Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 1 of 18 PageID# 12449
`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 1 of 18 Page|D# 12449
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`EXHIBIT 24
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`EXHIBIT 24
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 2 of 18 PageID# 12450
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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,
`
`Plaintiffs and Counterclaim Defendants,
`
`
`
`
`
`
`
`v.
`
`Case No.: 1:20cv00393-LO-TCB
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`
`
`Defendants and Counterclaim Plaintiffs.
`
`
`PLAINTIFFS RAI STRATEGIC HOLDINGS, INC. AND R.J. REYNOLDS VAPOR
`COMPANY’S NOTICE OF RULE 30(b)(6) DEPOSITION OF DEFENDANTS
`
`Please take notice that Plaintiffs RAI Strategic Holdings, Inc. (“RAI”) and R.J. Reynolds
`
`Vapor Company (“RJRV”) (collectively, “Reynolds” or “Plaintiffs”), pursuant to Federal Rule of
`
`Civil Procedure 30(b)(6), will take the deposition of Defendants Altria Client Services LLC
`
`(“ACS”), Philip Morris USA, Inc. (“PM USA”), and Philip Morris Products S.A. (“PMP”)
`
`(collectively, “Defendants”) through persons designated by Defendants to testify on their behalf
`
`with respect to the topics listed in Schedule A hereto, at the offices of Jones Day, 51 Louisiana
`
`Ave., N.W., Washington, D.C. 20001, beginning on November 13, 2020, at 9:00 a.m. (Eastern) or
`
`at a time and place to be agreed upon by the parties and continuing from day to day, excluding
`
`weekends, until completed. The deposition shall be upon oral examination before an officer
`
`appointed or designated under Federal Rule of Civil Procedure 28, and shall be recorded by audio-
`
`visual and stenographic means.
`
`
`
`
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`1
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 3 of 18 PageID# 12451
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`
`
`Dated: October 28, 2020
`
`Respectfully submitted,
`
`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
`
`
`
`
`
`
`
`
`/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
`
`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Tel: (212) 326-3939
`Fax: (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 (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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`2
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 4 of 18 PageID# 12452
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on October 28, 2020, the foregoing was served on counsel for
`
`Defendants/Counterclaim Plaintiffs using
`
`the
`
`following designated
`
`email
`
`address:
`
`pmiedva.lwteam@lw.com.
`
`
`
`Dated: October 28, 2020
`
`
`
`
`
`
`
`
`
`
`/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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`3
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 5 of 18 PageID# 12453
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`SCHEDULE A TO PLAINTIFFS RAI STRATEGIC HOLDINGS, INC. AND R.J.
`REYNOLDS VAPOR COMPANY’S NOTICE OF RULE 30(B)(6) DEPOSITION OF
`DEFENDANTS
`
`DEFINITIONS
`
`1.
`
`“ACS” shall each mean and refer to Altria Client Services LLC, including without
`
`limitation all of its corporate locations, and all predecessors, predecessors-in-interest, and all past
`
`or present directors, officers, agents, representatives, employees, consultants, attorneys, entities
`
`acting in joint venture, licensing agreements, or partnership relationships with ACS, and others
`
`acting on behalf of ACS.
`
`2.
`
`“Altria Accused Product” or “Altria Accused Products” shall mean any and all
`
`electric tobacco heating device systems and the associated tobacco sticks sold for use with the
`
`device systems. The tobacco heating device systems and components thereof shall include
`
`Defendants’ IQOS® System Holder and Charger (“IQOS® system”). For avoidance of doubt, the
`
`holder, charger and all compatible tobacco sticks (such as, but not limited to, IQOS® HEETS,
`
`MarlboroTM HeatSticks, MarlboroTM Fresh Menthol HeatSticks, or MarlboroTM Smooth Menthol
`
`HeatSticks) should be considered components of the respective tobacco heating device systems,
`
`and thus are included in the meaning of “Altria Accused Product” or “Altria Accused Products.”
`
`Components further shall include any smaller breakdown of parts, if applicable, to the IQOS®
`
`system and associated tobacco sticks.
`
`3.
`
`“Altria Asserted Patents” means each and any of United States Patent No.
`
`9,814,265 (“the ’265 patent”), United States Patent No. 10,555,556 (“the ’556 patent”), United
`
`States Patent No. 10,104,911 (“the ’911 patent”), United States Patent No. 6,803,545 (“the ’545
`
`patent”), and United States Patent No. 10,420,374 (“the ’374 patent”).
