Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 1 of 32 PageID# 26375
`
`IN THE 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. 1:20-cv-00393-LO-TCB
`REDACTED
`
`REYNOLDS’S MEMORANDUM IN OPPOSITION TO
`PMI/ALTRIA’S MOTION TO EXCLUDE OPINIONS OF RJR’S EXPERTS BASED ON
`REJECTED CLAIM CONSTRUCTIONS
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 2 of 32 PageID# 26376
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`INTRODUCTION ......................................................................................................................... 1
`BACKGROUND ........................................................................................................................... 2
`LEGAL STANDARDS ............................................................................................................... 10
`ARGUMENT ............................................................................................................................... 11
`I. REYNOLDS’S EXPERTS APPROPRIATELY INTERPRET AND APPLY THE
`PLAIN AND ORDINARY MEANING OF THE PATENTS ......................................... 11
`A.
`Reynolds’s Experts Do Not Contradict the Court’s Claim-Construction
`Rulings Because the Court Declined to Construe Any Claims............................ 11
`Reynolds’s Experts Do Not Propose to Argue Claim Construction to the
`Jury, But Whether the Accused Products Infringe Under the Ordinary
`Meaning ............................................................................................................... 14
`Prosecution History Evidence May Be Presented to the Jury on Issues
`Other Than Claim Construction ........................................................................... 19
`II. THE COURT SHOULD CONSTRUE THE “BLIND HOLE” LIMITATION OF
`THE ’911 PATENT (OR CLARIFY THAT IT HAS ALREADY DONE SO) .............. 24
`CONCLUSION ............................................................................................................................ 25
`
`
`
`B.
`
`C.
`
`
`
`-i-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 3 of 32 PageID# 26377
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`AK Steel Corp. v. Sollac and Ugine,
`344 F.3d 1234 (Fed. Cir. 2003)................................................................................................22
`
`Apple, Inc. v. Samsung Elecs. Co.,
`2014 WL 660857 (N.D. Cal. Feb. 20, 2014) ...............................................................14, 15, 16
`
`Arason Enterprises, Inc. v. CabinetBed Inc.,
`No. 16-cv-03001-PAB-NRN, 2019 WL 4597863 (D. Colo. Sept. 23, 2019) ..............10, 12, 16
`
`Aventis Pharms. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013)................................................................................................16
`
`Avid Tech., Inc. v. Harmonic Inc.,
`No. 11-1040-GMS, 2014 WL 7206301 (D. Del. Dec. 17, 2014) ............................................14
`
`Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001)................................................................................................15
`
`Cave Consulting Grp., LLC v. OptumInsight, Inc.,
`No. 5:11-cv-00469-EJD, 2015 WL 740379 (N.D. Cal. Feb. 20, 2015) ...............................1, 14
`
`Cordis Corp. v. Bos. Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009)..........................................................................................12, 15
`
`CytoLogix Corp. v. Ventana Med. Sys., Inc.,
`424 F.3d 1168 (Fed. Cir. 2005)................................................................................................12
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) .................................................................................................................10
`
`DNT, LLC v. Sprint Spectrum, LP,
`No. CIV.A. 3:09CV21, 2010 WL 582164 (E.D. Va. Feb. 12, 2010) ............................1, 11, 14
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)................................................................................................12
`
`Fujifilm Corp. v. Motorola Mobility Inc.,
`No. 3:12-cv-3587, 2015 WL 1265009 (N.D. Cal. Mar. 19, 2015) ....................................14, 15
`
`
`
`-ii-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 4 of 32 PageID# 26378
`
`
`GPNE Corp. v. Apple Inc.,
