Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 1 of 11 PageID# 13993
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`RAI STRATEGIC HOLDINGS, INC. AND R.J.
`REYNOLDS VAPOR COMPANY
`
`
`Plaintiffs and
`Counterclaim Defendants,
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`
`v.
`
`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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`COUNTERCLAIM PLAINTIFFS’ MOTION TO COMPEL DEPOSITION DATES
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 2 of 11 PageID# 13994
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`
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
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`FACTUAL BACKGROUND ..............................................................................................2
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`A.
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`B.
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`Reynolds Refuses To Provide An Alternate Date For Mr. Kodama’s
`Deposition ................................................................................................................2
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`Reynolds Refuses To Provide A Date For
`
` Deposition .........................2
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`III.
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`ARGUMENT .......................................................................................................................4
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`A.
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`B.
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`Reynolds Must Provide An Alternate Deposition Date for Mr. Kodama’s
`Deposition ................................................................................................................4
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`Reynolds Must Provide A Date For
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` Deposition...................................5
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`IV.
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`CONCLUSION ....................................................................................................................6
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 3 of 11 PageID# 13995
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`
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`TABLE OF AUTHORITIES
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`CASES
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`Genentech, Inc. v. Trustees of Univ. of Pa.,
`No. 10-cv-2037, 2011 WL 7074208 (N.D. Cal. June 10, 2011) ................................................. 5
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`ii
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 4 of 11 PageID# 13996
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`
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`I.
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`INTRODUCTION
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`This case has been pending for 13 months, and the Final Pretrial Conference will take place
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`next week, on May 21. Throughout this case, Counterclaim Defendants (“Reynolds”) have stalled,
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`delayed, and frustrated the Court’s schedule and needlessly complicated the parties’ trial
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`preparations.
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`First, Reynolds has refused to move the deposition date for its technical expert on two of
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`the asserted patents, Mr. Kelly Kodama, in order to accommodate the attorney who is taking it and
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`became seriously ill. This issue should be straightforward. PMP/Altria informed Reynolds that
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`the attorney with principal responsibility for the patents at issue and Mr. Kodama’s deposition
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`unexpectedly developed a serious illness. This illness prevents him from taking the deposition on
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`May 17, or facilitating another attorney’s ability to take the deposition. Reynolds refused to make
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`Mr. Kodama available on any other date. PMP/Altria requests that the Court order Reynolds to
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`provide an alternate date for Mr. Kodama’s deposition.
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`Second, Counterclaim Plaintiffs (“PMP/Altria”) have already been forced to compel
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`Reynolds to provide basic discovery, including source code, technical documents, and depositions.
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`Yet, Reynolds continues its pattern of delay tactics, and now refuses to provide dates for its
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`remaining fact depositions—some of which have been pending for seven months. Reynolds has
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`refused to provide (i) a date for the personal deposition of Reynolds’ witness
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`, and
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`(ii) dates for PMP/Altria’s 30(b)(6) Topics 22, and 79-96. The Court recently ordered that any
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`remaining fact depositions “will be done closely within” the date of the Final Pretrial Conference,
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`May 21. Ex. 1 (4/16/2021 Transcript) at 12. The Court should compel Reynolds to provide dates
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`for the requested depositions before the end of May.
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`1
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 5 of 11 PageID# 13997
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`
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`II.
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`FACTUAL BACKGROUND
`A.
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`Reynolds Refuses To Provide An Alternate Date For Mr. Kodama’s
`Deposition
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`The parties initially agreed that Mr. Kodama’s deposition would take place on May 10. On
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`May 7, PMP/Altria notified Reynolds that the attorney scheduled to take Mr. Kodama’s deposition
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`had fallen seriously ill and requested that the deposition be rescheduled. On Wednesday evening,
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`May 12, Reynolds informed PMP/Altria that Mr. Kodama was available for deposition on May
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`17. PMP/Altria’s counsel called Reynolds’ counsel the next day, informing counsel that the
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`attorney’s medical condition unfortunately remained serious and ongoing, which prevented him
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`from taking the deposition or facilitating another attorney’s ability to take the deposition.
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`PMP/Altria asked whether Mr. Kodama could be made available the week of May 24. Reynolds
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`responded on May 14, refusing to provide an alternate date and stating that Mr. Kodama would
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`appear on May 17 only and would not be made available for deposition again. Ex. 2 (5/14/2021
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`N. Smith email).
