Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 1 of 12 PageID# 22819
`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 1 of 12 PagelD# 22819
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`EXHIBIT 5
`EXHIBIT 5
`(PUBLIC)
`(PUBLIC)
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`

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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 2 of 12 PageID# 22820
`CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
`REYNOLDS'S CBI REDACTED
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs and Counterclaim Defendants,
`
`v.
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20cv00393-LO-TCB
`
`RAI STRATEGIC HOLDINGS, INC. AND R.J. REYNOLDS VAPOR COMPANY’S
`OBJECTIONS AND RESPONSES TO ALTRIA CLIENT SERVICES LLC, PHILIP
`MORRIS USA, INC., AND PHILIP MORRIS PRODUCTS S.A.’S SEVENTH SET OF
`INTERROGATORIES (NOS. 27-28)
`
`Pursuant to Federal Rules of Civil Procedure 26 and 33, RAI Strategic Holdings, Inc. and
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`R.J. Reynolds Vapor Company (collectively, “Reynolds”) hereby respond to Altria Client Services
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`LLC, Philip Morris USA, Inc., and Philip Morris Products S.A.’s (collectively, “Defendants” or
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`“Counterclaim Plaintiffs”) Seventh Set of Interrogatories (Nos. 27-28) as follows.
`
`PRELIMINARY STATEMENT
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`Reynolds has not yet completed discovery relating to this case, and while it has made
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`reasonable investigation for responsive information, its investigation of the facts is continuing.
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`Reynolds objects and responds to these interrogatories as it interprets and understands each
`
`interrogatory as set forth. Reynolds’s objections and responses to these interrogatories are made
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`without prejudice to Reynolds’s right to supplement, correct, or otherwise modify the objections
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`and responses to the extent permitted under the Federal Rules of Civil Procedure, the Local Rules
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`

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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 3 of 12 PageID# 22821
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`for the U.S. District Court for the Eastern District of Virginia, or any other applicable rule or
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`regulation.
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`Reynolds objects to the interrogatories to the extent that they seek information subject to
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`the attorney-client privilege, attorney work product immunity, the common interest privilege, or
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`any other applicable privilege or immunity against disclosure. Such information will not be
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`provided in response to the interrogatories, and any inadvertent disclosure shall not be deemed a
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`waiver of any privilege, work product protection, or other protection.
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`OBJECTIONS TO DEFINITIONS AND INSTRUCTIONS
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`Reynolds objects to the Definitions and Instructions to the extent that they seek to impose
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`obligations on Reynolds more extensive than those required by the Federal Rules of Civil
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`Procedure or the Local Civil Rules for the U.S. District Court for the Eastern District of Virginia,
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`and specifically objects as follows:
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`1.
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`Reynolds objects to the definition of “You,” “Plaintiffs,” “Counterclaim
`
`Defendants,” and “RJR” as overly broad and unduly burdensome because it incorporates entities
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`and individuals that are not a party to this case and on whose behalf Reynolds lacks the authority
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`and information to respond. Reynolds also objects to the terms “You,” “Plaintiffs,” “Counterclaim
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`Defendants,” and “RJR” as overly broad and unduly burdensome to the extent they purport to
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`include either RAI Strategic Holdings, Inc.’s or R.J. Reynolds Vapor Company’s predecessors-in-
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`interest, parents, subsidiaries, joint ventures, affiliates, assigns, attorneys, other affiliated or related
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`businesses, and other legal entitles whether wholly or partially owned or controlled by either RAI
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`Strategic Holdings, Inc. or R.J. Reynolds Vapor Company. Reynolds objects to the definition of
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`“You,” “Plaintiffs,” “Counterclaim Defendants,” and “RJR” as overly broad and unduly
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`burdensome to the extent they purport to include the principals, directors, officers, owners,
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`members, representatives, employees, agents, consultants, accountants, and attorneys of either
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`
`
`2
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 4 of 12 PageID# 22822
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`RAI Strategic Holdings, Inc. or R.J. Reynolds Vapor Company who are acting outside of their
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`roles with respect to either of those companies. In responding to these interrogatories, Reynolds
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`shall construe “You,” “Plaintiffs,” “Counterclaim Defendants,” and “RJR” to refer to RAI
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`Strategic Holdings, Inc. or R.J. Reynolds Vapor Company.
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`2.
