`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 1 of 6 Page|D# 17620
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`EXHIBIT H
`EXHIBIT H
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`
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`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 2 of 6 PageID# 17621
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`
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`Attachments:
`
`Michalik, John M.
`Wednesday, June 2, 2021 7:24 PM
`Will.Orlady@lw.com; Jennifer.Koh@lw.com; pmiedva.lwteam@lw.com
`RJREDVA; cmolster@molsterlaw.com
`RE: RAI Strategic Holdings v. Altria Client Services (EDVa) - Summary Judgment
`NAI_1518707991_1_Joint stipulation of dismissal of inequitable conduct counterclaim for 545 patent.DOCX; NAI_
`1518709356_1_Proposed Order for joint stipulation of dismissal of inequitable conduct counterclaim for 545
`patent.DOCX
`
`Will ‐‐
`
`Per my email below, attached please find a draft joint stipulation of dismissal and proposed order. Please let us know if
`we have your permission to file.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`77 West Wacker
`Chicago, Illinois 60601-1692
`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Michalik, John M. <jmichalik@JonesDay.com>
`Sent: Wednesday, June 2, 2021 5:28 PM
`To: Will.Orlady@lw.com; Jennifer.Koh@lw.com; pmiedva.lwteam@lw.com
`Cc: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Subject: RE: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`Will ‐ ‐
`
`We do not agree it is appropriate or necessary to stipulate to judgment on the defenses Reynolds has indicated it does
`not intend to pursue. The cases you cite present a different procedural posture from our case where Reynolds, in an
`effort to streamline the case, has confirmed it will not pursue the defenses identified in my email yesterday. Further,
`your proposed stipulated judgment regarding Reynolds’s counterclaim for inequitable conduct contains
`inaccuracies. Accordingly, you do not have our consent to file your proposed stipulation. We will prepare an
`appropriate stipulation of dismissal of that claim.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`77 West Wacker
`Chicago, Illinois 60601-1692
`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Will.Orlady@lw.com <Will.Orlady@lw.com>
`Sent: Wednesday, June 2, 2021 3:43 PM
`To: Michalik, John M. <jmichalik@JonesDay.com>; Jennifer.Koh@lw.com; pmiedva.lwteam@lw.com
`
`1
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`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 3 of 6 PageID# 17622
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`Cc: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Subject: RE: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`** External mail **
`
`Counsel,
`
`
`PMP/Altria is entitled to judgment on the defenses and related counterclaim for two reasons. First, you have admitted
`they are meritless and unsupported by any facts. Second, Courts (including Judge O’Grady) enter judgment in favor of
`plaintiffs where a defendants fails to prove their affirmative defenses. See, e.g., TecSec, Inc. v. Adobe Sys., 326 F. Supp.
`3d 105, 111 (E.D. Va. 2018) (J. O’Grady); see also David’s Bridal, Inc. v. House of Brides, Inc., No. 06‐5660 (SRC), 2010 WL
`323306, at *12 (D.N.J. Jan. 20, 2010) (“Plaintiff’s cross‐motion for partial summary judgment is granted and, as to this
`affirmative defense [of nominative fair use], Judgment is entered in Plaintiff’s favor.”). Accordingly, PMP and Altria are
`entitled to judgment. Please confirm by 6:30 PM ET whether we have your consent to file the stipulated judgment.
`
`
`Now is not the appropriate time for Counterclaim‐plaintiffs to evaluate further narrowing the case for trial based on
`dropping existing asserted claims and that assessment is confirmed by the basis you disclosed last night for Reynolds’
`anticipated dispositive motion. PMP/Altria will be prepared to try a focused case, as confirmed by our estimate of
`necessary days to conduct the trial, which is less than that of Reynolds.
`
`
`Regards,
`Will Orlady
`
`Will Orlady
`Pronouns: he/him/his
`
`
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW | Suite 1000 | Washington, D.C. 20004-1304
`D: +1.202.637.3391 | M: +1.213.760.6738
`
`
`From: Michalik, John M. <jmichalik@JonesDay.com>
`Sent: Wednesday, June 2, 2021 2:02 PM
`To: Orlady, Will (DC) <Will.Orlady@lw.com>; Koh, Jennifer (SD) <Jennifer.Koh@lw.com>; #C‐M PMIEDVA ‐ LW TEAM
`<pmiedva.lwteam@lw.com>
`Cc: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Subject: RE: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`Will ‐ ‐
`
`Please provide support or authority for your position that Altria/PM are entitled to “judgment” on the defenses
`Reynolds no longer plans to pursue.