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`B.
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`Reynolds Refuses To Provide A Date For
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` Deposition
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`On October 20, 2020, PMP/Altria served a 30(b)(6) notice on Reynolds, which included
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`numerous topics pertaining to PMP/Altria’s counterclaims. Ex. 3 (10/20/20 30(b)(6) Deposition
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`Notice to Reynolds). One of the noticed topics was Topic 22, which seeks the facts and
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`circumstances relating to
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`. Id. at 10. Reynolds did not
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`provide a witness on Topic 22 before the Court stayed the case on December 4, 2020. Dkts. 426,
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`432.
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`When the Court lifted the stay on PMP/Altria’s Counterclaim Patents only on February 16,
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`2021 (Dkt. 456), PMP/Altria promptly sought a new deposition date for Reynolds’ designee on
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`2
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`Topic 22 (and other topics), on February 26, 2021. Reynolds changed its designated witness for
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`Topic 22 to
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` on March 8, and PMP/Altria served a personal deposition notice for
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` on March 30. Ex. 4 (3/30/21 Figlar Notice of Deposition). Reynolds agreed to produce Dr.
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` for deposition on April 9.
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`Shortly before
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` scheduled April 9 deposition, Reynolds postponed the
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`deposition until April 16. Shortly before the scheduled April 16 deposition, Reynolds again
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`postponed the deposition so that
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` could address an additional 30(b)(6) topic (Topic 79)
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`relating to PMP’s request for injunctive relief, served on March 12, 2021. Ex. 5 (3/12/2021
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`30(b)(6) Deposition Notice to Reynolds). PMP/Altria asked Reynolds to provide a new date for
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` deposition the week of April 19. Reynolds did not provide a new date for
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`deposition.
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`On April 21, PMP/Altria served additional 30(b)(6) topics relating to PMP’s request for
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`injunctive relief. Ex. 6 (4/21/2021 30(b)(6) Deposition Notice to Reynolds). The next day,
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`Reynolds stated that it was “withdrawing” its designation of
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` on Topics 22 and 79, and
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`refused to make
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` (or any other witness) available on those topics at that time. Ex. 7
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`(4/22/2021 A. Smith letter). Reynolds also unilaterally withdrew
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` personal deposition
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`indefinitely, stating that it would only “schedule the injunction-related topics and
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`30(b)(1) deposition after we receive a new date” for PMP’s witness on injunctive relief topics. Ex.
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`8 (4/27/2021 N. Smith email).
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`Reynolds designated
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` as its corporate designee for other 30(b)(6) topics (Topics
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`54, 69, and 78), but only after the Court ordered Reynolds to provide a witness on these topics.
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`Dkt. 566. PMP/Altria deposed
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` on Topics 54, 69, and 78 on May 3, 2021, but Reynolds
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`refused to make
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` available in his personal capacity, or on Topics 22, 79, or any other
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 7 of 11 PageID# 13999
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`injunctive relief topic, on that date.
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`PMP/Altria repeatedly asked Reynolds to provide a date for
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` personal
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`deposition, and to identify witnesses and dates for Topics 22, 79, and the remaining injunctive
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`relief topics (Topics 80-96). PMP also provided dates for its own witnesses on Reynolds’
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`injunctive relief topics. Exs. 9-10 (5/4/21 J. Koh letter; 5/6/21 J. Koh email). Following a week
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`of silence, Reynolds refused to accept any of PMP’s proposed deposition dates, and continued to
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`refuse to provide any deposition dates for its outstanding depositions of
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` and Topics 22,
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`79-96.
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`The parties met and conferred on May 13, 2021. While Reynolds stated that
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`could be made available for deposition in early to mid-June if it believed PMP/Altria had complied
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`with Reynolds’ discovery requests, it continues to refuse to provide a specific date for his
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`deposition. Ex. 2 (5/14/2021 N. Smith email).
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`III. ARGUMENT
`A.
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`Reynolds Must Provide An Alternate Deposition Date for Mr. Kodama’s
`Deposition
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`Reynolds must be ordered to provide an alternate date for Mr. Kodama’s deposition. The
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`attorney in charge of taking Mr. Kodama’s deposition has remained in serious condition that he
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`has been unable to participate in any deposition preparation with other team members. To the
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`extent helpful, PMP/Altria is willing to disclose further details of the attorney’s illness to the Court.
