`
`Case No. 1:20-cv-00393-LO-TCB
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`ORAL ARGUMENT REQUESTED
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`
`
`
`
`
`
`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 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 1 of 12 PageID# 27458
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
`
`
`
`
`PMI/ALTRIA’S OPPOSITION TO RJR’S MOTIONS IN LIMINE NOS. 4 AND 5
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`
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 2 of 12 PageID# 27459
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`TABLE OF CONTENTS
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`
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`Page
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`I.
`
`II.
`
`III.
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`RJR’S MIL #4: RELEVANT EVIDENCE SHOULD NOT BE
`CATEGORICALLY EXCLUDED MERELY BECAUSE IT OVERLAPS WITH
`PMP’S CLAIM FOR INJUNCTIVE RELIEF ....................................................................1
`
`RJR’S MIL #5 SHOULD BE DENIED AS MOOT ............................................................6
`
`CONCLUSION ....................................................................................................................7
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`i
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 3 of 12 PageID# 27460
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`TABLE OF AUTHORITIES
`
`CASES
`
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.
`No. 10-cv-910, 2012 WL 12832376 (E.D. Va. Mar. 30, 2012) .......................................... 1, 3, 5
`
`Dexcowin Glob., Inc. v. Aribex, Inc.,
`No. 16-cv-143, 2017 WL 3478492 (C.D. Cal. June 29, 2017).................................................... 5
`
`Evolved Wireless, LLC v. Apple Inc.,
`No. 15-542-JFB-SRF, 2019 WL 1100471 (D. Del. Mar. 7, 2019) ............................................. 5
`
`Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp, LLC,
`879 F.3d 1332 (Fed. Cir. 2018) ................................................................................................... 2
`
`FieldTurf USA, Inc. v. AstroTurf, LLC,
`No. 10-cv-12492, 2015 WL 13919659 (E.D. Mich. Sept. 10, 2015) .......................................... 4
`
`Fujifilm Corp. v. Motorola Mobility LLC,
`No. 12-cv-3587, 2015 WL 12622055 (N.D. Cal. Mar. 19, 2015) ............................................... 5
`
`Intelligent Verification Sys., LLC v. Microsoft Corp.,
`No. 12-cv-525, 2015 WL 1518099 (E.D. Va. Mar. 31, 2015) ................................................ 3, 4
`
`MediaTek Inc. v. Freescale Semiconductor, Inc.,
`No. 11-cv-5341, 2014 WL 587098 (N.D. Cal. Feb. 13, 2014) .................................................... 2
`
`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 15-cv-349, 2017 WL 11517123 (E.D. Tex. Mar. 2, 2017) ................................................... 2
`
`Smartflash LLC v. Apple Inc.,
`No. 13-cv-447, 2015 WL 11089593 (E.D. Tex. Jan. 25, 2015) .................................................. 5
`
`TecSec, Inc. v. Adobe Inc.,
`No. 10-cv-115, 2018 WL 11388472 (E.D. Va. Nov. 21, 2018) .................................................. 6
`
`Ultratec, Inc. v. Sorenson Commc’ns, Inc.,
`No. 13-cv-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ................................................. 2
`
`
`
`ii
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 4 of 12 PageID# 27461
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`I.
`
`RJR’S MIL #4: RELEVANT EVIDENCE SHOULD NOT BE CATEGORICALLY
`EXCLUDED MERELY BECAUSE IT OVERLAPS WITH PMP’S CLAIM FOR
`INJUNCTIVE RELIEF
`
`PMI/Altria told RJR during the meet and confer process that it does not intend to reference
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`Philip Morris Products S.A.’s (“PMP”) claim for injunctive relief or present evidence solely
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`relevant to that claim at trial. RJR did not respond1, yet now seeks to categorically exclude “any
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`evidence or argument relating to” injunctive relief.2 Dkt. 832 at 6. That overbroad relief would
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`improperly exclude evidence that is probative of issues the jury will decide, such as damages and
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`willful infringement. It should be denied.
`
`RJR provides no basis supporting its sweeping request to exclude “any evidence or
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`argument” related to injunctive relief. Dkt. 832 at 6. Nor could it. RJR’s own cited cases have
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`rejected RJR’s overbroad approach.3 Amdocs (Israel) Ltd. v. Openet Telecom, Inc. is instructive.
`
`No. 10-cv-910, 2012 WL 12832376, at *1 (E.D. Va. Mar. 30, 2012) (cited by RJR, Dkt. 832 at 4).
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`There, Judge Brinkema precluded references to “the impact of injunctive relief on [defendant’s]
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`business” but expressly stated: “This ruling in no respect limits defendant’s ability to cross-
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`examine the defendant’s damages expert. If reference to injunctive relief is relevant to that cross-
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`examination, it will be permitted.” Id. Likewise, in Ultratec, Inc. v. Sorenson Communications,
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`Inc., the court excluded evidence “submitted purely for the purpose of disclosing plaintiffs’
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`requests for injunctive relief” but explained that “some evidence [underlying the claim] may be
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`1 RJR represents that “[t]he parties were unable to reach a resolution on these issues,” Dkt. 832 at
`3, but fails to inform the Court that RJR never proposed a stipulation or even followed up after
`PMI/Altria initially confirmed it did not intend to reference PMP’s injunctive relief claim at trial.