`
`
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`4
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 6 of 18 PageID# 12454
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`4.
`
`“Communication” or “Communications” means every manner or method of
`
`disclosure or transfer or exchange of information, whether orally or by Document, and whether
`
`face-to-face, by telephone, mail, electronic mail, personal delivery, facsimile, or otherwise.
`
`5.
`
`“Defendants,” “Counterclaim Plaintiffs” “You,” or “Your” shall mean and refer to
`
`ACS, PM USA, and PMP.
`
`6.
`
`“Document” or “Documents” has the broadest meaning consistent with Federal
`
`Rule of Civil Procedure 34 and applicable case law, and includes electronically stored information
`
`as specified in Federal Rule of Civil Procedure 34. Any draft or non-identical copy is a separate
`
`Document within the meaning of this term.
`
`7.
`
`“Identify,” “Identifying,” “Identity,” or “Identification,” when used with respect to
`
`any natural Person, shall mean that the following information shall be provided: the Person’s full
`
`name; last known home address; last known business address and telephone number; last known
`
`title or occupation; and last known employer.
`
`8.
`
`“Identify,” “Identifying,” “Identity,” or “Identification,” when used with respect to
`
`any legal entity, such as a corporation, company, or Person other than a natural person, shall mean
`
`that the following information shall be provided: the entity’s name; the place of incorporation or
`
`organization; the principal place of business; and the nature of the business conducted by that legal
`
`entity.
`
`9.
`
`“Infringe,” “Infringing,” “Infringed,” or “Infringement” are broadly defined to
`
`include direct
`
`infringement,
`
`indirect
`
`infringement, contributory
`
`infringement,
`
`induced
`
`infringement, literal infringement and/or infringement under the doctrine of equivalents.
`
`10.
`
`“Person” or “Persons” shall mean any natural person, legal entity or any business
`
`entity, including but not limited to any proprietorship, firm, partnership, corporation, association,
`
`
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`5
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 7 of 18 PageID# 12455
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`organization, or other legal entity. The acts of a Person shall include the acts of directors, officers,
`
`owners, members, employees, agents, attorneys, or other representatives acting on the Person’s
`
`behalf.
`
`11.
`
`12.
`
`“Plaintiffs” and “Reynolds” shall mean and refer to RAI and RJRV.
`
`“PM USA” shall mean and refer to Philip Morris USA, Inc., including without
`
`limitation all of its corporate locations, and all past or present directors, officers, agents,
`
`representatives, employees, consultants, attorneys, entities acting in joint venture, licensing
`
`agreements, or partnership relationships with PM USA, and others acting on behalf of PM USA.
`
`13.
`
`“PMP” shall mean and refer to Philip Morris Products S.A., including without
`
`limitation all of its corporate locations, and all past or present directors, officers, agents,
`
`representatives, employees, consultants, attorneys, entities acting in joint venture, licensing
`
`agreements, or partnership relationships with PMP, and others acting on behalf of PMP.
`
`14.
`
`“Product” or “Products” shall mean a machine, manufacture, apparatus, device,
`
`instrument, mechanism, appliance, composition of matter, assemblage of components/parts (either
`
`individually or collectively), process, or method which are designed to function together
`
`electrically, mechanically, chemically, or otherwise, to achieve a particular function or purpose,
`
`including those offered for sale, sold, or under development. “Product” or “Products” shall further
`
`include all “Altria Accused Products” or “Reynolds Accused Products” as defined in this section.
`
`15.
`
`“Relate to,” “Related to,” “Relating to,” or “Concerning” shall mean in any way
`
`concerning, constituting, comprising, containing, setting forth, summarizing, reflecting, stating,
`
`describing, recording, noting, embodying, mentioning, studying, analyzing, evaluating,
`
`discussing, contemplating, or referencing a specified subject either directly or indirectly.
`
`
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`6
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`16.
`
`“Reynolds Accused Product” or “Reynolds Accused Products” shall mean (i) the
`
`VUSE VibeTM power unit and associated flavor packs; (ii) the VUSE Alto® power unit and
`
`associated flavor packs; (iii) the VUSE Ciro® power unit and associated flavor packs, and/or (iv)
`
`VUSE Solo® power unit and associated flavor packs.
`
`17.
`
`“Reynolds Asserted Patents” means each and any of United States Patent
`
`No. 9,814,268 (“the ’268 patent”) and United States Patent No. 10,492,542 (“the ’542 patent”).1
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`“The ’268 patent” means United States Patent No. 9,814,268.