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`PMP/Altria asked for a new deposition date the week of May 24, and Reynolds refused to provide
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`any alternate date. Ex. 11 (5/14/2021 N. Smith email). While we understand that this situation
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`has caused an inconvenience to Mr. Kodama and Reynolds’ counsel to re-arrange their schedule
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`to accommodate a serious medical issue, Reynolds has provided no reason why they cannot do so.
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 8 of 11 PageID# 14000
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`
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`B.
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`Reynolds Must Provide A Date For
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` Deposition
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`Reynolds must be ordered to provide dates for
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` personal deposition and for
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`30(b)(6) deposition topics that have been pending for months. Reynolds has refused to provide a
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`witness for Topic 22, which has been pending for over seven months. Fact depositions closed on
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`April 19, yet Reynolds has provided no testimony on the topic. Reynolds has also refused to
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`provide a date for
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` personal deposition, which was noticed in March 2021. And
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`Reynolds has refused to provide dates for any of PMP’s injunctive relief 30(b)(6) topics (Topics
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`79-96), noticed in March and April. By contrast, PMP promptly provided dates in response to
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`Reynolds’ injunctive relief 30(b)(6) topics in May. Although Reynolds asserts that it need not
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`provide any dates because it believes PMP’s designation of witnesses is somehow deficient,
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`Reynolds’ now familiar “tit-for-tat” argument is improper, unsupported, and irrelevant to this
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`Motion. Genentech, Inc. v. Trustees of Univ. of Pa., No. 10-cv-2037, 2011 WL 7074208, at *1
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`(N.D. Cal. June 10, 2011) (“The Court does not look favorably upon a ‘tit-for-tat’ approach to
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`discovery.… A party may not excuse its failure to comply with discovery obligations by claiming
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`that its opposing party is similarly delinquent.”) (citation and footnote omitted).
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`The Court ordered the parties to conduct any remaining fact depositions close to the date
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`of the final pretrial conference, May 21. 4/16/2021 Transcript at 12. Yet, Reynolds continues to
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`refuse to provide dates for the remaining 30(b)(6) topics, and a date for
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` personal
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`deposition. Though PMP/Altria is loath to bother the Court, Reynolds’ inaction has forced
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`PMP/Altria to file yet another motion. The Final Pretrial Conference is quickly approaching, and
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`the parties have been directed to promptly complete remaining discovery. PMP/Altria respectfully
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`requests that Reynolds be directed to produce witnesses before the end of May with regard to these
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`undisputedly relevant topics.
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 9 of 11 PageID# 14001
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`IV. CONCLUSION
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`PMP/Altria respectfully requests that the Court grant this Motion and compel Reynolds to
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`provide (i) an alternate date for Mr. Kodama’s deposition; (ii) a date for
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` personal
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`deposition, and (iii) date(s) for PMP/Altria’s 30(b)(6) Topics 22 and 79-96, before the end of May
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`2021.
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`Dated: May 14, 2021
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` Respectfully submitted,
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`By: /s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`(max.grant@lw.com)
`Lawrence J. Gotts (VSB No. 25337)
`lawrence.gotts@lw.com
`Matthew J. Moore (pro hac vice)
`matthew.moore@lw.com
`Jamie Underwood (pro hac vice)
`jamie.underwood@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Clement J. Naples (pro hac vice)
`clement.naples@lw.com
`LATHAM & WATKINS LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200; Fax: (212) 751-4864
`
`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
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`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
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`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Tel: (312) 876-7700; Fax: (312) 993-9767
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`Counsel for Defendants-Counterclaim Plaintiffs
`Altria Client Services LLC, Philip Morris USA
`Inc., and Philip Morris Products S.A.
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`Case 1:20-cv-00393-LO-TCB Document 616 Filed 05/14/21 Page 11 of 11 PageID# 14003
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 14th day of May, 2021, 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/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`Email: max.grant@lw.com
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`Counsel for Defendants-Counterclaim
`Plaintiffs Altria Client Services LLC, Philip
`Morris USA Inc., and Philip Morris
`Products S.A.
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