Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 1 of 14 PageID# 17759
`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 1 of 14 Page|D# 17759
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`EXHIBIT 6
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`EXHIBIT 6
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 2 of 14 PageID# 17760
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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 and Counterclaim
`Defendants,
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`v.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.
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`Defendants and Counterclaim
`Plaintiffs.
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`Civil Action No. 1:20-cv-393-LO-TCB
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`
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`ALTRIA CLIENT SERVICES LLC, PHILIP MORRIS USA INC., AND
`PHILIP MORRIS PRODUCTS S.A.’S NINTH SET OF REQUESTS FOR PRODUCTION
`(NOS. 225-251)
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`Pursuant to Rules 34 and 26 of the Federal Rules of Civil Procedure, Altria Client Services
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`LLC, Philip Morris USA Inc., and Philip Morris Products S.A. request that RAI Strategic
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`Holdings, Inc. and R.J. Reynolds Vapor Company respond in writing and produce the documents
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`and things requested below within thirty (30) days of service, or at such other time and place as
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`the parties may agree upon, at the offices of Latham & Watkins LLP, 555 Eleventh Street NW,
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`Suite 1000, Washington, DC 20004.
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`DEFINITIONS
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`The following definitions and instructions apply to these requests as well as other discovery
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`requests that may be propounded to Plaintiffs, including interrogatories and requests for admission.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 3 of 14 PageID# 17761
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`1. The terms “You,” “Plaintiffs,” “Counterclaim Defendants,” and “RJR” refer
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`collectively to RAI Strategic Holdings, Inc. (“RAI”) and R.J. Reynolds Vapor Company
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`(“RJRV”), their predecessors-in-interest, subsidiaries, joint ventures, affiliates, and other legal
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`entities that are wholly or partially owned or controlled by RAI, RJRV, and/or R.J. Reynolds
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`Tobacco Company, either directly or indirectly, and the principals, directors, officers, owners,
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`members, representatives, employees, agents, consultants, accountants, and attorneys of these
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`same entities.
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`2. The terms “Defendants” and “Counterclaim Plaintiffs” refer collectively to Altria
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`Client Services LLC (“ACS”), Philip Morris USA Inc. (“PM USA”), and Philip Morris Products
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`S.A. (“PMP”).
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`3. References to this “lawsuit,” “case,” or “action” mean the above-captioned action.
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`4. References to an “ITC Investigation” mean the International Trade Commission
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`investigation entitled In the Matter of Certain Tobacco Heating Articles and Components Thereof,
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`Inv. No. 337-TA-1199.
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`5. The term “Documents” includes all things within the meaning and scope of that term
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`as used in Rule 34(a)(l)(A) of the Federal Rules of Civil Procedure, and the Federal Rules of
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`Evidence, including all Communications.
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`6. “Thing” shall mean any tangible item, including without limitation, models,
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`prototypes and samples of any device or apparatus or product.
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`7. “Accused Product(s)” means any of Counterclaim Plaintiffs’ products that
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`Counterclaim Defendants contend infringe any RJR Asserted Claims, including but not limited to
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`the IQOS System and associated tobacco sticks identified in ¶¶ 20-33 of the Amended Complaint.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 4 of 14 PageID# 17762
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`8. The term “Alternative Product(s)” means any product, whether supplied by
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`Counterclaim Defendants or a Third party, that Counterclaim Defendants contend constitute an
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`acceptable, non-infringing alternative for purposes of damages in this case.
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`9. “RJR Accused Product(s)” refers to any RJR Product that Counterclaim Plaintiffs
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`contend infringe any Counterclaim Asserted Claim(s), including but not limited to the VUSE
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`VIBE, VUSE SOLO, VUSE CIRO, and VUSE ALTO devices, as well as Flavor Packs and power
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`units associated with those products.
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`10. The “’265 patent” means U.S. Patent No. 9,814,265.
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`11. The “’556 patent” means U.S. Patent No. 10,555,556.
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`12. The “’911 patent” means U.S. Patent No. 10,104,911.
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`13. The “’545 patent” means U.S. Patent No. 6,803,545.
