Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 1 of 9 PageID# 26442
`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 1 of 9 PagelD# 26442
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`EXHIBIT 5(cid:3)
`EXHIBIT 5
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`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 1 of 9 PagelD# 26442
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`EXHIBIT 5(cid:3)
`EXHIBIT 5
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`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 2 of 9 PageID# 26443
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`1
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`RAI STRATEGIC HOLDINGS, INC.,
`et al.,
`Plaintiffs,
`v.
`ALTRIA CLIENT SERVICES, LLC,
`et al.,
`Defendants.
`TRANSCRIPT OF MARKMAN HEARING PROCEEDINGS
`BEFORE THE HONORABLE LIAM O'GRADY,
`UNITED STATES DISTRICT COURT JUDGE
`
`)))))))))))))
`
`Civil Action
`No. 1:20-cv-00393-LO-TCB
`November 18, 2020
`1:00 p.m.
`
`APPEARANCES:
`For the Plaintiffs:
`
`Charles Bennett Molster, III, Esq.
`The Law Offices of Charles B.
`Molster III, PLLC
`2141 Wisconsin Ave NW, Suite M
`Washington, DC 20007
`703-346-1505
`Email: Cmolster@molsterlaw.com
`William E. Devitt, Esq.
`Jones Day
`77 West Wacker, Suite 3500
`Chicago, Illinois 60601-1692
`312-269-4240
`Email: Wdevitt@jonesday.com
`John A. Marlott, Esq.
`Jones Day
`77 West Wacker, Suite 3500
`Chicago, Illinois 60601-1692
`312-269-4326
`Email: Jamarlott@jonesday.com
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 3 of 9 PageID# 26444
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`2
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`APPEARANCES: Cont.
`For the Plaintiffs:
`
`For the Defendants:
`
`Geoffrey K. Gavin, Esq.
`Jones Day
`1420 Peachtree Street, N.E.,
`Suite 800
`Atlanta, Georgia 30309-3053
`404-521-3939
`Email: Ggavin@jonesday.com
`Sanjiv Prakash Laud, Esq.
`Jones Day
`90 South Seventh Street,
`Suite 4950,
`Minneapolis, MN, 55402
`612-217-8800
`Email: Slaud@jonesday.com
`Maximilian Antony Grant, Esq.
`Latham & Watkins LLP (DC)
`555 11th St NW, Suite 1000
`Washington, DC 20004-1304
`202-637-2200
`Email: Max.grant@lw.com
`Thomas W. Yeh, Esq.
`Latham & Watkins LLP (CA)
`355 South Grand Avenue, Suite 100
`Los Angeles, CA 90071-1560
`213-891-8050
`Email: Thomas.yeh@lw.com
`Clement Joseph Naples, Esq.
`Latham & Watkins, LLP
`885 Third Avenue 25th Floor
`New York, NY 10022
`212-906-1200
`Email: Dement.naples@lw.com
`Gregory K. Sobolski, Esq.
`Latham & Watkins, LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`202-637-2267
`Email: Max.grant@lw.com
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 4 of 9 PageID# 26445
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`3
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`APPEARANCES: (Cont.)
`Court Reporter:
`
`Scott L. Wallace, RDR, RMR, CRR
`Official Court Reporter
`United States District Court
`401 Courthouse Square
`Alexandria, VA 2231-5798
`703.549.4626
`scottwallace.edva@gmail.com
`Proceedings reported by machine shorthand, transcript produced
`by computer-aided transcription.
`
`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 5 of 9 PageID# 26446
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`87
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`Now, counsel also -- you heard him say this is a
`consisting essentially of term. It's not a consisting of term
`because you saw some plain language that used that. This is a
`consisting essentially of term.
`Go to the next one, Bill. And everyone agrees that this
`is the standard for excluding something in a consisting
`essentially of term. It has to be something that materially
`affects the basic and novel properties of the invention.
`And you didn't hear anything from counsel and there's
`nothing in their brief that tells you what the basic and novel
`properties of the invention are. So what they're really doing is
`trying to skip this and jump right to the disclaimer, which is
`clear and unmistakable and they can't do, But I wanted to frame
`that for the Court.
`If you go to the next slide. Your Honor, there's no
`expert testimony in their brief about what would affect the basic
`and novel properties. There's no analysis of how an electret
`layer anywhere in the product would affect it, no analysis of any
`material between the membrane and the back plate would affect the
`invention, and there's no identification at all, Your Honor, of
`what the basic and novel properties of the invention are.
`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.
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
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`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 6 of 9 PageID# 26447
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`94
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`And if you go to the next page now, bill, you see
`Allowable Subject Matter, Claim 26, allowed. That's why Claim 26
`was initially removed and then added back, Your Honor. There is
`no basis to exclude air, anything between the plate. Your Honor,
`there is absolutely no basis to exclude all electret layers from
`this claim. Thank you, Your Honor.
`THE COURT: All right. Thank you.