`
`In addition, we received no response to our inquiry last night (or from May 18) asking if Counterclaim‐Plaintiffs intend to
`drop any of their asserted claims. Please confirm Counterclaim‐Plaintiffs still intend to try all 45 asserted patent claims
`in the April 2022 jury trial.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`77 West Wacker
`Chicago, Illinois 60601-1692
`
`2
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`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 4 of 6 PageID# 17623
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`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Will.Orlady@lw.com <Will.Orlady@lw.com>
`Sent: Wednesday, June 2, 2021 11:35 AM
`To: Michalik, John M. <jmichalik@JonesDay.com>; Jennifer.Koh@lw.com; pmiedva.lwteam@lw.com
`Cc: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Subject: RE: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`** External mail **
`
`Counsel,
`
`Please find attached a stipulated judgment memorializing the suggestion in your 6:46pm email last night that Reynolds
`will not pursue certain affirmative defenses and a related counterclaim at trial. Please let us know by 2 PM ET whether
`we have your consent to file. To be clear, we’re happy to consider non‐substantive edits, but PMP/Altria are entitled to
`“judgment” and the stipulation will reflect that, so no need for edits on the form of the relief.
`
`Best,
`Will Orlady
`
`Will Orlady
`Pronouns: he/him/his
`
`
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW | Suite 1000 | Washington, D.C. 20004-1304
`D: +1.202.637.3391 | M: +1.213.760.6738
`
`
`From: Michalik, John M. <jmichalik@JonesDay.com>
`Sent: Tuesday, June 1, 2021 6:46 PM
`To: Koh, Jennifer (SD) <Jennifer.Koh@lw.com>; #C‐M PMIEDVA ‐ LW TEAM <pmiedva.lwteam@lw.com>
`Cc: RJREDVA <RJREDVA@jonesday.com>; cmolster@molsterlaw.com
`Subject: RE: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`Jennifer ‐ ‐
`
`Reynolds confirms it will not pursue a claim of inequitable conduct on the ‘545 patent. Reynolds does not withdraw the
`Liao reference as prior art to the ‘374 patent.
`
`With respect to the issues raised in your prior email, Reynolds will not pursue estoppel, acquiescence, waiver, or unclean
`hands with respect to the ‘911 patent; Reynolds will not pursue estoppel, acquiescence, waiver, or unclean hands with
`respect to the ‘556 patent; Reynolds will not pursue unclean hands with respect to the ‘545 patent; Reynolds will not
`pursue estoppel, waiver, or acquiescence with respect to the ‘374 patent; and Reynolds will not pursue estoppel, waiver,
`or acquiescence with respect to the ‘265 patent. Reynolds will not pursue its limitation on damages defense for the
`PMP patents. Reynolds will not pursue its extraterritorial claims defense.
`
`For its part, Reynolds intends to move for summary judgment of no willful infringement of any asserted patent and
`summary judgment of invalidity of the ‘374 patent. In addition, please confirm tonight if Counterclaim‐Plaintiffs are
`dropping any claims or infringement theories from its infringement allegations for the ‘911 patent. Otherwise, Reynolds
`intends to move for summary judgment of noninfringement (literal or under the doctrine of equivalents) of the ‘911
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`3
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`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 5 of 6 PageID# 17624
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`patent. We assume Counterclaim‐Plaintiffs oppose Reynolds’s motion. Otherwise, we are available to meet and confer
`at 9 am PT as you propose.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide℠
`77 West Wacker
`Chicago, Illinois 60601-1692
`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Jennifer.Koh@lw.com <Jennifer.Koh@lw.com>
`Sent: Tuesday, June 1, 2021 3:16 PM
`To: RJREDVA <RJREDVA@jonesday.com>
`Cc: pmiedva.lwteam@lw.com
`Subject: RAI Strategic Holdings v. Altria Client Services (EDVa) ‐ Summary Judgment
`
`** External mail **
`
`Counsel,
`
`
`Please confirm whether Reynolds will withdraw its claim of inequitable conduct on the ’545 patent,
`and whether Reynolds will withdraw the “Liao” reference as prior art to the ’374 patent. If Reynolds
`does not agree, we intend to seek summary judgment. Further, since Reynolds has not withdrawn its
`other affirmative defenses identified in our May 14 email, we plan to seek summary judgment on
`those defenses as well. We assume Reynolds opposes a motion for summary judgment on these
`issues, otherwise, please confirm your availability to meet and confer on these issues tomorrow at 9
`a.m. PT.
`
`Regards,
`Jennifer
`
`Jennifer Koh
`
`
`LATHAM & WATKINS LLP
`12670 High Bluff Drive
`San Diego, CA 92130
`Direct Dial: +1.858.523.3949
`Email: jennifer.koh@lw.com
`https://www.lw.com
`
`
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`Case 1:20-cv-00393-LO-TCB Document 720-8 Filed 06/16/21 Page 6 of 6 PageID# 17625
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