`108 F. Supp. 3d 839 (N.D. Cal. 2015) ...............................................................................21, 23
`
`GPNE Corp. v. Apple Inc.,
`830 F.3d 1365 (Fed. Cir. 2016)................................................................................................21
`
`Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,
`628 F.3d 1359 (Fed. Cir. 2010)................................................................................................15
`
`Level 3 Commc’ns, LLC v. Limelight Networks, Inc.,
`No. 2:07CV589, 2009 WL 10689350 (E.D. Va. June 23, 2009) .......................................20, 22
`
`Liquid Dynamics Corp. v. Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006)................................................................................................12
`
`MarcTec, LLC v. Johnson & Johnson,
`664 F.3d 907 (Fed. Cir. 2012)..................................................................................................11
`
`Metaswitch Networks Ltd. v. Genband US LLC,
`No. 2:14-CV-00744-JRG, 2017 WL 3704760 (E.D. Tex. Aug. 28, 2017)..............................14
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................................25
`
`Omega Patents LLC v. CalAmp Corp.,
`No. 6:13-cv-1950-Orl-40DAB, 2015 WL 12830496 (M.D. Fla. Dec. 23, 2015) ........11, 13, 19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)................................................................................16
`
`PPG Indus. v. Guardian Indus. Corp.,
`156 F.3d 1351 (Fed. Cir. 1998)................................................................................................22
`
`Summit 6, LLC v. Samsung Elecs. Co.,
`802 F.3d 1283 (Fed. Cir. 2015)................................................................................................10
`
`Thorner v. Sony Computer Entm’t Am., LLC,
`669 F.3d 1362 (Fed. Cir. 2012)................................................................................................15
`
`Tracbeam L.L.C. v. AT&T Inc.,
`No. 6:11-CV-96, 2013 WL 12040731 (E.D. Tex. Dec. 6, 2013) ..............................................2
`
`Wahpeton Canvas Co. v. Frontier, Inc.,
`870 F.2d 1546 (Fed. Cir. 1989)..........................................................................................19, 22
`
`
`
`-iii-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 5 of 32 PageID# 26379
`
`
`Wisconsin Alumni Res. Found. v. Apple Inc.,
`905 F.3d 1341 (Fed. Cir. 2018)................................................................................................15
`
`YETI Coolers, LLC v. RTIC Coolers,
`LLC, No. A-15-CV-597-RP, 2017 WL 404519 (W.D. Tex. Jan. 27, 2017) ...........................13
`
`OTHER AUTHORITIES
`
`Federal Rule of Evidence 702 ..................................................................................................10, 18
`
`
`
`
`
`
`-iv-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 6 of 32 PageID# 26380
`
`
`
`INTRODUCTION
`
`RAI Strategic Holdings, Inc. and R.J. Reynolds Vapor Company (“Reynolds”) submit this
`
`memorandum in opposition to Altria Client Services LLC and Philip Morris USA Inc.’s
`
`(“PM/Altria’s”) Motion to Exclude Opinions of RJR’S Experts Based on Rejected Claim
`
`Constructions. The Court, in its claim-construction order, declined to construe any terms and
`
`determined that the disputed claim terms would be given their plain and ordinary meaning,
`
`rejecting the parties’ proposed constructions because they were largely “advanced herein to
`
`support infringement/non-infringement or invalidity arguments downstream in the litigation.”
`
`Dkt. 360 at 1. Infringement is a factual question for the jury; accordingly, the Court’s order
`
`recognizes that within the plain and ordinary meaning of the claim terms there remain factual
`
`questions for the jury to decide—questions to be resolved with the assistance of testimony from
`
`the parties’ technical experts. PM/Altria had the same understanding as recently as its brief in
`
`opposition to Reynolds’s motion for partial summary judgment, where PM/Altria argued that
`
`“disputes between the experts about statements in the prosecution history and whether technical
`
`features of the accused products … meet certain claim limitations” presented questions of fact that
`
`could not be decided as a matter of law. Dkt. 733 at 11.