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`14. The “’374 patent” means U.S. Patent No. 10,420,374.
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`15. The “Counterclaim Asserted Patent(s)” means the ’265 patent, the ’556 patent, the
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`’911 patent, the ’545 patent, and the ’374 patent, collectively, any other patent that may be added
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`to this litigation by Counterclaim Plaintiffs, and the applications that led to the issuance of any of
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`the foregoing patents.
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`16. “Counterclaim Asserted Claim(s)” means each asserted claim of each Counterclaim
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`Asserted Patent.
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`17. “RJR Covered Product(s)” refers to any Product that Plaintiffs contend practices or
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`embodies any purported invention described or claimed in the RJR Asserted Patents, including
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`any Products made by Plaintiffs or third parties.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 5 of 14 PageID# 17763
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`18. The term “Communication” means every manner or method of the disclosure, transfer,
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`or exchange of information, whether orally, electronically, or by Document, and whether face to
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`face or by telephone, mail, facsimile, E-mail, video, instant message, internet Communication, or
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`otherwise.
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`19.
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`“Product” means any machine, manufacture, apparatus, device, system, process,
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`service, method, or instrumentality which is designed to function together electrically,
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`mechanically, chemically, or otherwise, to achieve a particular function or purpose, including
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`those offered for sale, sold, imported, or under development.
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`20.
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`“Components” means a constituent part of a device, including, but not limited to,
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`assemblies, subassemblies, modules, individual integrated devices, Software, Processors, and/or
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`application specific integrated circuits.
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`21.
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`The term “Hardware” means any form of components, interconnections, circuits
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`(both analog and digital), semiconductor devices, circuit boards, and assemblies of same.
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`22.
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`“Infringe,” “infringing,” “infringed,” or “infringement” means direct infringement,
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`indirect infringement, contributory infringement, induced infringement, literal infringement and/or
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`infringement under the doctrine of equivalents.
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`23.
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`The term “Named Inventors” means each of the inventors named on the face of
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`each of the RJR Asserted Patents.
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`24.
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`25.
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`“Person” or “individual” means any natural person.
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`“Related Patent(s)” means any parent or ancestral patent or application related in
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`any way to a given patent and any continuing application, continuation-in-part application,
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`divisional application, file-wrapper continuation, reexamination proceeding, reissue application,
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`abandoned application or foreign counterpart application for that patent.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 6 of 14 PageID# 17764
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`26.
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`“Prior Art” is used in these Requests in the same sense that it is used in 35 U.S.C.
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`§§ 102 or 103 and includes without limitation, any patent, publication, physical device, prototype,
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`knowledge, use, sale, offer for sale, any documents or other items evidencing any of the foregoing,
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`and/or any other act or event defined in 35 U.S.C. § 102, taken singly or in combination, and
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`having or occurring at a date such as to be potentially relevant under any subsection of 35 U.S.C.
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`§§ 102 or 103.
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`27.
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`28.
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`“Manufacture” means to make, including at least experimentally or commercially.
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`The term “Software” means any form of code, including Source Code, object code,
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`complied code, byte code, interpreted code, firmware, and any form of code stored in any storage
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`medium or received by a device.
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`29.
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`The term “Source Code” means any text that is written in a human-readable
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`programming language. Source Code for different versions of Software may exist, where a version
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`is referenced by a build number, product version number, or other designation as identified by
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`Plaintiffs’ Source Code control system and/or Software development practices. A reference to
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`“Source Code” shall mean all versions of the Software released as a commercial product or used
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`in the construction of Software released as a commercial product. Source code should be produced
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`in an electronic form that maintains the original character encoding of the text, such as ASCII or
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`Unicode text files, searchable by character-based tools without the need for Optical Character
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`Recognition (OCR) of a binary image (for example, TIFF) file. Source Code should maintain the
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`original character encoding of the text and maintain format control characters including but not
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`limited to tab, space, and quotation characters to maintain the original programmer-intended
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`indenting structure.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 7 of 14 PageID# 17765
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`30.
