Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 1 of 42 PageID# 24708
`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 1 of 42 PagelD# 24708
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`EXHIBIT 16
`EXHIBIT 16
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 2 of 42 PageID# 24709
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`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.
`
`Civil Action No. 1:20-cv-393
`
`
`
`ALTRIA CLIENT SERVICES LLC, PHILIP MORRIS USA INC., AND
`PHILIP MORRIS PRODUCTS S.A.’S FIRST SET OF REQUESTS FOR PRODUCTION
`(NOS. 1-157)
`
`Pursuant to Rules 34 and 26 of the Federal Rules of Civil Procedure, Altria Client Services
`
`LLC, Philip Morris USA Inc., and Philip Morris Products S.A. request that RAI Strategic
`
`Holdings, Inc. and R.J. Reynolds Vapor Company respond in writing and produce the documents
`
`and things requested below within thirty (30) days of service, or at such other time and place as
`
`the parties may agree upon, at the offices of Latham & Watkins LLP, 555 Eleventh Street NW,
`
`Suite 1000, Washington, DC 20004.
`
`DEFINITIONS
`
`The following definitions and instructions apply to these requests as well as other discovery
`
`requests that may be propounded to Plaintiffs, including interrogatories and requests for admission.
`
`

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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
`
`(“RJRV”), their predecessors-in-interest, subsidiaries, joint ventures, affiliates, and other legal
`
`entities that are wholly or partially owned or controlled by RAI, RJRV, and/or R.J. Reynolds
`
`Tobacco Company, either directly or indirectly, and the principals, directors, officers, owners,
`
`members, representatives, employees, agents, consultants, accountants, and attorneys of these
`
`same entities.
`
`2. The terms “Defendants” and “Counterclaim Plaintiffs” refer collectively to Altria
`
`Client Services LLC (“ACS”), Philip Morris USA Inc. (“PM USA”), and Philip Morris Products
`
`S.A. (“PMP”).
`
`3. References to this “lawsuit,” “case,” or “action” mean the above-captioned action.
`
`4. References to an “ITC Investigation” mean the International Trade Commission
`
`investigation entitled In the Matter of Certain Tobacco Heating Articles and Components Thereof,
`
`Inv. No. 337-TA-1199.
`
`5. The term “Documents” includes all things within the meaning and scope of that term
`
`as used in Rule 34(a)(l)(A) of the Federal Rules of Civil Procedure, and the Federal Rules of
`
`Evidence, including all Communications.
`
`6. “Thing” shall mean any tangible item, including without limitation, models,
`
`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
`
`the IQOS System and associated tobacco sticks identified in ¶¶ 20-33 of the Amended Complaint.
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`

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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
`
`contend infringe any Counterclaim Asserted Claim(s), including but not limited to the VUSE
`
`VIBE, VUSE SOLO, VUSE CIRO, and VUSE ALTO devices, as well as Flavor Packs and power
`
`units associated with those products.
`
`10. The “’268 patent” means U.S. Patent No. 9,814,268.
`
`11. The “’542 patent” means U.S. Patent No. 10,492,542.
`
`12. The “RJR Asserted Patent(s)” means the ’268 patent and the ’542 patent, collectively,
`
`any other patent that may be added to this litigation by Plaintiffs, and the applications that led to
`
`the issuance of any of the foregoing patents.1
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`13. The “’265 patent” means U.S. Patent No. 9,814,265.
`
`14. The “’556 patent” means U.S. Patent No. 10,555,556.
`
`15. The “’911 patent” means U.S. Patent No. 10,104,911.
`
`16. The “’545 patent” means U.S. Patent No. 6,803,545.
`
`17. The “’374 patent” means U.S. Patent No. 10,420,374.
`
`
`1 RJR has additionally asserted U.S. Patent Nos. 9,839,238 (“the ’238 patent”); 9,901,123 (“the
`’123 patent”); and 9,930,915 (“the ’915 patent”). These patents have been stayed until the
`determination of the International Trade Commission in In the Matter of Certain Tobacco Heating
`Articles and Components Thereof (Inv. No. 337-TA-1199) becomes final. Once the stay is lifted,
`the term “RJR Asserted Patent(s),” as used in this document, will further encompass the ’238
`patent, ’123 patent, and ’915 patent.