`
`Now, however, PM/Altria asks the Court to exclude responsive opinions from Reynolds’s
`
`technical experts on the plain and ordinary meaning of the claim limitations to a person of ordinary
`
`skill in the art as part of their opinions on whether the accused products meet the claims—despite
`
`the Court’s order and the well-settled rule that “at trial parties may introduce evidence as to
`
`the plain and ordinary meaning of the terms not construed by the Court to one skilled in the
`
`art[.]” Cave Consulting Grp., LLC v. OptumInsight, Inc., No. 5:11-cv-00469-EJD, 2015 WL
`
`740379, at *15 (N.D. Cal. Feb. 20, 2015); see also, e.g., DNT, LLC v. Sprint Spectrum, LP, No.
`
`CIV.A. 3:09CV21, 2010 WL 582164, at *4 (E.D. Va. Feb. 12, 2010) (“Once the Court has
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 7 of 32 PageID# 26381
`
`
`construed the terms as required by the Markman hearing, the parties are bound by said
`
`construction. The granting of Plaintiff's Motion does not preclude the Defendants from
`
`introducing evidence as to the plain and ordinary meaning of terms not construed by the Court to
`
`one skilled in the art.” (emphasis added)). Notably, PM/Altria does not attempt to argue that the
`
`excerpts of opinions from Reynolds’s responsive experts on
`
`infringement contradict
`
`the plain and ordinary meaning of the terms. “It is true that [Reynolds’s] expert[s] disagree[ ] with
`
`[PM/Altria’s] expert[s] regarding the plain and ordinary meaning,” but “[s]uch a dispute is
`
`expected.” Tracbeam L.L.C. v. AT&T Inc., No. 6:11-CV-96, 2013 WL 12040731, at *2 (E.D. Tex.
`
`Dec. 6, 2013). PM/Altria’s experts offer affirmative opinions on why they believe the accused
`
`products meet the ordinary meaning of the claim limitations; Reynolds’s experts must have the
`
`same opportunity to offer responsive opinions on the same language of the patents. This routine
`
`battle of the experts over the plain and ordinary meaning is a question for the jury to resolve at
`
`trial, not for the Court to adjudicate on a motion.
`
`BACKGROUND
`
`During claim construction, and as relevant here, Reynolds sought a ruling from the Court
`
`that certain disputed terms of U.S. Patent No. 9,814,265 (the “’265 patent”), U.S. Patent No.
`
`10,555,556 (the “’556 patent”), U.S. Patent No. 10,420,374 (the “’374 patent”), and U.S. Patent
`
`No. 10,104,911 (the “’911 patent”) were either indefinite or, alternatively, “warrant[ed]
`
`construction to make clear the ‘ordinary’ meaning in the context of these patents and claims.” Dkt.
`
`223 at 1. Following the Markman hearing, discussed as relevant below, the Court entered an order
`
`in which it rejected Reynolds’s indefiniteness arguments, declined to construe the disputed terms,
`
`and ordered that they would be “given their common meaning”:
`
`Each side asks the Court to give the fifteen terms in dispute their ordinary and
`customary meaning to the person of ordinary skill in the art. They also urge the
`
`
`
`-2-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 8 of 32 PageID# 26382
`
`
`
`Court to examine whether any of the terms are indefinite and to be careful not to
`import limitations from the specifications unless there is a disclaimer.
`
`The Court has endeavored to follow these rules of construction and in doing so
`concludes that none of the fifteen terms in dispute should be modified. They are all
`well known common English words given their common meaning. None of the
`terms were modified by a clear disclaimer in the prosecution, although there were
`debates with the examiner. Mostly, the Court found that the limitations sought were
`advanced herein to support infringement/non-infringement or invalidity arguments
`downstream in the litigation.
`
`Dkt. 360 at 1. The Court’s order recognized that “[e]ach side” had urged the adoption of the
`
`ordinary meaning of the terms, although the parties obviously disagreed on what the plain and
`
`ordinary meaning should be. In particular, the order did not say that Reynolds’s proposed
`
`clarifications were legally incompatible with the plain and ordinary meaning of the patents. In
`
`fact, the Court’s order said the opposite: the “limitations sought were advanced herein to support
`
`infringement/non-infringement or invalidity arguments downstream in the litigation.” Id.