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`The term “Third party” and “Third parties” refer to any Persons(s) other than
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`Plaintiffs or Defendants.
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`31.
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`32.
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`The term “FDA” refers to the U.S. Food and Drug Administration.
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`The term “Youth” refers to any Person who has not yet reached the age of 21 years.
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`INSTRUCTIONS
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`1.
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`You are to provide full and complete responses to the following requests, after
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`conducting a diligent and thorough investigation into all information within your possession,
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`custody, or control. If You cannot provide a full and complete response to any request, You should
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`respond to the request to the extent possible, specifying the portion of the request You are unable
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`to answer and providing any information you have regarding the unanswered portion.
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`2.
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`The response to a request for production shall not be supplied by referring to the
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`response to another request for production unless the response to the request for production being
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`referred to supplies a complete and accurate answer to the request for production being answered.
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`3.
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`In accordance with the requirements of Rule 26(e) of the Federal Rules of Civil
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`Procedure, You are under a duty to supplement all responses to these requests to include
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`information acquired after service of the responses, even if such responses were correct or
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`complete when first provided.
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`3.
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`In the event that You object to any request for production on the ground that it is
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`overbroad and/or unduly burdensome for any reason, respond to that request for production as
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`narrowed to the least extent necessary, in your judgment, to render it not overbroad/unduly
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`burdensome and state specifically the extent to which You have narrowed that request for
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`production for purposes of your response.
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`4.
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`In the event that You object to any request for production on the ground that it is
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`vague and/or ambiguous, identify the particular words, terms, or phrases that You claim make the
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 8 of 14 PageID# 17766
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`request vague and/or ambiguous and specify the meaning actually attributed to You by such words
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`for purposes of your response thereto.
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`5.
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`In the event any document is withheld on a claim of attorney-client privilege, work-
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`product immunity, common interest privilege, or any other privilege from disclosure, identify: (a)
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`the date of the information; (b) the source of the information; (c) names and addresses of all
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`persons to whom that information was disclosed; and (d) the general subject matter of the
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`information.
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`REQUESTS FOR PRODUCTION
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`REQUEST FOR PRODUCTION NO. 225:
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`All Documents reflecting communications between RAI, RJRV, and/or R.J. Reynolds
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`Tobacco Company concerning PMP’s request for a permanent injunction.
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`REQUEST FOR PRODUCTION NO. 226:
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`All Documents reflecting or relating to the potential impact on or harm to PMP if PMP’s
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`request for a permanent injunction is denied.
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`REQUEST FOR PRODUCTION NO. 227:
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`All Documents reflecting or relating to how the public health might be impacted if the RJR
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`Accused Products are removed from the market due to a permanent injunction.
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`REQUEST FOR PRODUCTION NO. 228:
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`All Documents that discuss, relate to, or reflect the extent to which adult tobacco
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`consumers switch from combustible cigarettes to the RJR Accused Products, or the extent to which
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`adult tobacco consumers switch from combustible cigarettes to other vaping products.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 9 of 14 PageID# 17767
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`REQUEST FOR PRODUCTION NO. 229:
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`All Documents that relate to or concern whether the public interest will be benefitted if
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`PMP’s request for a permanent injunction is granted.
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`REQUEST FOR PRODUCTION NO. 230:
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`All Documents relating to Your contention that RJR’s infringement of the Counterclaim
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`Asserted Patents has not caused irreparable harm to PMP.
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`REQUEST FOR PRODUCTION NO. 231:
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`All Documents that show the public interest will be benefitted if PMP’s request for a
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`permanent injunction is granted.
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`REQUEST FOR PRODUCTION NO. 232:
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`All Documents relating to or concerning Your contention that remedies available at law,
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`such as monetary damages, are either adequate or inadequate to compensate for any injury to PMP.
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`REQUEST FOR PRODUCTION NO. 233:
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`All Documents relating to or concerning Your contention that, considering the balance of
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`hardships between You and PMP, a remedy in equity is not warranted.
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`REQUEST FOR PRODUCTION NO. 234:
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`All Documents that refer or relate to the success or failure of e-cigarettes, including but not
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`limited to the RJR Accused Products, in transitioning smokers away from combustible cigarettes.