`
`“The ’542 patent” means United States Patent No. 10,492,542.
`
`“The ’265 patent” means United States Patent No. 9,814,265.
`
`“The ’556 patent” means United States Patent No. 10,555,556.
`
`“The ’911 patent” means United States Patent No. 10,104,911.
`
`“The ’545 patent” means United States Patent No. 6,803,545.
`
`“The ’374 patent” means United States Patent No. 10,420,374.
`
`INSTRUCTIONS
`
`1.
`
`In construing the deposition topics, the singular form of a word should be
`
`interpreted in the plural as well. Any pronoun shall be construed to refer to the masculine,
`
`feminine, or neuter gender as in each case is most appropriate. The words “and” and “or” shall be
`
`construed conjunctively or disjunctively, whichever makes the request most inclusive. The word
`
`“including” shall be without limitation. The terms “each” and “any” shall mean any and all.
`
`
`1 Plaintiffs have additionally asserted U.S. Patent Nos. 9,839,238 (“the ’238 patent”); 9,901,123
`(“the ’123 patent”); and 9,930,915 (“the ’915 patent”). Those patents have been stayed until the
`determination of the International Trade Commission in In the Matter of Certain Tobacco Heating Articles
`and Components Thereof (Inv. No. 337-TA-1199) becomes final. Once the stay is lifted, the term “Reynolds
`Asserted Patent(s),” as used in this document, will further encompass the ’238 patent, ’123 patent, and ’915
`patent.
`
`
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`7
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`2.
`
`Connective terms such as “and” or “or” shall be construed either disjunctively or
`
`conjunctively, as necessary, to bring within the scope of the topic all information which might
`
`otherwise be construed to be outside of its scope.
`
`3.
`
`Each Deposition Topic should be responded to based upon Your entire knowledge
`
`concerning that Topic, from all sources and all information in Your possession or otherwise
`
`available to You, including information from current and former officers, employees, agents,
`
`representatives, consultants, or attorneys and information which is known to each of them.
`
`DEPOSITION TOPICS
`Research, development, and testing of the Altria Accused Products.
`
`Manufacturing of the Altria Accused Products.
`
`Import of the Altria Accused Products into the U.S.
`
`The facts and circumstances related to any communications between Defendants
`
`1.
`
`2.
`
`3.
`
`4.
`
`and retailers regarding actual or potential display or sale of the Altria Accused Products in retail
`
`stores or on the Internet.
`
`5.
`
`The relationship between Defendants and any entity that supplies or has supplied
`
`parts, designs, or labor for the Altria Accused Products.
`
`6.
`
`The facts and circumstances related to Defendants’ planned or actual submission
`
`of PMTAs for the Altria Accused Products.
`
`7.
`
`8.
`
`The design, development, and operation of the Altria Accused Products.
`
`Internal and external identifiers for the Altria Accused Products, including product
`
`names, product numbers, part numbers, code numbers, SKUs, and any other similar identification
`
`systems.
`
`
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`8
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 10 of 18 PageID# 12458
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`9.
`
`The research and development, design, specification, function, operation,
`
`engineering, testing, analysis, structure, and/or components of the Altria Accused Products.
`
`10.
`
`The date the Altria Accused Products were first made, used, offered for sale, and
`
`sold in the United States.
`
`11.
`
`Any agreements between Defendants and any third parties concerning the design,
`
`development, structure, function, layout, operation, fabrication, production, manufacture, and/or
`
`testing of the Altria Accused Products or their components.
`
`12.
`
`13.
`
`14.
`
`The manufacturing process for the Altria Accused Products.
`
`The outsourcing of the manufacture of the Altria Accused Products.
`
`Documents and Communications related to and/or used in preparation of the IQOS
`
`PMTA and any other governmental submission for the Altria Accused Products.
`
`15.
`
`Defendants’ communications, including instructions, to consumers and end users
`
`concerning how to use the Altria Accused Products.
`
`16.
`
`The date that Defendants contend that Reynolds received notice of each Asserted
`
`Patent in accordance with 35 U.S.C. § 287, and the facts that support Reynolds’s contention.
`
`17.
`
`18.
`
`The identity of all current and former licensees to the Altria Asserted Patents.
`
`The identity of all current and former licensees who practice or have practiced, or
`
`whose products practice or have practiced, any claim of the Altria Asserted Patents.