`
`(emphasis added).
`
`Thereafter, and consistent with the Court’s order, Reynolds’s technical experts offered
`
`responsive, non-infringement opinions based on an understanding of the metes and bounds of the
`
`ordinary meaning of the patent terms:
`
`The ’265 patent: a thermal resistor with “dimensions substantially as a cross-section of a
`
`cigarette or cigar.” PM/Altria’s expert, Mr. Walbrink, offers an opinion that the thermal resistor
`
`“need not be ‘essentially circular,’” because (i) the Court “declined to impose such a limitation”
`
`and (ii) “certain cigars, such as box-pressed cigars, are non-circular.” Supplemental Opening
`
`Expert Report of Harold J. Walbrink Relating to Infringement (“Walbrink Report”) ¶ 67 (Ex. 1).
`
`Thus, based on extrinsic evidence of “box-pressed cigars,” Mr. Walbrink concludes that the “plain
`
`and ordinary meaning [ ] is not limited to a circular shape.” Id. ¶ 68. Reynolds’s expert, Dr.
`
`Suhling, disagrees. He “applie[s] the plain and ordinary meaning of the terms of the ’265 Patent
`
`
`
`-3-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 9 of 32 PageID# 26383
`
`
`as understood by a POSITA at the time of the invention,” and concludes that “a POSITA would
`
`understand ‘dimensions substantially the same as a cross-section of a cigarette or a cigar’ to define
`
`an essentially circular shape” based on the “language of Claim 1 and the[ ] disclosures in the
`
`specification.” Rebuttal Expert Report of Dr. Jeffrey C. Suhling (“Suhling Report”) ¶¶ 50, 82 (Ex.
`
`2). Specifically, Dr. Suhling points to the specification, which describes the invention as
`
`“provid[ing] the largest possible contact area,” which is achieved by an having an essentially
`
`circular shape, and by the thermal resistors depicted in Figure 1 of the ’265 patent, “which are both
`
`essentially circular.” Id. ¶¶ 82, 101. Mr. Walbrink opines that the thermal resistor dimensions are
`
`intended to “enable a conventional smoking experience,” which Dr. Suhling notes would lead to
`
`having “the shape of a conventional cigarette,” which is essentially circular. Id. ¶ 103. Finally,
`
`Dr. Suhling points out that Mr. Walbrink has relied on information disclosed in other patents and
`
`patent publications relating to different inventions, but all having “an essentially cylindrical shape”
`
`or “circular cross section,” id. ¶¶ 104, 105, again confirming the “common meaning” to one skilled
`
`in the art. Id. ¶ 109.
`
`The ’556 patent: “the opening of the housing” and “second capillary material . . . spaced
`
`apart from the opening by the first capillary material.” PM/Altria’s expert, Dr. Abraham, opines
`
`that the VUSE Vibe includes a “‘housing having an opening’ based on the plain and ordinary
`
`meaning of the term because it (i) houses other components and (ii) includes an aperture or hole,
`
`which is the plain and ordinary meaning of ‘opening.’” Abraham Second Amended and
`
`Supplemental Expert Report (“Abraham ’556 Report”) ¶ 274 (Ex. 3). To support his
`
`understanding of the ordinary meaning, he cites Figure 3 of the ’556 patent, the testimony of
`
`Reynolds’s corporate representative, and Reynolds’s PMTA. Id. ¶¶ 274, 276, 278. In response,
`
`Reynolds’s expert, Mr. Kodama, relies on the ’556 patent, which shows the opening of the housing
`
`
`
`-4-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 10 of 32 PageID# 26384
`
`
`“at the mouth end of the device . . . where the liquid exits the housing and passes to the heater
`
`assembly.” Responsive Expert Report of Kelly R. Kodama (“Kodama ’556 Report”) ¶ 66 (Ex. 4).