`2 All emphasis added, and internal citations and quotation marks omitted, unless otherwise noted.
`3 RJR relies on the Patent Case Management Judicial Guide (Dkt. 839 at 3), which confirms that
`RJR’s motion should be denied because, as it explains, where “the relevance to an issue before the
`jury is shown,” a MIL to “to preclude any evidence or argument to the jury disclosing that the
`patentee seeks an injunction … should generally be denied.” Ex. G § 7.5.4.4.
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`1
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 5 of 12 PageID# 27462
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`relevant to other issues in the trial” and, “to the extent such evidence exists, its admissibility must
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`be determined on a case-by-case basis at trial.” No. 13-cv-346, 2014 WL 4829173, at *4 (W.D.
`
`Wis. Sept. 29, 2014); see also, e.g., MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-
`
`5341, 2014 WL 587098, at *1 (N.D. Cal. Feb. 13, 2014) (bifurcating “evidence related solely to
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`injunctive relief for the impending trial, reserving the option of allowing such evidence to be
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`presented if relevant and necessary”); Saint Lawrence Commc’ns LLC v. ZTE Corp., No. 15-cv-
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`349, 2017 WL 11517123, at *4 (E.D. Tex. Mar. 2, 2017) (precluding “any suggestion that there is
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`something inherently unfair or inappropriate about seeking injunctive relief” but finding that in
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`limine order “does not extend to testimony or argument” relevant to damages).
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`The Court should follow the same approach here. RJR does not (and cannot) dispute that
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`the jury may properly consider evidence relating to damages and willful infringement at trial.
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`Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp, LLC, 879 F.3d 1332, 1353 (Fed. Cir.
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`2018) (“[T]he entire willfulness determination is to be decided by the jury”). That is dispositive
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`because much of the evidence supporting PMP’s ultimate claim for injunctive relief overlaps with
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`issues the jury will decide, such as damages and willful infringement. Ex. F (PMP’s Supp. Resp.
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`to Interr. No. 23), passim (describing the factual basis for PMP’s claim for injunctive relief).
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`For example, RJR’s overbroad request would exclude evidence bearing on
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`
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`to both damages and injunctive relief, as it shows the
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`
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`. See id. at 5-6, 14-15, 39-40. But that evidence is relevant
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`RJR’s request would also exclude evidence of
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`. See Ex. A (Meyer Op.) ¶¶ 347, 354-58.
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`. Id. ¶ 358 n.512. Yet Georgia Pacific Factor
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`2
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 6 of 12 PageID# 27463
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`No. 5 requires damages experts to consider such evidence when analyzing the commercial
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`relationship between PMP and RJR as parties to the hypothetical negotiation for the asserted ’265,
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`’911, and ’556 Patents. Id. ¶ 339
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`RJR’s overbroad request would also exclude the fact that PMP
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`, but
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`
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` which is relevant to damages and injunctive relief. Cf. id. ¶¶ 334-38
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`with Ex. F (PMP’s Supp. Resp. to Interr. No. 23) at 13. And
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`
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` is highly relevant to damages (as well as
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`injunctive relief) because it shows
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`
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`. Cf. Ex. A (Meyer Op.) ¶¶ 430 (’265 Patent), 447-48 (’911 Patent), 468 (’556
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`Patent) with Ex. B (Ehrlich Op.) ¶¶ 98-103 (’911 Patent), 111-26 (’556 and ’265 Patents). As a
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`matter of law, it is improper to exclude this probative evidence merely because it is also relates to
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`injunctive relief, which will be addressed separately by the Court at a later time. See Amdocs,
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`2012 WL 12832376, at *1; Intelligent Verification Sys., LLC v. Microsoft Corp., No. 12-cv-525,
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`2015 WL 1518099, at *9 (E.D. Va. Mar. 31, 2015) (“[A] motion in limine should be granted only
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`when the evidence is clearly inadmissible on all potential grounds.”) (citation omitted).
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`Given PMI/Altria’s representation that it will not reference PMP’s injunctive relief claim
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`or present evidence solely related to that claim at trial, there is no legitimate risk of confusion or
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`prejudice to justify broader exclusion. And none of RJR’s strawman arguments support broader
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`exclusion.4 Dkt. 832 at 3-6. The fact that PMP’s injunctive relief claim is stayed and, once the
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`4 RJR argues that “[t]here is no merit whatsoever to PMP’s claim[]” for injunctive relief based
`primarily on the ITC’s decision (which is on appeal and not final). Dkt. 832 at 1-2. As an initial
`matter, RJR’s arguments on the merits of PMP’s claim are irrelevant “[b]ecause a motion in limine
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`3
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 7 of 12 PageID# 27464
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`stay is lifted, will be decided by the Court is irrelevant because PMI/Altria will not reference that
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`claim at the upcoming jury trial. Dkt. 832 at 4; see supra at 1. As such, neither argument provides
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`a basis for granting the overbroad relief that RJR requests, particularly because “[o]rders in limine
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`which exclude broad categories of evidence should rarely be employed.” Intelligent Verification,
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`2015 WL 1518099, at *10; see also, e.g., FieldTurf USA, Inc. v. AstroTurf, LLC, No. 10-cv-12492,
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`2015 WL 13919659, at *4 (E.D. Mich. Sept. 10, 2015) (denying MIL “to preclude evidence or
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`testimony on bifurcated issues” because the “invalidity and inequitable conduct claims overlap,
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`which renders the relief requested by FT overbroad”).
