to those disclosed in initial contentions. Fact discovery does not close until
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`January 27, 2021, and both parties have repeatedly supplemented their contentions since
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 16 of 23 PageID# 8923
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`September. Indeed, Reynolds notes that it has repeatedly supplemented its own invalidity
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`contentions for the ’374 patent. (Dkt. 392 at 10 (“Reynolds provided detailed contentions on these
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`[invalidity] issues on September 17, September 25, October 16, and November 5”).) It cannot be
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`a surprise to Reynolds that Defendants updated their contentions to include recent evidence
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`obtained during discovery—just as Reynolds has done. Ace Am. Ins. Co. v. McDonald’s Corp.,
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`No. GLR-11-3150, 2012 WL 2523883, at *5 (D. Md. June 28, 2012) (no surprise when Rule 26(e)
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`supplementation was made before discovery deadline, and denying motion to strike).
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`Reynolds’ feigned surprise is belied by its pleadings and by its assertions on this motion.
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`As noted, Defendants ’374 patent counterclaim was not limited to specific claims, and instead pled
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`that one or more claims, including claim 1, were infringed. Reynolds understood that the
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`counterclaim was not so limited as evidenced by its affirmative defense in its initial and amended
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`answers to Defendants’ counterclaims that all of the ’374 patent claims are either invalid or not
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`infringed. (Dkt. 70 at 17; Dkt. 274 at 18.) Presumably, Reynolds investigated its affirmative
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`defense, and had a basis for its pleading. It could come as no surprise that claims 16 – 25 could
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`ultimately be at issue. And although Reynolds was not forthcoming regarding the oscillation
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`circuitry in the accused puff sensors (see Section IV.A., supra), Reynolds contends it knew all
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`along that such circuitry existed in its accused products and how such circuitry operated (if so,
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`why is that information omitted from its interrogatory responses?). Reynolds cannot credibly
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`claim to be surprised by Defendants’ inclusion of the claims 16 – 25 after Reynolds belatedly
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`disclosed the puff sensors in the accused products, and their operation and structure.
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`Factor 2 (Opportunity to Cure); Factor 3 (Trial Disruption). Reynolds contends that it has
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`no opportunity to “cure the surprise,” because it has already prepared its invalidity defenses based
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`on Defendants’ September 30 initial disclosure of asserted claims, and has only two weeks to
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 17 of 23 PageID# 8924
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`prepare its expert reports. (Dkt. 392 at 10-11.) But as discussed for Factor 1, Reynolds’ own
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`pleadings belie its assertion now that it has not previously considered and contemplated its
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`defenses to claims 16 – 25. Defendants’ supplementation (the timing of which was dictated by
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`Reynolds’ recalcitrance) comes with two months left in discovery, weeks before any expert
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`discovery, and before any trial date has been set. Reynolds has more than ample time to prepare
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`its responsive contentions, particularly having admittedly considered all of the ‘374 patent claims
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`previously.
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`Reynolds does not even attempt to argue that Factor 3 (disruption of trial) supports striking
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`Defendants’ supplemental infringement contentions – nor could it. A trial date has not even been
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`set in this case. And given the Court’s recent General Order regarding the ongoing pandemic, it
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`is difficult to determine when trial could even be scheduled to proceed. (See General Order 2020-
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`22, at https://www.vaed.uscourts.gov/sites/vaed/files/Gen%20Order%202020-22%20%20-%20
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`Temporary%20Suspension%20of%20Jury%20Trials.pdf.)
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`Reynolds’ concerns regarding the complete Markman proceedings also ring hollow.
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`Reynolds fails to identify any claim term that it wishes to construe. (See Dkt. 392 at 11.) There
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`is none. And even if Reynolds were to identify a new claim term at issue, there is again ample
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`time and opportunity for the Court to address it.2
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`Reynolds cites no case supporting striking of Defendants’ contentions on the facts of this
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`case. To the contrary, fact discovery is ongoing, and no trial date has been set. Exclusion of
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`Defendants’ contentions is inappropriate in this instance. See, e.g., Lopez-Krist v. Salvagno, No.