`
` Mr. Kodama notes that the prosecution history fails to
`
`
`
`support Dr. Abraham’s opinion that the claimed “opening” is for an “airflow path,” rather than a
`
`liquid substrate,
`
` Id. ¶¶ 72, 73. Mr. Kodama further
`
`
`
`supports his opinion about the opening by reference to Figures 2 and 3 of the ’556 patent, and
`
`dependent claim 2, which recites: “The cartridge according to claim 1, further comprising a fluid
`
`permeable heater assembly extending across the opening of the housing.” Id. ¶¶ 74–76. As to the
`
`“spaced apart” limitation, Mr. Kodama relies directly on the plain language of claim 1, which
`
`requires the second capillary material to be “spaced apart from the opening by the first capillary
`
`material,” and also the specification, which describes the first capillary material “as a ‘spacer’
`
`separating the second capillary material from the opening of the housing where the heater element
`
`(46) is located.” Id. ¶ 88; see also id. ¶ 91. As further support, Mr. Kodama notes that the
`
`prosecution history reveals that the patentee understood that the “‘spaced apart’ claim language
`
`requires the second capillary material to be separated from the opening of the housing by a distance
`
`‘defined by’ the first capillary material.” Id. ¶ 92. Mr. Kodama prefaced all of these opinions by
`
`noting the Court’s claim-construction order and “giv[ing] all terms their ordinary and customary
`
`meaning as would be understood by a person of skill in the art at the time of the invention, read in
`
`context of the entire claim and the patent as a whole, including the specification and prosecution
`
`history.” Id. ¶ 12.
`
`
`
`-5-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 11 of 32 PageID# 26385
`
`
`
`The ’374 patent: “detect a blowing action” and “capacitor consisting essentially of.” At
`
`the Markman hearing, the parties reached an apparent agreement that “detect a blowing action”
`
`means that “the device really does have to detect something.” Markman Hr’g Tr. at 95 (Ex. 5).
`
`As the Court recognized, Reynolds proposed “determine the presence of a blowing action” as part
`
`of the plain and ordinary meaning to ensure that “detect” would serve some purpose. See id. at 96
`
`(“The Court: They got the sense that you were trying to read out the word ‘detect.’”). PM/Altria’s
`
`counsel represented to the Court that “we’re not trying to read this limitation out of the claim.” Id.
`
`at 97. Based on that representation, the Court ruled, “We’ll go with the plain and ordinary
`
`meaning.” Id.
`
`PM/Altria’s expert, Mr. McAlexander, finds the limitation met because the accused
`
`products
`
`
`
`
`
`
`
`
`
`-
`
` Second Supplemental Opening Expert Report of Joseph C. McAlexander (“McAlexander
`
`Report”) ¶¶ 428, 430 (Ex. 6). Reynolds’s expert, Dr. Blalock, disagrees that this amounts to a
`
`detection of a blow: “Even if a user blows into the VUSE Alto after drawing, it has not been shown
`
`that
`
` Rebuttal Expert Report of Dr. Travis Blalock
`
`(“Blalock Report”) ¶ 120 (Ex. 7). As he explains,
`
`Id. Based on his review,
`
`
`
`-6-
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 12 of 32 PageID# 26386
`
`
`
`-
`
` Id. These opinions on the functional characteristics of the accused products concern
`
`infringement and not the construction of any claim term.
