Case 1:20-cv-00393-LO-TCB Document 624 Filed 05/19/21 Page 1 of 14 PageID# 14121
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs,
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`v.
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`
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.
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`Defendants.
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`
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`
`
`Civil Action No. 1:20-cv-393
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`PHILIP MORRIS PRODUCTS S.A.’S OPPOSITION TO REYNOLDS’ MOTION TO
`COMPEL RULE 30(B)(6) WITNESSES RELATING TO INJUNCTIVE RELIEF
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`Case 1:20-cv-00393-LO-TCB Document 624 Filed 05/19/21 Page 2 of 14 PageID# 14122
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`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION ...............................................................................................................1
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`II.
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`FACTUAL BACKGROUND ..............................................................................................3
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`III.
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`ARGUMENT .......................................................................................................................5
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`A.
`B.
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`C.
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`PMP Has Already Agreed To Provide Witnesses For Topics 68, 70, 72 ................5
`Reynolds Fails To Show That A PMP Deposition Is Warranted On Topics
`76 And 83 .................................................................................................................7
`Reynolds Fails To Show That Topic 69 Is Relevant To PMP’s Request For
`A Permanent Injunction ...........................................................................................7
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`IV.
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`CONCLUSION ....................................................................................................................9
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`i
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`Case 1:20-cv-00393-LO-TCB Document 624 Filed 05/19/21 Page 3 of 14 PageID# 14123
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`800 Adept, Inc. v. Murex Secs., Ltd.,
`505 F. Supp. 2d 1327 (M.D. Fla. 2007) (reversed on other grounds)........................................8
`
`Banga v. Ameriprise Auto Home Ins. Agency,
`No. 2:18-cv-01072, 2021 WL 634955 (E.D. Cal. Feb. 18, 2021) .............................................5
`
`Mintel Int’l Gr., Ltd. v. Neerghen,
`No. 08 CV 3939, 2008 WL 4936745 (N.D. Ill. Nov. 17, 2008) ............................................5, 6
`
`TiVo Inc. v. EchoStar Commc’ns,
`446 F. Supp. 2d 664 (E.D. Tex. 2006) (reversed on other grounds)..........................................8
`
`Trs. of Boston Univ. v. Everlight Elecs. Co., Ltd.,
`No. 12-cv-11935-PBS, 2014 WL 5786492 (D. Mass. Sept. 24, 2014) .....................................7
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`ii
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`I.
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`INTRODUCTION
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`This is yet another in a litany of motions by Counterclaim Defendant (“Reynolds”) that
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`should never have been filed. Perhaps hoping to obscure the issues surrounding its own discovery
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`delay and dissembling, as set forth in Counterclaim Plaintiffs Altria Client Services, LLC (“ACS”),
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`Philip Morris USA Inc. (“PM USA”), and Philip Morris Products S.A. (“PMP”) motion to compel
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`near-term deposition dates (Dkt. 615), Reynolds filed this motion knowing well that no genuine
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`dispute remains with regard to virtually all of the relief Reynolds seeks (i.e., as to Topics 68, 70,
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`72, 76, and 83). With regard to the sole remaining topic in dispute, Topic 69, Reynolds provides
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`no support for its relevance and its motion is at best premature. Reynolds’ motion should be
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`denied.
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`First, Reynolds seeks to compel a witness on Topics 68, 70, and 72, directed to the factual
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`bases underlying PMP’s contention that PMP is entitled to injunctive relief. In responses to these
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`topics, PMP unequivocally designated two witnesses,
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`, to address the
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`full scope of Reynolds’ topics (subject only to PMP’s objections), and has provided proposed dates
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`for their depositions—all well before Reynolds moved. PMP could not have been clearer on this,
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`stating: “Together,
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` will cover all aspects of Topics 68, 70, and 72,
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`subject to PMP’s objections.” (Dkt. 610-12 at 1.) Reynolds’ assertion that PMP has somehow
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`narrowed the topics or refused to provide a witness on their full scope is belied by the
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`correspondence. In order to facilitate Reynolds’ preparation, PMP elaborated on the categories of
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`subject matter that each witness would address, and further offered to discuss any remaining
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`questions Reynolds might have regarding the specific subject matters each witness would cover.