`
`

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`18. The “Counterclaim Asserted Patent(s)” means the ’265 patent, the ’556 patent, the
`
`’911 patent, the ’545 patent, and the ’374 patent, collectively, any other patent that may be added
`
`to this litigation by Counterclaim Plaintiffs, and the applications that led to the issuance of any of
`
`the foregoing patents.
`
`19. “RJR Asserted Claim(s)” mean each claim of each RJR Asserted Patent that Plaintiffs
`
`allege Defendants infringe, either directly or indirectly, literally or by the doctrine of equivalents.
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`20. “Counterclaim Asserted Claim(s)” means each asserted claim of each Counterclaim
`
`Asserted Patent.
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`21. “RJR Covered Product(s)” refers to any Product that Plaintiffs contend practices or
`
`embodies any purported invention described or claimed in the RJR Asserted Patents, including
`
`any Products made by Plaintiffs or third parties.
`
`22. The term “Communication” means every manner or method of the disclosure, transfer,
`
`or exchange of information, whether orally, electronically, or by Document, and whether face to
`
`face or by telephone, mail, facsimile, E-mail, video, instant message, internet Communication, or
`
`otherwise.
`
`23.
`
`“Product” means any machine, manufacture, apparatus, device, system, process,
`
`service, method, or instrumentality which is designed to function together electrically,
`
`mechanically, chemically, or otherwise, to achieve a particular function or purpose, including
`
`those offered for sale, sold, imported, or under development.
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`24.
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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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`

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`25.
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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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`26.
`
`“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.
`
`27.
`
`The term “Named Inventors” means each of the inventors named on the face of
`
`each of the RJR Asserted Patents.
`
`28.
`
`29.
`
`“Person” or “individual” means any natural person.
`
`“Related Patent(s)” means any parent or ancestral patent or application related in
`
`any way to a given patent and any continuing application, continuation-in-part application,
`
`divisional application, file-wrapper continuation, reexamination proceeding, reissue application,
`
`abandoned application or foreign counterpart application for that patent.
`
`30.
`
`“Prior Art” is used in these Requests in the same sense that it is used in 35 U.S.C.
`
`§§ 102 or 103 and includes without limitation, any patent, publication, physical device, prototype,
`
`knowledge, use, sale, offer for sale, any documents or other items evidencing any of the foregoing,
`
`and/or any other act or event defined in 35 U.S.C. § 102, taken singly or in combination, and
`
`having or occurring at a date such as to be potentially relevant under any subsection of 35 U.S.C.
`
`§§ 102 or 103.
`
`31.
`
`32.
`
`“Manufacture” means to make, including at least experimentally or commercially.
`
`The term “Software” means any form of code, including Source Code, object code,
`
`complied code, byte code, interpreted code, firmware, and any form of code stored in any storage
`
`medium or received by a device.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 7 of 42 PageID# 24714
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`33.
`
`The term “Source Code” means any text that is written in a human-readable
`
`programming language. Source Code for different versions of Software may exist, where a version
`
`is referenced by a build number, product version number, or other designation as identified by
`
`Plaintiffs’ Source Code control system and/or Software development practices. A reference to
`
`“Source Code” shall mean all versions of the Software released as a commercial product or used
`
`in the construction of Software released as a commercial product. Source code should be produced
`
`in an electronic form that maintains the original character encoding of the text, such as ASCII or
`
`Unicode text files, searchable by character-based tools without the need for Optical Character
`
`Recognition (OCR) of a binary image (for example, TIFF) file. Source Code should maintain the
`
`original character encoding of the text and maintain format control characters including but not
`
`limited to tab, space, and quotation characters to maintain the original programmer-intended
`
`indenting structure.
`
`34.
`
`The term “Third party” and “Third parties” refer to any Persons(s) other than
`
`Plaintiffs or Defendants.