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`REQUEST FOR PRODUCTION NO. 235:
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`All Documents that refer or relate to the substitutability of available potentially reduced
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`risk products or PRRPs for the RJR Accused Products should those RJR Accused Products be
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`removed from the U.S. market due to a permanent injunction in this case.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 10 of 14 PageID# 17768
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`REQUEST FOR PRODUCTION NO. 236:
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`All Documents relating to the U.S. demographics that use or purchase electronic cigarettes,
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`including but not limited to the RJR Accused Products.
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`REQUEST FOR PRODUCTION NO. 237:
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`All Documents relating to the U.S. demographics that use or purchase heat-not-burn
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`products, including but not limited to RJR’s Eclipse and Counterclaim Plaintiffs’ IQOS.
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`REQUEST FOR PRODUCTION NO. 238:
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`All Documents relating to the U.S. demographics that use or purchase oral tobacco/nicotine
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`products (such as snus, chewing tobacco, pouches, and lozenges), including but not limited to any
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`party’s oral tobacco/nicotine products.
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`REQUEST FOR PRODUCTION NO. 239:
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`All Documents that You intend to rely on to support Your contention that PMP is not
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`entitled to permanent injunctive relief.
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`REQUEST FOR PRODUCTION NO. 240:
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`All Documents relating to the number of e-cigarette product brands on sale in the U.S.
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`market besides RJR’s Accused Products.
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`REQUEST FOR PRODUCTION NO. 241:
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`All Documents relating to the illegal status of RJR’s Accused Products currently offered
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`for sale in the U.S. market.
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`REQUEST FOR PRODUCTION NO. 242:
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`All Documents relating to the IQOS VEEV.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 11 of 14 PageID# 17769
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`REQUEST FOR PRODUCTION NO. 243:
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`All Documents relating to the business consequences for RJR’s Accused Products should
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`each not receive PMTA authorization from FDA.
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`REQUEST FOR PRODUCTION NO. 244:
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`Documents sufficient to show sales of RJR’s Eclipse heat-not-burn product in the United
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`States from 2020 to present.
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`REQUEST FOR PRODUCTION NO. 245:
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`All Documents relating to the status of PMTAs for each of RJR’s Accused Products.
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`REQUEST FOR PRODUCTION NO. 246:
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`All Documents relating to youth use of RJR’s Accused Products.
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`REQUEST FOR PRODUCTION NO. 247:
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`All Documents relating to the U.S. market share of available potentially reduced risk
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`products or PRRPs.
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`REQUEST FOR PRODUCTION NO. 248:
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`Documents sufficient to identify the top ten e-cigarette brands with which RJR’s Accused
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`Products compete in the U.S. market and the market share of each such competitor for the last
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`three years.
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`REQUEST FOR PRODUCTION NO. 249:
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`All documents relating to RJR plans to target potential or actual customers of Counterclaim
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`Plaintiffs for non-combustible tobacco/nicotine products in the United States.
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`REQUEST FOR PRODUCTION NO. 250:
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`All documents relating to requests by RJR for limited modification exceptions from FDA
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`for any of the RJR Accused Products.
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`REQUEST FOR PRODUCTION NO. 251:
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`All documents relating to any analysis, presentation, or document reflecting a discount rate
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`applied to projected or forecasted sales, profits, or cash, including but not limited to net present
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`value analyses.
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`Case 1:20-cv-00393-LO-TCB Document 721-5 Filed 06/16/21 Page 13 of 14 PageID# 17771
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`Dated: March 26, 2021
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`By: /s/ Maximilian A. Grant
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`Maximilian A. Grant (VSB No. 91792)
`max.grant@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
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`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
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`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
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`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
`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 721-5 Filed 06/16/21 Page 14 of 14 PageID# 17772
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 26th day of March, 2021, I caused the foregoing to be served
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`on the following Plaintiffs/Counterclaim Defendants using the designated email address:
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`RJREDVA@jonesday.com.
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`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (202) 637-2201
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