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`PMP did not refuse to provide a witness on the full non-objectionable scope, and expressly said so
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`1
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`to Reynolds.1 Reynolds’ attempt to manufacture a dispute as to Topics 68, 70, and 72, where there
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`is none, should be rejected because it was moot before Reynolds moved.
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`Second, Reynolds seeks to compel a witness on Topics 76 and 83, which seek the “drivers
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`of demand for the Reynolds Accused Products” and “PMP’s contentions regarding whether and to
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`what extent Reynolds would suffer any hardships if the Reynolds Accused Products were
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`enjoined,” respectively. As is apparent from the topics themselves, these topics are directed to
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`information in Reynolds’ possession—not PMP’s. Reynolds, not PMP, has information regarding
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`the demand for its products, and Reynolds, not PMP, has knowledge regarding its contentions of
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`hardships. While this could be a subject of expert testimony, PMP’s corporate fact witnesses most
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`certainly are not competent to testify as to the demand for Reynolds’ products or hardships to
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`Reynolds. PMP made plain that its corporate fact witnesses have no testimony to offer on these
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`topics. PMP has already provided its detailed contentions on these topics in a 35-page
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`interrogatory response (Dkt. 610-13), and will provide any expert testimony at the appropriate
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`time. Reynolds’ motion to compel Topics 76 and 83 should also be denied.
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`Third, Reynolds seeks to compel a witness on Topic 69, which seeks “each fact that PMP
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`alleges supports PMP’s request for a permanent injunction and that was not present and/or known
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`to PMP on or before June 29, 2020 [when PMP filed its counterclaims], including when each such
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`fact became known to PMP.” Although the timing of when PMP learned each supporting fact may
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`arguably have had some bearing on the timeliness of PMP’s motion to amend to seek a permanent
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`injunction (a matter already decided), it has no relevance to the grant of a permanent injunction.
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`And despite PMP’s repeated requests for any authority otherwise, Reynolds provided none. If
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`1 PMP’s objections did not narrow the scope of PMP’s designations to the topics enumerated for
`each witness, but rather were directed to issues such as privilege, calling for expert testimony, and
`the like. (Dkt. 610-2 at 5-10.)
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`2
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`Reynolds had such authority (its brief cites none), Reynolds should have provided it to PMP before
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`declaring an impasse and filing its motion. If it has no such authority, its topic is directed to
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`irrelevancies. Either way, Reynolds’ motion to compel Topic 69 should be denied.
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`II.
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`FACTUAL BACKGROUND
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`On March 12, 2021, the Court granted PMP’s motion for leave to amend its counterclaims
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`to include the remedy of injunctive relief. (Dkt. 483.) In granting PMP’s motion for leave to
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`amend, the Court allowed the parties to engage in additional discovery “concerning, but limited
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`to, Defendant’s counterclaim for injunctive relief.” Id. The Court ordered the parties to respond
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`to any discovery requests regarding injunctive relief within 14 days. Id. With the exception of
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`injunctive relief discovery, fact discovery in the case closed on April 12, 2021. (Dkt. 461.)
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`On April 7, 2021, Reynolds served a Rule 30(b)(6) Notice on PMP, with topics relating to
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`injunctive relief. (Dkt. 610-1.) Reynolds’ Topic 68 seeks the “factual bases underlying PMP’s
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`contention, including PMP’s response to Interrogatory Nos. 23–24, that (i) PMP has suffered
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`irreparable injury, (ii) remedies available at law, such as monetary damages, are inadequate to
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`compensate for that injury, (iii) considering the balance of hardships between PMP and Reynolds,
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`a remedy in equity is warranted, and (iv) the public interest would be properly served by a
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`permanent injunction.” (Dkt. 610-2 at 5.) On April 9, PMP served its 35-page response to
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`Reynolds’ Interrogatory Nos. 23-24, providing the factual and legal bases for PMP’s contention
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`that PMP is entitled to injunctive relief. (Dkt. 610-13.)