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`Reynolds objects to Defendants’/Counterclaim Plaintiffs’ definition of “RJR
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`Accused Product(s)” as vague and ambiguous insofar as that definition includes products beyond
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`those that have been specifically identified by Defendants/Counterclaim Plaintiffs in their
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`Counterclaims or in their Response to Reynolds’s Interrogatory No. 8. In responding to these
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`interrogatories, Reynolds shall construe RJR Accused Products to refer only to the VUSE Solo®,
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`VUSE VibeTM, VUSE Ciro®, and VUSE Alto® devices and their associated flavor packs identified
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`in Defendants’/Counterclaim Plaintiffs’ Counterclaims and in their Response to Reynolds’s
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`Interrogatory No. 8.
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`3.
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`Reynolds objects
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`to Defendants’/Counterclaim Plaintiffs’ definition of
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`“Counterclaim Asserted Patent(s)” as overly broad to the extent that definition includes patents
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`that Defendants/Counterclaim Plaintiffs have not asserted in this case, or non-patent references
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`such as patent applications. In responding to these interrogatories, Reynolds shall construe
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`Counterclaim Asserted Patents to refer only to U.S. Patent No. 9,814,265, U.S. Patent No.
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`10,555,556, U.S. Patent No. 10,104,911, U.S. Patent No. 6,803,545, and U.S. Patent No.
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`10,420,374.
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`4.
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`Reynolds objects to Defendants’/Counterclaim Plaintiffs’ definition of “RJR
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`Covered Product(s)” as overly broad to the extent it includes products made by third parties.
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`5.
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`Reynolds objects to Defendants’/Counterclaim Plaintiffs’ Instruction Nos. 3 and 4
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`as overly broad, unduly burdensome, and seeking information that is not relevant to any claim or
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`
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`3
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 5 of 12 PageID# 22823
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`defense in this case to the extent they seek information from entities and individuals that are not a
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`party to this case and on whose behalf Reynolds lacks the authority and information to respond.
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`INTERROGATORY NO. 27:
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`INTERROGATORIES
`
`Describe with particularity the facts and circumstances of Your (or any affiliate’s)
`acquisition of any IQOS devices prior to April 9, 2020, including but not limited to when You
`acquired any such IQOS devices, how You acquired any such IQOS devices, who had access to
`such IQOS devices, whether You tested, disassembled, analyzed, or reverse-engineered any such
`IQOS devices, and whether You provided any such IQOS devices to patent counsel (in-house or
`outside) and if so, identify all Communications to patent counsel.
`
`OBJECTIONS:
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`
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`Reynolds objects to this interrogatory to the extent it seeks information protected by the
`
`attorney-client privilege, the attorney work product doctrine, the common interest privilege, or any
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`other applicable privilege or immunity. Reynolds objects to this interrogatory as overly broad,
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`unduly burdensome, and seeking information that is not relevant to any claim or defense in this
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`case to the extent it seeks information relating to Defendants’/Counterclaim Plaintiffs’ overly
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`broad definition of the terms “You” and “Your.” For instance, this interrogatory seeks information
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`regarding entities on whose behalf Reynolds lacks the authority and information to respond and
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`regarding entities that have no involvement or relevance to any claims or defenses in this action.
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`Reynolds objects to this interrogatory because it is composed of multiple discrete subparts under
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`Fed. R. Civ. P. 33, which, when counted with other
`
`interrogatories served by
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`Defendants/Counterclaim Plaintiffs that also contain multiple subparts, exceeds the number of
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`interrogatories permitted by the Rule 16(b) Scheduling Order and the parties’ Joint Discovery Plan.
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`See Dkt. Nos. 97, 99. Reynolds objects to this interrogatory because it is not reasonably
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`proportional to the needs of the case. See Fed. R. Civ. P. 26(b)(1).
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`RESPONSE:
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`
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`4
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 6 of 12 PageID# 22824
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`Subject to and without waiving its objections, Reynolds responds as follows:
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` See
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`RJREDVA_001247820 - RJREDVA_001247837.
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`RJREDVA_001247822.
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`RJREDVA_001247823 - RJREDVA_001247830.
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`- RJREDVA_001247837.
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`Id.
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`
`
`
`
`
`
`
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` See
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`
`
`
`
`
`
`
`
`
`
` RJREDVA_001247830
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`.
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`
`
`
`
` See
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`RJREDVA_001106771 - RJREDVA_001106777.
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` See RJREDVA_001106772, RJREDVA_001106774.
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`
`
`
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`5
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 7 of 12 PageID# 22825
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` RJREDVA_001106773, RJREDVA_001106775.
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`
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` RJREDVA_001106776.