`
`Claim 1 of the ’374 patent also requires “a capacitor consisting essentially of” a list of
`
`components: a flexible conductive membrane, a rigid conductive plate, an insulating ring spacer,
`
`and an air dielectric between the conductive membrane and conductive plate. Both sides
`
`acknowledged that under Federal Circuit case law, the term “consisting essentially of” generally
`
`presents a fact question for the jury as to whether unlisted components “materially affect the basic
`
`and novel properties of the invention.” Dkt. 223 at 33–34 (Reynolds’s Brief); see also Dkt. 310 at
`
`15 (PM/Altria’s Brief) (“[T]he use of the phrase ‘consisting essentially of’ is a fact question for
`
`the jury, not a matter of claim construction, unless there was a ‘clear and unmistakable disclaimer’
`
`during prosecution.”). PM/Altria’s counsel echoed the same point at the Markman hearing: “In
`
`these circumstances, the Federal Circuit has recognized that the jury decides, after counsel argues,
`
`that the basic and novel properties are affected by including something in the claim.” Markman
`
`Hr’g Tr. at 87 (emphasis added). At claim construction, Reynolds argued that this was one of the
`
`exceptional cases where the Court could “resolve the issue as a matter of claim construction,” Dkt.
`
`223 at 34, but the Court disagreed, Dkt. 360, leaving the question to be resolved by the jury at trial.
`
`Accordingly, Reynolds’s expert, Dr. Blalock, offers testimony that the ’374 patent is not infringed
`
`because the capacitors in the accused products
`
`In his view,
`
`
`
`-7-
`
`
`
`
`
` Blalock Report ¶¶ 103–04.
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 13 of 32 PageID# 26387
`
`
`
`
`
` Id. ¶¶ 105–09. Dr. Blalock also refers to the prosecution history,
`
`where “the applicant narrowed the claims to solely an air dielectric in order to avoid the prior art,”
`
`as evidence that
`
` of the Accused VUSE
`
`Products materially affects the novel properties of the invention.” Id. ¶ 113. These opinions
`
`address the remaining factual question for the jury on whether the unlisted components materially
`
`affect the basic and novel properties of the invention.
`
`The ’911 patent: “at least one cavity in a wall of the aerosol-forming chamber” and “at
`
`least one cavity is a blind hole recessed in the wall of the aerosol-forming chamber.” Reynolds
`
`requested constructions or clarification of three terms from the ’911 patent—(1) “at least one cavity
`
`in a wall of the aerosol-forming chamber,” (2) “blind hole,” and (3) “recessed in the wall of the
`
`aerosol-forming chamber”—based in part on prosecution history statements, and the Court denied
`
`these requests in its November 24, 2020 order. Dkt. 360. After the Court’s order, PM/Altria’s
`
`expert, Dr. Abraham disclosed for the first time a new infringement theory and claim interpretation
`
`in his March 12, 2021 report. Dr. Abraham opines that the VUSE Alto infringes the ’911 patent
`
`because the “raised lip[s]” in the VUSE Alto mouthpiece create open-sided spaces that are
`
`“consistent with the plain and ordinary meaning of the term ‘cavity.’” Amended and Supplement
`
`Expert Report of John Abraham (“Abraham ’911 Report”) ¶ 33 (Ex. 8). He further states that the
`
`cavities in the Alto open up into the aerosol-forming chamber and are located “in a wall of the
`
`aerosol forming chamber” “under the plain meaning of those terms,” id. ¶¶ 23–24, which he notes
`
`is “in accord” with the “specification of the ’911 Patent” and “Figures 3-4 of the ’911 Patent,” and
`
`that “[a] POSITA reviewing [these] Figures” would reach the same understanding. Id. ¶ 29. Dr.
`
`Abraham also relies on “[t]he file history of the ’911 Patent,” which he claims “shows that the
`
`
`
`-8-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 14 of 32 PageID# 26388
`
`
`claim term ‘blind hole’ encompasses Figures 5 and 6 of the ’911 Patent.” Id. ¶ 43. For his part,
`
`Mr. Kodama responds that Dr. Abraham’s opinions that the Alto includes a “cavity” in the “wall”
`
`of the cartomizer holder tap is “contrary to how a POSITA would understand the common English
`
`meaning of the[se] term[s].” Supplemental and Amended Responsive Expert Report of Kelly R.