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`On April 21, PMP timely served its objections and responses to Reynolds’ Rule 30(b)(6)
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`Notice. (Dkt. 610-2.) PMP responded that it would produce one or more witnesses reasonably
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`prepared to testify about the topics, including Topic 68, “with respect to the factual bases for
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`PMP’s responses to Interrogatory Nos. 23-24,” and Topic 70, with respect to “the factual bases for
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`the irreparable injury to PMP if a permanent injunction is not entered in this case.” Id. at 6, 8.
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`3
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`That same day, PMP identified
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` as one of its designees for several noticed topics.
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`(Dkt. 610-3.)
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`On May 4, PMP designated
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` for Reynolds’ remaining Rule
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`30(b)(6) topics. PMP designated
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` for Topics 68, 70, 72, and specified
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`that
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`. (Dkt. 610-8 at 1.) PMP provided this information
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`to Reynolds so that Reynolds would understand which witness would address particular subject
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`matter for each topic. By letter dated May 13, PMP stated that “[t]ogether,
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` will cover all aspects of Topics 68, 70, and 72, subject to PMP’s objections,” and that if
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`Reynolds had “any remaining questions as to whether specific subject matter would be covered by
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`, we are available to discuss.” (Dkt. 610-12 at 1.) Reynolds did not
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`follow up, but instead filed the instant motion the next day.2
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`With respect to Topics 76 (“drivers of demand for the Reynolds Accused Products”) and
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`Topic 83 (“PMP’s contentions regarding whether and to what extent Reynolds would suffer any
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`hardships if the Reynolds Accused Products were enjoined”), PMP explained to Reynolds that it
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`did not intend to offer any of its own fact witnesses to provide testimony on these contention topics,
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`and that therefore a corporate deposition of PMP was not warranted. (Dkt. 610-12 at 2.)
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`With respect to Topic 69 (“each fact that PMP alleges supports PMP’s request for a
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`permanent injunction and that was not present and/or known to PMP on or before June 29, 2020,
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`2 PMP informed Reynolds once again on May 13 and 14 that no impasse had been reached, but
`was met by Reynolds’ unexplained denial followed by the present motion. (Ex. 1 (5/14/21 J. Koh
`email).)
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`4
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`including when each such fact became known to PMP”), PMP asked Reynolds for the relevance
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`of this Topic to PMP’s request for injunctive relief, given that the Court had already granted PMP’s
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`motion for leave to amend to include the remedy of injunctive relief. (Dkts. 610-8 at 2, 610-12 at
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`2.) Reynolds failed to provide any support for relevance of this topic to the factors for granting a
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`permanent injunction.
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`III. ARGUMENT
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`A.
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`PMP Has Already Agreed To Provide Witnesses For Topics 68, 70, 72
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`Reynolds’ motion to compel a witness for Topics 68, 70, and 72 is moot. PMP confirmed
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`that “
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` will cover all aspects of Topics 68, 70, and 72, subject to PMP’s
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`objections.” (Dkt. 610-12 at 1 (emphasis added).) In its objections, PMP did not narrow the
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`subject matter scope. Nothing remains to compel. See, e.g., Banga v. Ameriprise Auto Home Ins.
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`Agency, No. 2:18-cv-01072, 2021 WL 634955, at *4 (E.D. Cal. Feb. 18, 2021) (denying motion
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`to compel 30(b)(6) deposition as moot because party had already agreed to produce a witness on
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`the topics); Mintel Int’l Gr., Ltd. v. Neerghen, No. 08 CV 3939, 2008 WL 4936745, at *4 (N.D.