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`
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`Reynolds will supplement its response to this interrogatory if it learns additional
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`information as discovery progresses, in accordance with the Court’s scheduling order, the Federal
`
`Rules of Civil Procedure, and the local rules.
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`INTERROGATORY NO. 28:
`
`Describe in detail the factual and legal bases for your Sixth Affirmative Defense
`(Limitation on Damages), including identifying all Documents and other evidence that supports
`Your Sixth Affirmative Defense. Your answer should include, to the extent that You contend that
`any Nu Mark LLC or JUUL Labs Inc. product practices any claim of the ’545 Patent or ’374
`Patent, separately for each claim of those patents and each of those products, all factual and legal
`bases for Your contention.
`
`OBJECTIONS:
`
`Reynolds objects to this interrogatory to the extent it seeks information protected by the
`
`attorney-client privilege, the attorney work product doctrine, the common interest privilege, or any
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`other applicable privilege or immunity. Reynolds objects to this interrogatory as overly broad,
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`unduly burdensome, and seeking information that is not relevant to any claim or defense in this
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`case to the extent it seeks information relating to Defendants’/Counterclaim Plaintiffs’ overly
`
`broad definition of the terms “You” and “Your.” For instance, this interrogatory seeks information
`
`regarding entities on whose behalf Reynolds lacks the authority and information to respond and
`
`regarding entities that have no involvement or relevance to any claims or defenses in this action.
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`Reynolds objects to this interrogatory as overly broad, unduly burdensome, and seeking
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`information that is not relevant to any claim or defense in this case to the extent it seeks “all”
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`factual and legal bases for Reynolds’s contention that any Nu Mark LLC or JUUL Labs Inc.
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`product practices any claim of the ’545 Patent or ’374 Patent. Reynolds objects to this
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`interrogatory because it is composed of multiple discrete subparts under Fed. R. Civ. P. 33, which,
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`
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`6
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`

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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 8 of 12 PageID# 22826
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`when counted with other interrogatories served by Defendants/Counterclaim Plaintiffs that also
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`contain multiple subparts, exceeds the number of interrogatories permitted by the Rule 16(b)
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`Scheduling Order and the parties’ Joint Discovery Plan. See Dkt. Nos. 97, 99. Reynolds objects
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`to this interrogatory to the extent it seeks information that is not in Reynolds’s possession and/or
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`information that is dependent upon discovery from Defendants and third parties.
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`RESPONSE:
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`
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`Subject to and without waiving its objections, Reynolds responds as follows:
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`Reynolds is informed and believes that Defendants/Counterclaim Plaintiffs or their former
`
`or current licensees have practiced or presently practice one or more asserted claims of at least the
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`asserted ’545 and ’374 patents, as Defendants/Counterclaim Plaintiffs have construed and asserted
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`those claims, and that Defendants/Counterclaim Plaintiffs or their former or current licensees have
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`failed to show that they complied with the notice requirements of 35 U.S.C. § 287. For instance,
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`based upon Defendants’/Counterclaim Plaintiffs’ contentions, their affiliate Nu Mark and their
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`licensee JUUL made or continue to make products (i.e., the MarkTen Elite and the JUUL product)
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`that practiced or practice one or more asserted claims of the ’545 patent. See, e.g.,
`
`RJREDVA_001271567
`
`-
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`RJREDVA_001271599;
`
`RJREDVA_000948368
`
`RJREDVA_000948372. As a further example, the MarkTen Elite used
`
`-
`
`
`
`
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`. See, e.g., RJREDVA_000948368 - RJREDVA_000948372, RJREDVA_000948370;
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`RJREDVA_001148862 - RJREDVA_001148876, RJREDVA_001148865; Hawes Depo. Trans.
`
`p. 48.
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`, the MarkTen Elite practiced the ’545 patent as
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`
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`Defendants are construing and asserting the claims of that patent, including, for example, claim 1.
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`
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`7
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 9 of 12 PageID# 22827
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`It is also believed that the JUUL Device (available at: https://www.juul.com/shop as “The
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`JUUL Device”) that has been sold under license to the ’545 patent since December 2018
`
`
`
`,
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`and practices the ’545 patent as Defendants construe and assert the claims of that patent, including,
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`for example, claim 1. See RJREDVA_001271584, RJREDVA_001271589; Hawes Depo. Trans.