`
`35.
`
`The term “FDA” refers to the U.S. Food and Drug Administration.
`
`INSTRUCTIONS
`
`1.
`
`You are to provide full and complete responses to the following requests, after
`
`conducting a diligent and thorough investigation into all information within your possession,
`
`custody, or control. If You cannot provide a full and complete response to any request, You should
`
`respond to the request to the extent possible, specifying the portion of the request You are unable
`
`to answer and providing any information you have regarding the unanswered portion.
`
`2.
`
`The response to a request for production shall not be supplied by referring to the
`
`response to another request for production unless the response to the request for production being
`
`referred to supplies a complete and accurate answer to the request for production being answered.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 8 of 42 PageID# 24715
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`3.
`
`In accordance with the requirements of Rule 26(e) of the Federal Rules of Civil
`
`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
`
`complete when first provided.
`
`3.
`
`In the event that You object to any request for production on the ground that it is
`
`overbroad and/or unduly burdensome for any reason, respond to that request for production as
`
`narrowed to the least extent necessary, in your judgment, to render it not overbroad/unduly
`
`burdensome and state specifically the extent to which You have narrowed that request for
`
`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
`
`vague and/or ambiguous, identify the particular words, terms, or phrases that You claim make the
`
`request vague and/or ambiguous and specify the meaning actually attributed to You by such words
`
`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-
`
`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
`
`REQUEST FOR PRODUCTION NO. 1:
`
`Counterclaim Defendants’ registration and incorporation Documents.
`
`REQUEST FOR PRODUCTION NO. 2:
`
`Counterclaim Defendants’ annual report for each year, beginning with the year 2011.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 9 of 42 PageID# 24716
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`REQUEST FOR PRODUCTION NO. 3:
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`Documents and things sufficient to identify Counterclaim Defendants’ past and current
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`predecessors and affiliates, including parent companies, subsidiaries, partnerships, joint ventures,
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`divisions, and shareholders.
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`REQUEST FOR PRODUCTION NO. 4:
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`Each organizational chart, staffing description, and departmental roster relating to
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`Counterclaim Defendants’ organizational structure generally and specifically as that structure
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`relates to the RJR Asserted Patents with respect to the following functions for both categories: (i)
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`research and development, (ii) engineering and design; (iii) manufacture; (iv) testing; (v) quality
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`control; (vi) assembly and packaging; (vii) distribution; (viii) transportation, delivery, and
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`importation; (ix) marketing; (x) sales; (xi) strategic planning; (xii) patent and other intellectual
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`property issues; and (xiii) licensing.
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`REQUEST FOR PRODUCTION NO. 5:
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`Documents sufficient to show the involvement of any Third Party with the establishment,
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`operation, and control of, and/or financial interest in, Counterclaim Defendants and Counterclaim
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`Defendants’ activities related to this action.
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`REQUEST FOR PRODUCTION NO. 6:
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`All Documents and things relating to the ownership, title, transfer, or assignment of each
`
`of the RJR Asserted Patents or Related Patents.
`
`REQUEST FOR PRODUCTION NO. 7:
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`All Documents relating to any transactions that led to Counterclaim Defendants’ ownership
`
`of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 8:
`
`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 10 of 42 PageID# 24717
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`All Documents relating to any assignment, license, or other agreement relating to the RJR
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`Asserted Patents between individual Counterclaim Defendants or any affiliates, subsidiaries,
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`parents, predecessors-in-interest, other legal entities that are wholly or partially owned or
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`controlled by any Counterclaim Defendants.
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`REQUEST FOR PRODUCTION NO. 9:
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`All Documents and things relating to any security interest in or lien on any of the RJR
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`Asserted Patents at any time.
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`REQUEST FOR PRODUCTION NO. 10:
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`All Documents and things related to the current and past financial interests in each of the
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`RJR Asserted Patents, any foreign counterparts to any of the RJR Asserted Patents, and any and
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`all other Counterclaim Defendants’ patents or patent applications that disclose an allegedly similar
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`or related technology to any of the RJR Asserted Patents, and Documents sufficient to show the
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`nature of Counterclaim Defendants’ relationship with every Persons or entity so identified.