`
`Kodama (“Kodama ’911 Report”) ¶¶ 47, 65 (Ex. 9); see also id. ¶ 41 (“
`
`
`
` those spaces cannot be considered a
`
`‘cavity’ as a POSITA would understand the common English meaning of the term.”).
`
`Like Dr. Abraham, Mr. Kodama relies on the file history of the ’911 patent, and in
`
`particular the prosecution history related to the Rose prior art reference, as separate support for his
`
`opinions, in addition to the common meaning of the terms as understood by a POSITA. PM/Altria
`
`claims these are the “same statements about Rose” that Reynolds argued at claim construction.
`
`Dkt. 904 at 5. The arguments are not the same. At claim construction, Reynolds argued that Philip
`
`Morris Products S.A.’s (“PMP”) statements to the examiner distinguishing Rose required
`
`constructions about the location of the “wall” (“the inside surface of the hollow housing”) and the
`
`position of the “blind hole” (“positioned behind the inner space defined by the wall”). Dkt. 223 at
`
`26–31. Mr. Kodama’s opinions, by contrast, respond to Dr. Abraham’s infringement theory
`
`disclosed after claim construction that the “raised lips” in the Alto create a “cavity” in a “wall.”
`
`See Kodama ’911 Report ¶ 51 (noting that PMP argued to the examiner that “Rose’s fingers 62
`
`(like the Alto protrusions) did not correspond to the ‘wall’ as claimed”); id. ¶¶ 67, 72 (PMP
`
`“repeatedly argued that Rose’s fingers or filaments 62 (comparable to the Alto protrusions
`
`
`
`-9-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 15 of 32 PageID# 26389
`
`
`identified by Dr. Abraham) did not form the claimed ‘blind hole,’” because, among other things
`
`“the spaces are ‘open around the sides of each finger’”).1
`
`LEGAL STANDARDS
`
`Federal Rule of Evidence 702 permits expert testimony from someone with the requisite
`
`“knowledge, skill, experience, training, or education” to help the trier of fact “understand the
`
`evidence or . . . determine a fact in issue.” Fed. R. Evid. 702. “The Federal Circuit has noted that
`
`the issue of infringement is ‘analyzed in great part from the perspective of a person of ordinary
`
`skill in the art, and testimony explaining the technical evidence from that perspective may be of
`
`great utility to the factfinder.’” Arason Enterprises, Inc. v. CabinetBed Inc., No. 16-cv-03001-
`
`PAB-NRN, 2019 WL 4597863, at *6 (D. Colo. Sept. 23, 2019) (quoting Sundance, Inc. v.
`
`DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 (Fed. Cir. 2008)). “[T]he question of whether the
`
`expert is credible or the opinion is correct is generally a question for the fact finder, not the court.”
`
`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir. 2015). Where the question
`
`is close, courts should admit the testimony and allow the evidence to be tested by the “traditional
`
`and appropriate means” of “[v]igorous cross-examination, presentation of contrary evidence, and
`
`careful instruction on the burden of proof.” Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,
`
`596 (1993).
`
`
`
`
`1 PM/Altria’s brief also cites, but does not quote, this exchange with Mr. Kodama,
`prompted by an improper (and objected-to) compound question: “Q. The common meaning of
`‘wall’ would include the ribs that are in Alto, but you believe that the applicants disclaimed those
`types of structures out of Claim 1; correct? [Reynolds’s counsel]: Objection to form. THE
`WITNESS: Right. They’re arguing that with Rose the fingers were not part of the wall.” Kodama
`Dep. Tr. 154:25 to 155:6 (Ex. 10).
`
`
`
`-10-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 16 of 32 PageID# 26390
`
`
`
`I.
`
`ARGUMENT
`
`REYNOLDS’S EXPERTS APPROPRIATELY INTERPRET AND APPLY THE
`PLAIN AND ORDINARY MEANING OF THE PATENTS.
`
`A.