`
`19.
`
`The identity of all of Defendants current or former product that practice or have
`
`practiced any claim of the Altria Asserted Patents.
`
`20.
`
`Negotiations or discussions between Defendants and third parties pertaining to the
`
`licensing of any patents, including the Altria Asserted Patents.
`
`
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`9
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 11 of 18 PageID# 12459
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`21.
`
`All facts and information supporting the allegations in Defendants’ amended
`
`counterclaims alleging Reynolds’s infringement of the Altria Asserted Patents was willful.
`
`22.
`
`Preparation and prosecution of, and communications with the United States Patent
`
`and Trademark Office regarding the Altria Asserted Patents.
`
`23.
`
`The chain of title for the Altria Asserted Patents, including the alleged ownership
`
`of these patents, any transfers, sales, assignments, and/or licensing of these patents, and any other
`
`financial interests in these patents, including the agreements by which Defendants obtained the
`
`’265 and ’374 patents.
`
`24.
`
`Defendants’ document retention policies, procedures, and practices, including the
`
`document retention policy through any acquisition or merger and the document retention policy
`
`pertaining to the present litigation, reflecting the policies regarding the retention of, for example,
`
`research notebooks,
`
`research
`
`results, memoranda,
`
`invention disclosures, e-mail, and
`
`correspondence (whether in hard-copy or electronic form).
`
`25.
`
`The history, corporate structure, and corporate direction and control of Defendants,
`
`including all parents, divisions, subsidiaries, partners, and affiliated companies
`
`26.
`
`From the first sale to the present on a quarterly basis, each Defendant’s gross
`
`revenue, net revenue, gross units sold, net units sold, gross profit, operating profit, and net profit
`
`derived from sales of each of the Altria Accused Products in the U.S., the method by which such
`
`amounts were computed, and the source of such information.
`
`27.
`
`From the first sale to the present on a quarterly basis, each Defendant’s costs related
`
`to the sales of each of the Altria Accused Products in the U.S., including variable costs, fixed costs,
`
`cost of sales, operating costs, sales and marketing costs, any allocated costs (and the basis for such
`
`allocation), and any other research and development or general and administrative costs.
`
`
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`10
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 12 of 18 PageID# 12460
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`28.
`
`From the present to December 31, 2023, on a quarterly basis, each Defendant’s
`
`projected gross revenue, net revenue, gross units sold, net units sold, gross profit, net profit,
`
`derived from sales of each of the Altria Accused Products in the U.S., and the method by which
`
`such amounts were computed.
`
`29.
`
`Defendants’ accounting practices with respect to the Altria Accused Products,
`
`including but not limited to Defendants’ methods of accounting for revenues, costs and profits,
`
`methods of depreciation, allocation of expenses, inventory measurements, profit allocation, losses
`
`and assignment of debts, and Defendants’ method of allocating between U.S. and worldwide
`
`revenue.
`
`30.
`
`31.
`
`U.S.
`
`Pricing and pricing strategy for the Altria Accused Products in the U.S.
`
`Sales and distribution agreements relating to the Altria Accused Products in the
`
`32.
`
`Bills of Materials for the Altria Accused Products, including the identification and
`
`description of the databases that Defendants used to create the Bills of Materials, the source of the
`
`data reflected in each of the Bills of Materials, the definition of each worksheet and each field
`
`provided in each of the Bills of Materials, and how Defendants use the data in each of the Bills of
`
`Materials, including for business forecasting, business planning, and financial planning.
`
`33.
`
`The costs for the research and development of the Altria Accused Products,
`
`Defendants’ investment in the Altria Accused Products, Defendants’ decision to develop the Altria
`
`Accused Products, and Defendants’ decision to go to market in the U.S. with the Altria Accused
`
`Products.
`
`34.
`
`Forecasts concerning the expected sales and profitability of the Altria Accused
`
`Products in the U.S.
`
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`35. Marketing, advertising, and promotion of the Altria Accused Products in the U.S.,
`
`including any marketing and advertising plans and strategy.
`
`36.
`
`The features and benefits of the Altria Accused Products as compared to other
`
`competitive products on the market, the factors that lead to consumer demand for the Altria
`
`Accused Products in the U.S., and any comparative testing or surveys comparing the Altria
`
`Accused Products to any other products.
`
`37.
`
`Consumer surveys, focus groups, or other consumer feedback concerning the Altria
`
`Accused Products in the U.S.
`
`38.