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`REQUEST FOR PRODUCTION NO. 11:
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`All Documents relating to the scope or meaning of any claim, claim term, or claim
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`limitation in any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 12:
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`All Documents referring to or referencing any of the RJR Asserted Patents or any Related
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`Patent.
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`REQUEST FOR PRODUCTION NO. 13:
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`All Documents relating to any findings of validity, Infringement, enforceability, invalidity,
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`noninfringement, or unenforceability of any of the RJR Asserted Patents or any Related Patent.
`
`REQUEST FOR PRODUCTION NO. 14:
`
`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 11 of 42 PageID# 24718
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`All Documents relating to any assessments, evaluations, or considerations of validity,
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`Infringement, enforceability, invalidity, noninfringement, or unenforceability for any of the RJR
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`Asserted Patents or any Related Patent.
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`REQUEST FOR PRODUCTION NO. 15:
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`All Documents relating to any use, sale, offer for sale, or publication that were sworn
`
`behind during the prosecution of the RJR Asserted Patents or any Related Patents.
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`REQUEST FOR PRODUCTION NO. 16:
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`All Documents relating to the validity or patentability of any of the RJR Asserted Patents
`
`or Related Patents, including all Documents and things relating to any patents, publications, prior
`
`knowledge, public uses, sales, or offers for sale, that may constitute, contain, disclose, refer to,
`
`relate to, or embody any Prior Art to the subject matter of any claim of any of the RJR Asserted
`
`Patents.
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`REQUEST FOR PRODUCTION NO. 17:
`
`All Documents relating to RJRV’s “limited distribution” of VUSE electronic cigarettes as
`
`referred to in Reynolds American Inc.’s Form 10-K for the fiscal year ending on December 31,
`
`2012.
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`REQUEST FOR PRODUCTION NO. 18:
`
`All Documents relating to the distribution of VUSE electronic cigarettes to Tar Heel
`
`Tobacco stores in North Carolina since 2012.
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`REQUEST FOR PRODUCTION NO. 19:
`
`All Documents relating to the enforceability of any of the RJR Asserted Patents or Related
`
`Patents.
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`REQUEST FOR PRODUCTION NO. 20:
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 12 of 42 PageID# 24719
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`All Documents relating to any investigation or consideration of the patentability of any
`
`subject matter described or claimed in any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 21:
`
`All Documents related to any prior use, knowledge, invention, conception, reduction to
`
`practice, sale, or offer for sale of the inventions claimed in any of the RJR Asserted Patents or
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`Related Patents.
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`REQUEST FOR PRODUCTION NO. 22:
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`All Documents and things relating to any act of diligence leading to the reduction to
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`practice of the subject matter of each claim of each of the RJR Asserted Patents and any Related
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`Patent, including, without limitation, any engineering notebooks, laboratory notebooks, log books,
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`record books, memoranda, design reviews, progress reports, technical reports, drawings,
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`schematics, specifications, diagrams, Source Code, HDL specifications, diaries, calendars, test
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`results, invention disclosures, patent prosecution records, or any other Documents or things which
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`Counterclaim Defendants contend corroborate any act of diligence leading to the reduction to
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`practice.
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`REQUEST FOR PRODUCTION NO. 23:
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`All Documents and things relating to any conference, seminar, exhibition, convention, or
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`trade show at which any product, device, apparatus, method, process, or system that allegedly
`
`embodies, falls within the scope of, or is practiced in accordance with any claim of any of the RJR
`
`Asserted Patents is or was discussed, referred to, advertised, displayed, demonstrated, or shown,
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`including, without limitation, advertisements, brochures, articles, pamphlets, price lists, product
`
`specifications, or other promotional, marketing, or presentation materials.
