Case 1:20-cv-00393-LO-TCB Document 957-5 Filed 02/11/22 Page 1 of 5 PageID# 26657
`Case 1:20-cv-00393-LO-TCB Document 957-5 Filed 02/11/22 Page 1 of 5 PagelD# 26657
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`EXHIBIT 5
`EXHIBIT 5
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`(PUBLIC)
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`Case 1:20-cv-00393-LO-TCB Document 957-5 Filed 02/11/22 Page 2 of 5 PageID# 26658
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`RESTRICTED – ATTORNEYS’ EYES ONLY AND CONFIDENTIAL SOURCE CODE
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`SECOND SUPPLEMENTAL OPENING EXPERT REPORT OF
`JOSEPH C. McALEXANDER III
`REGARDING U.S. PATENT NUMBERS 6,803,545 AND 10,420,374
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`RJR STRATEGIC HOLDINGS, INC. AND R.J. REYNOLDS VAPOR COMPANY
`vs.
`ALTRIA CLIENT SERVICES LLC; PHILIP MORRIS USA INC.; and
`PHILIP MORRIS PRODUCTS S.A.,
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`Civil Action No. 1:20-cv-00393-LO-TCB
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`CONFIDENTIAL SOURCE CODE – ATTORNEYS’ EYES ONLY INFORMATION
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`12.14.1 Summary Of Analyses
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`695.
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`In forming my opinions, I applied the legal standards discussed above in the Legal
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`Standards section of this Report.712 As stated in Section 7 above, I understand that a loose or
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`vague comparability between different technologies or licenses is not sufficient to support a
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`conclusion that two technologies are comparable. Instead, to be sufficiently comparable, the
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`licensed technology must be of the same subject matter as claimed in the asserted patents. In
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`addition, a conclusion of comparability must be guided by reasonable technical considerations,
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`and any differences in the technologies must be accounted for.
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`696.
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`In forming my opinions, I considered different factors that inform technical
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`comparability, including the following exemplary factors. For example, I considered the
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`technology described and claimed in the various patents. I also considered whether the technology
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`claimed in the patents licensed in a certain agreement were the same or similar to the technology
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`claimed in the Asserted Patents. I evaluated the differences between technology claimed in the
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`patents licensed in the various agreements and the technology claimed in the Asserted Patents, and
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`I considered the advantages, benefits, and drawbacks of the technology claimed in the patents
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`licensed in the various agreements compared with the technology claimed in the Asserted Patents.
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`I considered the scope of the claims in the patents licensed in the various agreements and the
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`technology claimed in the Asserted Patents, and assessed the likelihood that a competitor would
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`712 See supra at 7.
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`(or would not) be able to design around the claims. Finally, I considered other objective indicators
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`of technical comparability and value. I describe my analyses in further detail below.
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` First, for my comparability analysis, I considered the specific technical aspects of
`697.
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`the technology claimed in the patents licensed in the various agreements, and assessed how that
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`technology would cover similar products. While I considered the technology described in the
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`specification, I focused on analyzing the technology claimed in the licensed patents compared to
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`the technology claimed in the Asserted Patents. To determine the degree of comparability, I also
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`considered the U.S. Classification identified on the face of each licensed patent and the Asserted
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`Patents, and analyzed the degree of overlap (if any) between the patents.
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` Second, when determining the degree of comparability, I considered how the
`698.
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`technology claimed in the licensed patents compared to the technology claimed in the Asserted
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`Patents. For example, when assessing whether a licensed patent was comparable to the technology
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`claimed in the '545 Patent, I considered whether the technology described in the licensed patent(s)
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`was directed to the same or similar subject matter, such as improvements that could relate to or be
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`used with a lithium ion battery power control through modulating pulses, specifically as it related
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`to control of power demand to prevent damage to the battery, which would include thermal
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`runaway conditions. For the '374 Patent, I considered whether the technology described in the
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`licensed patent(s) was directed to the same or similar subject matter, such as improvements that
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`could relate to detecting a draw and puff actions that would arbitrate heating element actuation.
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` Third, in my apportionment analysis, I considered the stated goals, advantages,
`699.
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`benefits, and drawbacks of the technology claimed in the licensed patents and Asserted Patents. I
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`considered the improvements and ease of implementing the technology claimed in the licensed
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`patent(s) as compared to the technology claimed in the '545 and '374 Patents. I also considered
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`the technical value (both perceived and real) of the technology claimed in the licensed patent(s)
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`compared to the technology claimed in the Asserted Patents. For example, I considered whether
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`a device practicing the licensed patent or Asserted Patent would be able to provide benefits to the
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`user—and the extent of those benefits— such as improving safety, increasing reliability, extending
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`battery life, or improving the overall smoking experience. I also considered whether implementing
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`the claimed technology would significantly increase the cost of the overall device or be feasible.
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`I also considered whether the technology claimed in the licensed patent(s) or asserted patents are
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`relevant to the factors discussed in the FDA guidance I have reviewed and discussed with Stacy
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`Ehrlich,713 who I understand based on my conversation is an expert on FDA regulatory review of
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`e-vapor products, and the extent of such relevance, as I discuss elsewhere in this report.
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` For my apportionment analysis, in addition to all of the factors discussed above, I
`700.
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`considered the relative value of the technology claimed in the patents in the licensed patent
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`families. To do so, I considered the likelihood that one could feasibly and successfully design
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`around the claims recited in the licensed patent(s).
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`12.14.2 Fontem Agreements
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`701.
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`I was asked to opine on the technological comparability between the technology
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`claimed in the '545 Patent and the technology claimed at issue in certain patents licensed in the
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`713 Conversation with S. Ehrlich on or around Feb. 18, 2021.
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`1:20-cv-00393-LO-TCB, McAlexander Expert Report - Infringement
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