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`Ill. Nov. 17, 2008) (“Since Datamonitor has been willing to submit Mr. Grey for deposition, there
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`is no reason to compel them to do so.”).
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`Reynolds argues that PMP allegedly “changed its position” in providing witnesses on
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`Topics 68, 70, and 72, because PMP allocated certain subject matter between its designated
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`witnesses
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`. (Dkt. 610 at 4.) However, as PMP explained to Reynolds,
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`PMP did not withdraw its agreement to produce witnesses on these topics. PMP provided the
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`5
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`subject matter delineations to Reynolds to provide guidance as to what factual aspects of PMP’s
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`interrogatory response on injunctive relief each witness would cover.3
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`Reynolds argues that PMP’s subject matter designations for
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`“fail to fully address” the eBay factors such as irreparable harm and public interest. (Dkt. 610 at
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`7.) But as PMP already explained to Reynolds, the facts that
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` will testify
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`collectively pertain to all four eBay factors for a permanent injunction.
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`Reynolds further argues that
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` subject matter allocations are “at
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`best a subset of the relevant issues.” (Dkt. 610 at 7.) But PMP confirmed that it designated
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`, and no one else, on these Topics, and that the two witnesses would address
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`the full scope of the topics. (Dkt. 610-12 at 1.) PMP also informed Reynolds that if it had any
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`remaining questions as to whether specific subject matter pertaining to PMP’s factual bases for
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`injunctive relief would be covered by
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`, PMP was “available to discuss.”
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`(Dkt. 610-12 at 1.) Rather than discuss the delineations of the subject matter between the two
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`PMP witnesses, Reynolds filed the instant motion. (Ex. 1 (5/14/21 J. Koh email).) Had Reynolds
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`properly engaged in a required meet and confer, “this issue should have been addressed without
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`court intervention.” Mintel, 2008 WL 4936745, at *4.
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`In sum, as PMP has informed Reynolds, its two designees will collectively testify regarding
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`the full scope of these topics subject to PMP’s non-scope objections, and Reynolds’ motion should
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`be denied as moot.
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`3 In instances where Reynolds designated more than one witness for a particular topic, it similarly
`identified the subject matter delineations for its witnesses. (See Dkt. 610-12 at 1.)
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`6
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`B.
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`Reynolds Fails To Show That A PMP Deposition Is Warranted On Topics 76
`And 83
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`Reynolds fails to show that a PMP fact witness is needed on Topics 76 and 83. Topic 76
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`seeks the “drivers of demand for the Reynolds Accused Products,” and Topic 83 seeks “PMP’s
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`contentions regarding whether and to what extent Reynolds would suffer any hardships if the
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`Reynolds Accused Products were enjoined.” The demand associated with Reynolds’ products and
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`the purported hardships to Reynolds, as a factual matter, is information known to Reynolds—not
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`to PMP. And, as PMP indicated, its corporate fact witnesses have no testimony to offer on these
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`subjects. (Dkt. 610-12 at 2-3.)
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`As stated in PMP’s objections to Topics 76 and 83, these topics seek PMP’s contentions,
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`as well as expert testimony, analysis, and opinions. (Dkt. 610-2 at 14, 21-22.) PMP has provided
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`its detailed contentions on these topics to Reynolds. (See Dkt. 610-13 (Response to Reynolds’
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`Interrogatory No. 23).) PMP will also provide any expert testimony, analysis, and opinions at the
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`time to do so. Because PMP will not rely on any of its own fact witnesses on these topics, a PMP
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`deposition on Topics 76 and 83 is not warranted. See Trs. of Boston Univ. v. Everlight Elecs. Co.,
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`Ltd., No. 12-cv-11935-PBS, 2014 WL 5786492, at *4 (D. Mass. Sept. 24, 2014) (denying motion
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`to compel topic “on the grounds that the information sought is more appropriately discoverable
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`through contention interrogatories and/or expert discovery.”).