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`REQUEST FOR PRODUCTION NO. 24:
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 13 of 42 PageID# 24720
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`All Documents relating to any prior art searches, evaluations, or opinions regarding any of
`
`the RJR Asserted Patents or Related Patents, any technical studies or information regarding any of
`
`the RJR Asserted Patents or Related Patents, or any legal opinions relating to any of the RJR
`
`Asserted Patents or Related Patents.
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`REQUEST FOR PRODUCTION NO. 25:
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`All Documents and things concerning any motivation to combine any prior art teachings
`
`to yield the subject matter disclosed or claimed in any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 26:
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`All Documents and things relating to the first disclosure to a Person other than a Named
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`Inventor of the subject matter of any claim of any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 27:
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`With respect to each of the RJR Asserted Patents, all Documents and things relating to
`
`whether: (a) the subject matter of any claim allegedly satisfied a long felt need in the art to which
`
`they pertain, (b) the industry failed to solve problems that allegedly are solved by the subject matter
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`of any claim, (c) experts in the industry allegedly expressed skepticism concerning the subject
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`matter of any claim, (d) the subject matter of any claim allegedly has been a commercial success,
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`(e) the industry allegedly has recognized the significance of the subject matter of any claim, (f) the
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`subject matter of any claim allegedly has been copied by others in the industry, and (g) the subject
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`matter of any claim allegedly achieved unexpected results.
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`REQUEST FOR PRODUCTION NO. 28:
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`All Documents and things upon which Counterclaim Defendants intend to rely to support
`
`the validity of any RJR Asserted Claims, including, without limitation, evidence of objective
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`indicia of non-obviousness and other evidence of alleged novelty or non-obviousness.
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`REQUEST FOR PRODUCTION NO. 29:
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`All Documents related to what Counterclaim Defendants contend to be the level of ordinary
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`skill in the art for each of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 30:
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`All Documents and things related to any research, development, manufacturing, and testing
`
`by Counterclaim Defendants relating to the subject matter disclosed or claimed in any of the RJR
`
`Asserted Patents or any Related Patents.
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`REQUEST FOR PRODUCTION NO. 31:
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`All Documents relating to any analysis or opinions, written or oral, as to the patentability,
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`unpatentability, validity, novelty, obviousness, invalidity, enforceability, unenforceability,
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`Infringement, or noninfringement of any claim of any of the RJR Asserted Patents, or to the
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`preparation of any such opinions, or which were considered in formulating any such opinions.
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`REQUEST FOR PRODUCTION NO. 32:
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`All Documents relating to any testing and analysis of any Prior Art systems discussed in
`
`any of the RJR Asserted Patents, including but not limited to the following:
`
`a) The ACCORD®; HEATBAR™; HYBRID CIGARETTE®, RuYAN VEGAS™·
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`RUYAN E-GAR™· RUYAN, C-GAR™; E-MYSTICK™; and IOLITE®
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`vaporizer;
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`b) Electronic cigars having the brand name Ruyan Atomizing Electronic Pipe and
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`Ruyan Atomizing Electronic Cigarette from Ruyan SBT Technology and
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`Development Co., Ltd., Beijing, China;
`
`including Documents sufficient to identify worldwide location(s) of such testing,
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`companies or individuals who performed the testing, when such testing was conducted, the
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`

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`purchase date of any of these products for testing, the results of each investigation or test, and three
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`samples of any system tested.
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`REQUEST FOR PRODUCTION NO. 33:
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`For each of the prior art systems identified in REQUEST FOR PRODUCTION NO. 32, all
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`Documents related to when Counterclaim Defendants first learned of each system; whether each
`
`system was offered or available for commercial sale before the earliest priority date of any of the
`
`RJR Asserted Patents; any patents, patent applications, or patent publications Counterclaim
`
`Defendants believe describe any component of any of these systems; and any publications relating
`
`to any of these systems, including any publications that were provided to the PTO during
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`prosecution of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 34:
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`All Documents and things related to Counterclaim Defendants’ relationship with Dr.
