Case 1:20-cv-00393-LO-TCB Document 763-2 Filed 06/30/21 Page 1 of 3 PageID# 20588
`Case 1:20-cv-00393-LO-TCB Document 763-2 Filed 06/30/21 Page 1 of 3 Page|D# 20588
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 1:20-cv-00393-LO-TCB Document 763-2 Filed 06/30/21 Page 2 of 3 PageID# 20589
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`From:
`Sent:
`To:
`Cc:
`Subject:
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`Counsel,
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`Koh, Jennifer (SD)
`Friday, May 14, 2021 7:17 PM
`RJREDVA
`#C-M PMIEDVA - LW TEAM
`RAI Strategic Holdings v. Altria Client Services (EDVa) - Affirmative Defenses
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`Reynolds has raised nearly a dozen affirmative defenses against Altria, PM USA, and PMP’s
`Counterclaims, in addition to those raised against individual entities. Reynolds appears to have
`effectively abandoned several of these defenses throughout the course of discovery. For example, in
`response to PMP/Altria’s Interrogatory No. 21, which sought the factual bases for and documents to
`be used in support of Reynolds’ affirmative defenses, Reynolds provided boilerplate responses for
`several of its defenses. Despite serving a supplemental response on April 12 updating the support for
`two of its affirmative defenses, Reynolds’ responses to several others remain cursory. In order to
`streamline the case, please confirm that Reynolds will not be pursuing the following affirmative
`defenses at trial.
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`1. Fifth Affirmative Defense: Equitable Defenses
`In its October 29, 2020 Response to Interrog. No. 21, Reynolds stated that enforcement of the
`patents-in-suit was “barred by one or more of the equitable doctrines, such as estoppel,
`acquiescence, waiver, and unclean hands.” Reynolds’ Third Suppl. Resp. to Defs.’ Third Set of
`Interrogs. (No. 21) at 5 (“Rog. Response”). Although Reynolds stated that it would further supplement
`its response as discovery progressed, it has not yet done so. See id.
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`2. Sixth Affirmative Defense: Limitation on Damages Under 35 U.S.C. § 287
`For the PMP Asserted Patents, Reynolds has not identified any product it believes is subject to the
`marking requirements of Section 287. Reynolds therefore has failed to carry its initial burden of
`production under Arctic Cat.
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`3. Eighth Affirmative Defense: Ensnarement
`In its initial Rog Response, Reynolds complained that PMP/Altria had “provided no more than
`boilerplate statements regarding infringement . . . under the doctrine of equivalents,” and it was
`“therefore not able, at this time, to fully respond” and explain the basis for its defense of ensnarement.
`Rog. Response at 6. The parties have since addressed infringement under the doctrine of equivalents
`extensively in expert reports. Yet Reynolds still has not supplemented its response.
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`4. Eleventh Affirmative Defense: Extraterritorial Claims
`Reynolds did not identify any extraterritorial activities that Counterclaim Plaintiffs purportedly rely on
`for their infringement claims in its initial Response, and to date has not supplemented its response.
`See Rog. Response at 7, 10-11.
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`Please let us know by Tuesday, May 18 whether Reynolds agrees to drop these affirmative
`defenses. If Reynolds does not agree, we intend to seek summary judgment on the affirmative
`defenses identified above.
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`Regards,
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`1
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`Case 1:20-cv-00393-LO-TCB Document 763-2 Filed 06/30/21 Page 3 of 3 PageID# 20590
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`Jennifer
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`Jennifer Koh
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`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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`2
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