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`Again, there is no dispute, and Reynolds’ motion to compel Topics 76 and 83 should be
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`denied.
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`C.
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`Reynolds Fails To Show That Topic 69 Is Relevant To PMP’s Request For A
`Permanent Injunction
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`Reynolds is not entitled to a witness on Topic 69. Topic 69 seeks “each fact that PMP
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`alleges supports PMP’s request for a permanent injunction and that was not present and/or known
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`to PMP on or before June 29, 2020, including when each such fact became known to PMP.” As
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`7
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`PMP has repeatedly maintained, Topic 69 does not bear on any of the factors relevant to a
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`permanent injunction. Although the timing of PMP’s knowledge of particular facts could
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`conceivably have some relevance to PMP’s motion for leave to amend to include injunctive relief,
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`the Court has already resolved that issue. (Dkt. 483.) The timing of any such knowledge is not
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`probative to PMP’s entitlement to an injunction and is not a proper or relevant subject of the
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`Court’s permitted injunction discovery.
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`Reynolds argues that the time it takes a movant to seek a permanent injunction is allegedly
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`relevant to whether equitable relief should be granted. (Dkt. 610 at 8.) But in response to PMP’s
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`request during the meet and confer process, Reynolds failed to provide case law supporting such
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`proposition.4 And Reynolds still cites none in its motion to compel.
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`If Reynolds had relevant authority, it should have shared it with PMP during the meet and
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`confer process before prematurely running to the Court once again. Instead, Reynolds failed to
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`bring any such authority to PMP’s—or the Court’s—attention. The law is that the time it took for
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`PMP to seek injunctive relief is irrelevant to the four factors relevant to issuance of a permanent
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`injunction. See 800 Adept, Inc. v. Murex Secs., Ltd., 505 F. Supp. 2d 1327, 1336-37 (M.D. Fla.
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`2007) (reversed on other grounds) (“800 Adept has established the merits of its claims, and its past
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`conduct does little, if anything, to inform the question of whether 800 Adept will be harmed by
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`any future acts of infringement by the Murex-Targus Parties.”); see also TiVo Inc. v. EchoStar
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`Commc’ns, 446 F. Supp. 2d 664, 670 (E.D. Tex. 2006) (reversed on other grounds) (finding
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`plaintiff’s “motives in bringing the lawsuit are irrelevant” to irreparable harm).
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`4 Reynolds’ cited cases in its correspondence are inapposite, because the cases denied leave to
`amend in part because a party unduly delayed in moving for leave to amend a pleading under Rule
`15(a)(2). (See Dkt. 610-9 at 2-3.)
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`8
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`Because Topic 69 seeks information that is not probative to the issues the Court will decide,
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`it is not relevant to PMP’s request for injunctive relief. Regardless, Reynolds failed to reach an
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`impasse because it failed to respond to PMP’s request to identify any legal authority supporting its
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`request. Consequently, Reynolds’ motion to compel Topic 69 should be denied.
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`IV. CONCLUSION
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`PMP respectfully requests that the Court deny Reynolds’ Motion to Compel PMP to
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`designate a witness on Topics 68-70, 72, 76, and 83, in its entirety.
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`Dated: May 19, 2021
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`Respectfully submitted,
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`/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
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (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 K. Sobolski (pro hac vice)
`Greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Tel: (415) 391-0600; Fax: (415) 395-8095
`
`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
`LATHAM & WATKINS LLP
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`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Tel: (312) 876-7700; Fax: (312) 993-9767
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`Counsel for Defendant-Counterclaim
`Plaintiff Philip Morris Products S.A.
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`10
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`Case 1:20-cv-00393-LO-TCB Document 624 Filed 05/19/21 Page 14 of 14 PageID# 14134
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 19th 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
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`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 Defendant-Counterclaim
`Plaintiff Philip Morris Products S.A.
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`11
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