`MR. LAUD: Two more terms for this patent, Your Honor.
`THE COURT: Yes, sir.
`MR. LAUD: The next one, I'll be brief. Detect a Blowing
`Action. If Your Honor's read the briefs, you'll understand there
`isn't much of a dispute on this term between the parties at this
`point.
`Our construction, we believe -- if you go to the next
`slide, Matt -- we're not intending to alter the meaning of the
`phrase in the claim. We simply want what we believe is a plain
`and ordinary construction of that. But as we pointed out in our
`opening brief, Your Honor, the infringement contentions that we
`received from the other side lead us to believe or led us to
`believe that they were taking a very different view of that
`requirement.
`In their response brief, they say we are not trying to
`read that limitation out of the claims. Let me back up and
`explain. So, the claim requires sensing the rate and direction
`of airflow, detecting a drawing action, an inhale based on the
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 7 of 9 PageID# 26448
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`95
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`rate and direction of air flow, detect a blowing action based on
`the same thing, and then actuate the heater for the drawing
`action but not the blowing action.
`So it's detect both conditions and only actuate for one.
`Now, our understanding from their infringement contentions
`was that you didn't actually need to detect the blowing action.
`If your device, like ours, simply didn't know that a blowing
`action was happening because it can't distinguish blowing from
`nothing happening at all, then we understood them to believe that
`that meant our device still infringed the patent because they
`were reading this out. If they're going to stand by the
`representations in their responsive claim construction brief that
`the device really does have to detect something, then we're fine
`with the plain and ordinary meaning of the claim term, but it's
`that understanding that's really important to us, Your Honor.
`THE COURT: Okay. Thank you.
`MR. NAPLES: I guess, Your Honor, I appreciate them trying
`to rewrite the claim to avoid infringement. If they're saying
`they agree with the plain and ordinary meaning, I'll just sit
`down.
`Is that what you agree with? Or I can continue to argue,
`Your Honor. But changing "detect" to "determine" is obviously
`not proper. The claims use the words differently, the
`specification repeatedly says you're going to detect this blowing
`action. We don't think any construction is necessary.
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
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`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 8 of 9 PageID# 26449
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`96
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`THE COURT: They got the sense that you were trying to
`read out the word "detect".
`MR. NAPLES: We're not, Your Honor.
`THE COURT: All right. Does that bring us back to plain
`and ordinary meaning then?
`MR. LAUD: Yes, Your Honor, with the understanding that
`the device has to detect something and can't simply -- it's not
`the actuation that tells you whether it detected it, it has to
`detect something. There must be a requirement there. That's our
`purpose, and maybe it would help if I showed you what is in their
`infringement contentions. That might help to clarify the issue.
`I proposed something, and I think Mr. Naples proposed something
`slightly different, which is that --
`THE COURT: You wanted to define the term "detect" now.
`MR. LAUD: So, we proposed a construction that "detect"
`means determine the presence of something. So, for example, if I
`hear my wife say, Hey, honey, and I ignore her, that's detecting
`her saying that, and then not doing anything in response to that.
`If I can't hear her because I have headphones on, that's a
`different thing. I'm not detecting her telling me, Hey, honey.
`That's the point, Your Honor.
`THE COURT: Okay.
`MR. NAPLES: Your Honor, our -- their construction is
`"determine the presence of a blowing action at a mouthpiece."
`The claim requires "detecting a blowing action," okay. As long
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
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`Case 1:20-cv-00393-LO-TCB Document 952-5 Filed 02/11/22 Page 9 of 9 PageID# 26450
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`97
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`as everyone agrees that you can detect a blowing action through
`various means, including every single means described in the
`specification --
`
`
`
` then there is
`absolutely no dispute about this term. But this construction
`they're proposing is narrower, as far as we can tell, otherwise
`-- just narrower than detect. If they're saying it's not
`narrower then detect, then we're fine with the plain and ordinary
`meaning, and I think, if I have sufficiently assuaged their
`concerns that we're not trying to read this limitation out of the
`claim, we can go to the next term.
`THE COURT: All right. Thank you. We'll go with plain
`and ordinary meaning. All right, next term.
`MR. LAUD: Okay. All right, Your Honor, the last term
`from the '374 patent. This one is Activate the Electronic Vaping
`Device. But you have to look at the whole claim. It's a little
`bit misleading to say that just that phrase is at issue.
`So, stick with this for a moment, if you would, Matt. So,
`Your Honor, we were just looking -- actually, skim to the next
`slide, Matt, and the next one after this.
`Your Honor, we were just looking at Claim 1, which is on
`the left there, and we were just discussing the condition -- what
`are the functional operations of the capacitor. So, you sense
`the rate and direction of airflow through the device, detect a
`draw action, detect a blowing action, and actuate a heater in
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`Scott L. Wallace, RDR, CRR, Official Court Reporter
`(703)549-4626 * scottwallace.edva@gmail.com
`
`
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