`
`Non-infringing alternatives to the asserted claims of the Robinson ’268 Patent, and
`
`the alleged features and benefits of those non-infringing alternatives as compared to the asserted
`
`claims of the Robinson ’268 Patent.
`
`39.
`
`Non-infringing alternatives to the asserted claims of the Worm ’542 Patent, and the
`
`alleged features and benefits of those non-infringing alternatives as compared to the asserted
`
`claims of the Worm ’542 Patent.
`
`40.
`
`Any valuation of the Robinson ’268 Patent or the Worm ’542 Patent or any of the
`
`related patents, including any analysis or investigation regarding the potential value of those
`
`patents, and the roles and responsibilities of all involved persons.
`
`41.
`
`The Accord product’s performance and acceptance by consumers, and Philip
`
`Morris’s decision to pull the Accord product from the market.
`
`42.
`
`The markets for e-cigarette technology, including (a) the types or categories of uses
`
`for such products; (b) the major competitors with respect to each type or category of uses fur such
`
`products; (c) the primary customers and/or distributors for such products; and (d) each defendant’s
`
`
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`12
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 14 of 18 PageID# 12462
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`market position for such products with respect to pricing, market share, sales volumes, and product
`
`quality.
`
`43.
`
`The Intellectual Property License Agreement between Altria Group, Inc. and JUUL
`
`Labs, Inc. entered into on December 20, 2018.
`
`44.
`
`The negotiation and acquisition of the ’265 and ’374 Patents, and the price for the
`
`acquisition.
`
`45.
`
`46.
`
`47.
`
`Any valuation of any of the Altria Asserted Patents.
`
`Any attempt to license or discussion re licensing the Altria Asserted Patents.
`
`Any settlement agreements, licenses, or patent acquisitions executed by Defendants
`
`(including affiliates) or for the benefit of the Defendants covering patents or patent applications
`
`related to e-cigarette technology, including but not limited to (i) any agreement, license, or patent
`
`acquisition covering the Altria Asserted Patents; (ii) any agreement, license, or patent acquisition
`
`that Defendants contend is comparable to a license for the Altria Asserted Patents such that it
`
`would be relevant to a hypothetical negotiation analysis; (iii) the Fontem-Nu Mark Agreement
`
`licensing the Fontem patents to Nu Mark, and communications and negotiations relating to the
`
`agreements, licenses, and patent acquisitions identified above.
`
`48.
`
`49.
`
`Non-infringing alternatives to each of the Altria Asserted Patents.
`
`The alleged advantages of each of the Altria Asserted Patents as compared to the
`
`prior art or to the non-infringing alternatives available in the marketplace at the time of the
`
`hypothetical negotiation.
`
`50.
`
`The components of the Reynolds Accused Products that Defendants allege the
`
`asserted claims of the Altria Asserted Patents are implemented.
`
`
`
`13
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 15 of 18 PageID# 12463
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`51.
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`The decision to withdraw Defendants’ e-vapor products, including the MarkTen,
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`MarkTen Elite, and Green Smoke products, from the market in 2018.
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`52.
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`Any decision made not to use the technology claimed in the Altria Asserted Patents
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`in any of Defendants’ products, or the products of Altria Group, Inc.’s licensee JUUL Labs.
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`53.
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`The features and benefits of the Reynolds Accused Products compared to other
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`competitive products that are or were on the market, the factors that lead to consumer demand for
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`the Reynolds Accused Products, and any comparative testing, consumer feedback, or surveys
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`comparing the Reynolds Accused Products with other competing products that are or were on the
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`market, including but not limited to JUUL, Nu Mark’s MarkTen, MarkTen Elite, and Green Smoke
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`products, and other leading products on the market.
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`54.
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`Defendants’ business plans from 2012 to the present concerning Defendants’ plans
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`and strategies for competing in the market for vaping products.
`
`55.
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`56.
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`Defendants’ policies regarding intellectual property licensing.
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`Defendants’ practices, policies, and strategies relating to patents, including patent
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`clearances, right-to-use opinions, entry into agreements relating to patent licenses, licensing of
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`Defendants’ patents to others, licensing by Defendants of others’ patents, strategies relating to
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`monetization of Defendants’ patent portfolio, including but not limited to the policies and practices
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`implemented in any license or agreement to which Defendants are a party or that Defendants have
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`produced in this Litigation.
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`57.