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`p. 54. It is further believed that Defendants and/or their licensees also made, offered for sale, sold,
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`and/or imported into the United States other products, such as the Accord Series K, Greensmoke,
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`MarkTen, and MarkTen XL, which Reynolds is informed and believes used
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`
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`, and
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`practiced one or more claims of the ’545 patent as Defendants construe and assert the claims of
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`that patent. See Hawes Depo. Trans. pp. 30, 35-36, 47; see also, e.g., PMP_ITC02935385.
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`Reynolds also believes that JUUL Devices sold under license to the ’374 patent after December
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`2018
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`, and practice one
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`or more claims of the ’374 patent as Defendants construe and assert the claims of that patent,
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`including, for example, claim 1.
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` See RJREDVA_001271567, RJREDVA_001271576
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`; Hawes Depo. Trans. p. 58.
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`Reynolds’s claimed
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`limitation of damages
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`is also based upon
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`the fact
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`that
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`Defendants/Counterclaim Plaintiffs have failed
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`to meaningfully respond
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`to Plaintiffs’
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`Interrogatory No. 14 in either their initial Response to Interrogatory No. 14 (purportedly dated
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`September 30, 2020) or their First Supplemental Response to Interrogatory No. 14 (dated October
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`23, 2020). Defendants/Counterclaim Plaintiffs have also failed to identify any factual bases that
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`support their contention that they and all former and current owners and/or licensees of the ’545
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`and ’374 patents have complied with the notice requirements of 35 U.S.C. § 287. Reynolds has
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`8
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 10 of 12 PageID# 22828
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`identified evidence providing a good-faith basis for belief that Defendants/Counterclaim Plaintiffs
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`and their former and current licensees have failed to comply with the marking requirements with
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`respect to at least the MarkTen Elite and the JUUL products discussed above and the ’545 patent,
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`and with respect to the JUUL Device and the ’374 patent. Defendants/Counterclaim Plaintiffs
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`therefore have the burden to demonstrate that those products do not or did not practice the
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`respective claims of the ’545 and ’374 patents, but instead have refused to answer Interrogatory
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`No. 14.
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`Reynolds continues to investigate the facts supporting this defense and will supplement its
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`response if it learns additional information as discovery progresses, in accordance with the Court’s
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`scheduling order, the Federal Rules of Civil Procedure, and the applicable local rules.
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`9
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 11 of 12 PageID# 22829
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`Dated: January 4, 2021
`
`Stephanie E. Parker
`JONES DAY
`1420 Peachtree Street, N.E.
`Suite 800
`Atlanta, GA 30309
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@jonesday.com
`
`Anthony M. Insogna
`JONES DAY
`4655 Executive Drive
`Suite 1500
`San Diego, CA 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Email: aminsogna@jonesday.com
`
`William E. Devitt
`JONES DAY
`77 West Wacker
`Suite 3500
`Chicago, IL 60601
`Telephone: (312) 269-4240
`Facsimile: (312) 782-8585
`Email: wdevitt@jonesday.com
`
`Sanjiv P. Laud
`JONES DAY
`90 South Seventh Street
`Suite 4950
`Minneapolis, MN 55402
`Telephone: (612) 217-8800
`Facsimile: (844) 345-3178
`Email: slaud@jonesday.com
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`
`
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` Respectfully submitted,
`
`
`/s/ David M. Maiorana
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
`
`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Tel: (212) 326-3939
`Fax: (212) 755-7306
`Email: jjnormile@jonesday.com
`
`Alexis A. Smith
`JONES DAY
`555 South Flower Street
`Fiftieth Floor
`Los Angeles, CA 90071
`Telephone: (213) 243-2653
`Facsimile: (213) 243-2539
`Email: asmith@jonesday.com
`
`Charles B. Molster, III (VA Bar No. 23613)
`The Law Offices of Charles B. Molster III PLLC
`2141 Wisconsin Ave., N.W., Suite M
`Washington, DC 20007
`Telephone: (703) 346-1505
`Email: cmolster@molsterlaw.com
`
`Counsel for Plaintiffs RAI Strategic Holdings,
`Inc. and R.J. Reynolds Vapor Company
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`Case 1:20-cv-00393-LO-TCB Document 846-5 Filed 01/21/22 Page 12 of 12 PageID# 22830
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on January 4, 2021, the foregoing was served on counsel for
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`Defendants/Counterclaim Plaintiffs using
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`the
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`following designated
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`email
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`address:
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`pmiedva.lwteam@lw.com.
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`
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`Dated: January 4, 2021
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`
`
`
`
`/s/ David M Maiorana
`David M. Maiorana (VA Bar No. 42334)
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
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`