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`ELH-12-01116, 2013 WL 5705437, at *10 (D. Md. Oct. 17, 2013) (denying motion to strike when
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`2 The Court’s willingness to do so may be informed by its disagreement with all of the 13
`constructions Reynolds proposed for Defendants’ patents during the Markman proceedings in
`this case. (See Dkt. 360.)
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`Case 1:20-cv-00393-LO-TCB Document 398 Filed 12/02/20 Page 18 of 23 PageID# 8925
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`“the evidence will not delay the trial, as no trial date has yet been set”); Ace Am. Ins., 2012 WL
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`2423883, at *5 (same); Biedermann Techs. GmbH & Co. KG v. K2M, Inc., No. 2:18-cv-585, 2020
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`WL 1648470, at *3 (E.D. Va. Mar. 16, 2020) (denying motion to strike new infringement
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`assertions made prior to close of discovery and prior to opening expert reports).
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`Reynolds’ reliance on Jaguar Land Rover Ltd. v. Bentley Motors Ltd., is misplaced. In
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`Jaguar, Bentley served belated supplemental invalidity contentions more than six months after
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`discovery had already closed. No. 2:18-cv-320, 2020 WL 6387383, at *2 (E.D. Va. Aug. 27,
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`2020). Bentley also “failed to offer any reasonable explanation” for why it could not have
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`supplemented earlier, during fact discovery. Id. at *2-3. Here, on the other hand, Defendants
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`served their supplemental contentions more than two months before the close of discovery. And
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`(as discussed below), Defendants provided a reasonable explanation for the timing of their
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`disclosures, which was dictated by Reynolds’ own failure to timely produce highly relevant
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`discovery.
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`Because discovery is ongoing, Reynolds has ample opportunity to seek any further
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`discovery it might need. Information on the accused Vuse products is within its possession,
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`custody, or control. Reynolds’ claims of “severe prejudice” is simply unfounded.
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`Factor 4 (Importance of the Evidence to Defendants). Reynolds’ contention that claims 16
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`– 25 are “not important” is facially wrong and refuted by its willingness to file this motion in the
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`face of its own dilatory discovery conduct that led to Defendants’ supplementation. To the extent
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`Reynolds argues that there are no differences between claims 16 – 25 and previously-asserted
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`claims, this would lay to rest Reynolds’ arguments of “surprise” and “prejudice.” But Reynolds
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`knows better. Claims 16 – 25 include elements relating to the oscillation circuitry not present in
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`the originally asserted claims. The inclusion of these claims could thus have important
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`implications on the issue of validity. Although Defendants believe that all of the asserted claims
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`are valid and infringed, as this Court will appreciate, a jury could conceivably find Defendants’
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`earlier-asserted claims invalid, while upholding the validity of claims 16 – 25 based on the
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`additionally recited circuitry elements. The importance of this additional layer of protection is
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`tremendous. Reynolds’ assertion that “Defendants have not identified any differences between the
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`[already-asserted] claims and the newly asserted claims [16-25]” is folly. (Dkt. 392 at 11.) The
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`differences are apparent from the plain language of the claims themselves.
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`Factor 5 (Defendants’ Explanation For Any Failure To Disclose). Defendants have
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`provided a complete explanation for any purported delay in their supplemental infringement
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`contentions. (See supra, Section IV.A.) Reynolds asserts that Defendants should have included
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`claims 16 – 25 earlier, because Reynolds produced one cited document, and a substantially similar
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`document in June 2020. (Dkt. 392 at 12, Exs. C, D.) In fact, even Exhibits C and D, upon which
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`Reynolds bases its motion, were not available for use in this case until September 17, 2020.3 But
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`more importantly, neither exhibit (alone or together) provided a basis for assertion of claims 16 –
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`25, as discussed above. (See supra, Section IV.A.) Both documents
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`392, Ex. C, D.)
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`. (Dkt.
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`3 Reynolds appears to assert that Defendants should have asserted claims 16 – 25 back in June,
`when Defendants filed their counterclaims, based on the June 1 productio