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`The conception and reduction to practice of the Altria Asserted Patents, including
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`any notebooks, invention disclosure forms, notes, memos, emails, letters, reports, project
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`proposals, timelines, drawings, sketches, product specifications, schematics, and prototypes
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`
`
`14
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 16 of 18 PageID# 12464
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`prepared in connection with the conception, development, and reduction to practice of the alleged
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`invention(s) described or claimed in each Altria Asserted Patent.
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`58.
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`The nature and scope of each Named Inventor’s contribution to the claimed subject
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`matter of each Altria Asserted Patent, including the identity and contributions of any persons
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`(whether or not named on the face of the Altria Asserted Patent) who made contributions to the
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`claimed subject matter.
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`59.
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`Defendants’ patent prosecution policies and practices during the prosecutions of
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`the Altria Asserted Patents and related patents, including without limitation: (i) documenting
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`conception, reduction to practice, and diligence in reducing practice; (ii) identifying inventors on
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`patent applications; (iii) identifying and disclosing information material to patentability to the PTO
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`and meeting similar duties to foreign patent offices; and (iv) monetary or other incentives offered
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`or awarded for obtaining a patent.
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`60.
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`Defendants’ knowledge and understanding of facts relating to the preparation and
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`prosecution of the Altria Asserted Patents and related patents.
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`61.
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`All prior art ever identified by any Defendant, a Named Inventor, any other person
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`who contributed to the claimed subject matter of any Altria Asserted Claim, or any Third Party
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`with regard to any Altria Asserted Patents, or Related Patents, and the timing and circumstances
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`regarding Defendants’ knowledge or awareness of any such Prior Art. This Topic includes the
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`timing and circumstances of Defendants’ first awareness of the following references: U.S. Patent
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`No. 4,947,874 (“Brooks”), U.S. Patent No. 5,372,148 (“McCafferty”).
`
`62.
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`The research, development, and design of any electronic smoking device by the
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`Named Inventors of the Altria Asserted Patents, including but not limited to the Accord, Oasis,
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`MarkTen, Green Smoke, and IQOS products and the components of same.
`
`
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`15
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 17 of 18 PageID# 12465
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`63.
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`Defendants’ use of lithium ion batteries in electric smoking systems and/or
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`electronic nicotine delivery systems, including both commercialized and uncommercialized
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`products, and including Defendants’ associated development activities such as research, testing,
`
`prototyping, engineering, and the like, both before and after the filing and issuance of the ’545
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`patent.
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`64.
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`Defendants’ use of pulse width modulation (PWM) and other power management
`
`and regulation circuitry in electric smoking systems and/or electronic nicotine delivery systems,
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`including both commercialized and uncommercialized products, and including Defendants’
`
`associated development activities such as research, testing, prototyping, engineering, and the like,
`
`both before and after the filing and issuance of the ’545 patent.
`
`65.
`
`Defendants’ use of puff sensors such as capacitive pressure sensors, pressure
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`switches, airflow sensors, Hall effect sensors, or the like in electric smoking systems and/or
`
`electronic nicotine delivery systems, including both commercialized and uncommercialized
`
`products, and including Defendants’ associated development activities such as research, testing,
`
`prototyping, engineering, and the like, both before and after the filing and issuance of the ’374
`
`patent.
`
`66.
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`Defendants’ communications and dealings with Loi Ying Liu, Stapler Li, Henry
`
`Lam, Smart Chip Microelectronic Company, Minilogic Device Corporation, and any other
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`individual or entity associated with the filing and prosecution of the ’374 patent or related patents,
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`both before and after the execution of Intellectual Property Purchase Agreement between Smart
`
`Chip and Defendant ACS.
`
`67.
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`Any benchmarking, teardown, testing, inspection, reverse engineering, imaging,
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`evaluation, or other analysis of, and any disposal and/or destruction of, any electric smoking
`
`
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`16
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`Case 1:20-cv-00393-LO-TCB Document 560-1 Filed 04/15/21 Page 18 of 18 PageID# 12466
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`system or electronic nicotine delivery system made by a party other than Defendants and their
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`affiliates, including: Eclipse, Ruyan Vegas, Ruyan E-gar, Ruyan C-Gar, E-Mystick, IOLITE
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`Vaporizer, Blue Classic Tobacco Disposable, Blu Xprss Kit, Logic Power Series rechargeable,
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`NJOY King, and rechargeable, Greensmartliving, Vapor Corp, Blu GLO, Vype eStick, Elite, and
`
`the Ruyan devices.
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`
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`
`
`17
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