`
`Jeffrey Winkler and/or the University of Pennsylvania, including all documents related to
`
`Counterclaim Defendants’ participation in, knowledge of, preparation for, involvement in,
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`promotion of, and/or sponsorship of any tobacco-related consortium organized in part or in whole
`
`by Dr. Jeffrey Winkler, the University of Pennsylvania, or the law firm of Kirkland & Ellis LLP.
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`REQUEST FOR PRODUCTION NO. 35:
`
`All Communications with Named Inventors relating to the RJR Asserted Patents and/or
`
`Accused Products.
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`REQUEST FOR PRODUCTION NO. 36:
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`All Documents and things relating to the identification, selection, or determination of the
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`inventors for any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 37:
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 16 of 42 PageID# 24723
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`Any Documents Counterclaim Defendants intend to rely upon related to the conception
`
`and/or reduction to practice of any claim of the RJR Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 38:
`
`The applications and file histories for each of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 39:
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`All patent applications and file histories for any Related Patent, including but not limited
`
`to all foreign and/or domestic applications that any of the RJR Asserted Patents cite or otherwise
`
`rely on for a priority claim.
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`REQUEST FOR PRODUCTION NO. 40:
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`All Documents relating to the invention date of any invention claimed in any of the RJR
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`Asserted Patents or any Related Patents for which the applicant(s) swore behind any prior art
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`reference during prosecution.
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`REQUEST FOR PRODUCTION NO. 41:
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`All Documents and things related to the prosecution of each of the RJR Asserted Patents
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`and any patent asserted with any of the RJR Asserted Patents in any other action or proceeding.
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`REQUEST FOR PRODUCTION NO. 42:
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`All Documents relating to any Communications between Counterclaim Defendants, or
`
`anyone acting on Counterclaim Defendants’ behalf, with any patent examiner assigned to any
`
`application (U.S. or foreign) which resulted in any of the RJR Asserted Patents or Related Patents.
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`REQUEST FOR PRODUCTION NO. 43:
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`All Documents and things relating to or supporting any contention by Counterclaim
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`Defendants that any RJR Asserted Claim is entitled to a priority date prior to its effective filing
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`date as indicated on the patent itself.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 17 of 42 PageID# 24724
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`REQUEST FOR PRODUCTION NO. 44:
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`The personnel and employment history files for each of the Named Inventors, including
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`resumes or curricula vitae.
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`REQUEST FOR PRODUCTION NO. 45:
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`All transcripts (including printed transcripts, audiotapes, witness statements, and
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`videotapes) of any sworn testimony ever given by any Named Inventor.
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`REQUEST FOR PRODUCTION NO. 46:
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`All Documents relating to any affidavit or declaration ever signed, served, or filed in any
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`proceeding by any Named Inventor at any time, where any part of the affidavit or declaration
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`relates to any of the RJR Asserted Patents or the subject matter described therein.
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`REQUEST FOR PRODUCTION NO. 47:
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`All Documents and things related to any description of any invention claimed or described
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`in of any of the RJR Asserted Patents, including, without limitation, all “invention disclosures”
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`and other descriptions authored by or with the input of any Named Inventor.
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`REQUEST FOR PRODUCTION NO. 48:
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`All engineering or laboratory notebooks of any Named Inventor relating to the subject
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`matter of any claim of any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 49:
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`All Documents and things relating to publications, abstracts, papers, presentations, or
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`speeches authored or given, in whole or in part, by any of the Named Inventors.
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`REQUEST FOR PRODUCTION NO. 50:
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`All Documents that refer or relate to any allegation, by any Persons or entity, that a Named
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`Inventor of an RJR Asserted Patent, or anyone acting on his or her behalf or that of the assignee
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`

`

`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 18 of 42 PageID# 24725
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`of the patent, committed inequitable conduct during the prosecution of an RJR Asserted Patent or
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`Related Patent.
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`REQUEST FOR PRODUCTION NO. 51:
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`All non-identical copies and English translations of patents or patent applications,
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`anywhere in the world, in which any of the Named Inventors for any of the RJR Asserted Patents
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`is identified as an inventor.