`
`Reynolds’s Experts Do Not Contradict the Court’s Claim-Construction
`Rulings Because the Court Declined to Construe Any Claims.
`
`Expert witnesses may not offer testimony that contradicts a court’s claim-construction
`
`rulings, but that principle is not at issue here, where the Court declined to construe the terms and
`
`ordered that they would be given their common meaning. This Court has long recognized the
`
`distinction. In DNT, LLC v. Sprint Spectrum, LP, then-Chief Judge Spencer granted in part and
`
`denied in part a motion in limine seeking to exclude “[i]nterpretation or application of claim
`
`limitations contrary to the Court’s Claim Construction Order.” 2010 WL 582164, at *4. The Court
`
`granted the motion because “[o]nce the Court has construed the terms as required by the Markman
`
`hearing, the parties are bound by said construction.” Id. But the Court specifically ruled that “[t]he
`
`granting of Plaintiff's Motion does not preclude the Defendants from introducing evidence as to
`
`the plain and ordinary meaning of terms not construed by the Court to one skilled in the art.” Id.
`
`(emphasis added). Moreover, the Court observed that “[t]he appropriateness of this latter kind of
`
`evidence can only be judged in the context of the trial.” Id.; see also e.g., Omega Patents LLC v.
`
`CalAmp Corp., No. 6:13-cv-1950-Orl-40DAB, 2015 WL 12830496, *2 (M.D. Fla. Dec. 23, 2015)
`
`(“[W]hile an expert may not deviate from the construction of claims already decided by the Court,
`
`the expert may explain the meaning of terms not construed by the Court by advising the jury how
`
`one skilled in the art would interpret those claims.”).
`
`Here, the Court declined to construe any of the claim terms, and so the decisions cited by
`
`PM/Altria where parties or their experts attempted to offer interpretations of terms that
`
`contradicted express claim constructions adopted by the court are beside the point. See MarcTec,
`
`LLC v. Johnson & Johnson, 664 F.3d 907, 912–13 (Fed. Cir. 2012) (reciting that district court
`
`
`
`-11-
`
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 952 Filed 02/11/22 Page 17 of 32 PageID# 26391
`
`
`excluded expert testimony as “irrelevant to the question of infringement” because it contradicted
`
`the court’s earlier construction of the term “bonded”); Cordis Corp. v. Bos. Sci. Corp., 561 F.3d
`
`1319, 1337 & n.16 (Fed. Cir. 2009) (party’s expert attempted to argue claim construction based
`
`on prosecution history previously rejected by the district court and affirmed on appeal); Exergen
`
`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009) (party’s statement “directly
`
`contradict[ed] the district court’s earlier construction of ‘internal temperature’”); Liquid Dynamics
`
`Corp. v. Vaughan Co., 449 F.3d 1209, 1214, 1224–25 & n.2 (Fed. Cir. 2006) (excluding expert
`
`testimony as irrelevant because it contradicted construction of “substantial helical flow” by the
`
`Federal Circuit in an earlier appeal). In CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d
`
`1168, 1172 (Fed. Cir. 2005), also cited by PM/Altria, the court held that it was error for the district
`
`court to permit the parties to argue claim construction to the jury “by agreement” rather than during
`
`a separate Markman hearing. That is not the case here.
`
`PM/Altria attempts to go further and argue that Reynolds’s experts are precluded from
`
`offering opinions on the plain and ordinary meaning of claim terms that, PM/Altria contends, were
`
`rejected by the Court at claim construction. But the premise of that argument is missing. The
`
`Court did not reject any argument made by Reynolds as inconsistent with the plain and ordinary
`
`meaning of the disputed terms, and even now, PM/Altria itself “makes no argument that
`
`[Reynolds’s expert] opinions are inconsistent with how a POSITA would have construed the terms
`
`at the time of the invention.” Arason 2019 WL 4597863, at *6 n.2. Moreover, PM/Altria
`
`incorrectly states that the Court “rejected” argu