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`REQUEST FOR PRODUCTION NO. 52:
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`All Documents upon which Counterclaim Defendants rely for their contention, if any, that
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`Counterclaim Plaintiffs infringe any RJR Asserted Claims of any of the RJR Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 53:
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`All Documents on which Counterclaim Defendants rely to support any claim of alleged
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`indirect infringement in this action.
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`REQUEST FOR PRODUCTION NO. 54:
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`All Documents relating to whether the Accused Products practice the RJR Asserted Claims
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`of any of the RJR Asserted Patents, including, without limitation, all Documents concerning any
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`test or evaluation of any Counterclaim Plaintiffs’ devices, apparatuses, methods, processes, or
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`systems conducted by Counterclaim Defendants or on Counterclaim Defendants’ behalf.
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`REQUEST FOR PRODUCTION NO. 55:
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`All Documents relating to Counterclaim Defendants’ first knowledge or awareness of
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`Counterclaim Plaintiffs’ activities, or products that allegedly infringe any claim of any of the RJR
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`Asserted Patents.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 19 of 42 PageID# 24726
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`REQUEST FOR PRODUCTION NO. 56:
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`All Documents relating to Counterclaim Defendants’ decision to commence litigation
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`asserting Infringement by Counterclaim Plaintiffs of the RJR Asserted Claims.
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`REQUEST FOR PRODUCTION NO. 57:
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`All Documents relating to any effort or attempt by any party, including any current
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`Counterclaim Defendants’ licensee or Third Parties, to design around any of the RJR Asserted
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`Patents.
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`REQUEST FOR PRODUCTION NO. 58:
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`Documents relating to the knowledge by Counterclaim Plaintiffs, of any of the RJR
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`Asserted Patents prior to the filing of the Complaint in this action against Counterclaim Plaintiffs.
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`REQUEST FOR PRODUCTION NO. 59:
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`All Documents relating to any comparison between or analysis of any of the RJR Asserted
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`Patents and any model and version of the Accused Products.
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`REQUEST FOR PRODUCTION NO. 60:
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`All Documents relating to any comparison between the RJR Asserted Patents and any
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`product, including the Covered Products, Alternative Products, and Third-Party products.
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`REQUEST FOR PRODUCTION NO. 61:
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`All Documents relating to Counterclaim Defendants’ policies and practices for evaluating
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`potential Infringement of Counterclaim Defendants’ alleged patent rights, including any internal
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`system or process which has been used by Counterclaim Defendants for identifying, reviewing,
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`evaluating, or tracking intellectual property rights.
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`

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`Case 1:20-cv-00393-LO-TCB Document 895-16 Filed 01/21/22 Page 20 of 42 PageID# 24727
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`REQUEST FOR PRODUCTION NO. 62:
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`All Documents related to regulatory compliance of the RJR Covered Products, including
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`applications, submissions, drafts, and correspondence with FDA.
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`REQUEST FOR PRODUCTION NO. 63:
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`All Documents used in the preparation of and submitted as part of any Premarket Tobacco
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`Product Application for any of the RJR Covered Products as well as all Documents and things
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`related to any planned, delayed, or abandoned Premarket Tobacco Product Applications related to
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`these products.
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`REQUEST FOR PRODUCTION NO. 64:
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`All Documents used in the preparation of and submitted as part of any Modified Risk
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`Tobacco Product Application for any of the RJR Covered Products as well as all Documents and
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`things related to any planned, delayed, or abandoned Modified Risk Tobacco Product Application
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`related to these products.
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`REQUEST FOR PRODUCTION NO. 65:
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`All Documents and things related to regulatory compliance of Counterclaim Defendants’
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`e-cigarettes and: (a) litigation, adjudication, and/or administrative action of any kind related to
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`such products; (b) safety concerns related to such products; (c) youth uptake of such products; (d)
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`combustible cigarette smoking conversion rates to non-smoking; (e) rates of dual use with such
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`products and combustible cigarettes; and/or (f) studies, memoranda, or other analyses regarding
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`the timeline for the Pre-Market Tobacco Application process for such products.
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`REQUEST FOR PRODUCTION NO.