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`RJR’s argument that it would somehow be prejudiced at trial because it “has not yet had
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`the opportunity to develop a full record on the injunction issues” is incorrect and irrelevant. Dkt.
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`832 at 4. Fact discovery on PMP’s claim of injunctive relief is complete. While RJR allegedly
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`needs to conduct unidentified “expert discovery,” the Court already stated that “expert discovery
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`[has] … not yet been authorized,” Dkt. 702, citing with approval PMI/Altria’s position that such
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`discovery “[would not] be typical for injunction proceedings” because they “are typically handled
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`through post-trial briefing and declarations, as needed.” Dkt. 666 at 5 n.1.
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`Moreover, this is not the first time that RJR has (grossly) overstated the injunction-related
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`discovery. Magistrate Judge Buchanan previously rejected RJR’s characterization of the required
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`injunction-related discovery when granting PMP’s motion for leave to amend this claim. Dkt. 532
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`is not the appropriate vehicle for addressing the strength of the evidence or the substance of a
`complaint.” Intelligent Verification, 2015 WL 1518099, at *9. In any event, RJR’s arguments are
`wrong. For example, RJR argues that this Court previously found that the ALJ’s Initial
`Determination “undercuts the irreparable harm undergirding PMP’s claim for injunctive relief,”
`Dkt. 832 at 2, but omits that this Court expressly noted that the ITC decision must be “subject to
`final approval and appeal.” Dkt. 702 at 1. The ITC decision is being appealed on both legal and
`factual issues. Moreover, the PTAB has already invalidated one of the two RJR patents that form
`the basis for the exclusion order. Ex. C (’915 Patent FWD) at . If the PTAB invalidates the claims
`on the sole remaining patent supporting an exclusion order, the ITC decision will be of no moment.
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`4
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 8 of 12 PageID# 27465
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`(3/12/21 Hr’g Tr.) at 11:9-18 (“I’d encourage you to limit this as much as you can, because I just
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`don’t think it’s necessary to have that much discovery on [injunctive relief].”). Regardless,
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`“[w]hatever prejudice [RJR] may suffer as a result of this evidence, it is not sufficiently unfair to
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`substantially outweigh the probative value (for the purpose of assessing damages) of competition
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`between the parties,” among other issues the jury will decide at trial. Fujifilm Corp. v. Motorola
`
`Mobility LLC, No. 12-cv-3587, 2015 WL 12622055, at *5 (N.D. Cal. Mar. 19, 2015). And, if
`
`necessary, “[a] limiting instruction can cure any potential prejudice.” Dexcowin Glob., Inc. v.
`
`Aribex, Inc., No. 16-cv-143, 2017 WL 3478492, at *3 (C.D. Cal. June 29, 2017).
`
`RJR’s cited cases are inapt and, if anything, confirm that its overbroad request should be
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`rejected. As explained above, Judge Brinkema expressly held in Amdocs (cited by RJR, Dkt. 832
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`at 6) that it is improper to “limit[]” a plaintiff’s “ability” to present otherwise admissible evidence,
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`such as using this evidence “to cross-examine [RJR’s] damages expert,” even when references to
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`injunctive relief are excluded. 2012 WL 12832376, at *1. Similarly, in Dexcowin (cited by RJR,
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`Dkt. 832 at 6), the court excluded certain evidence that the patentee’s products “are unsafe or
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`unregulated” (e.g., radiation tests) because the defendant’s “only argument [was] that this is
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`relevant to injunctive relief.” 2017 WL 3478492, at *3. The court denied the remainder of the
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`defendant’s “broad request to exclude” evidence that was not solely “relevant to injunctive relief,”
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`and expressly allowed certain evidence (e.g., evidence relating to the “safety of minor suppliers”)
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`that was also relevant to the plaintiff’s damages claim.5 Id. The Court should do the same here.
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`5 RJR’s other two cited cases do not support its overbroad request. The court in Evolved Wireless,
`LLC v. Apple Inc. only excluded “[t]he fact that Evolved has sought injunctive relief against
`Defendants.” No. 15-cv-542, 2019 WL 1100471, at *6 (D. Del. Mar. 7, 2019). But PMI/Altria
`do not oppose this specific, narrow relief. See supra at 1. And the court in Smartflash LLC v.
`Apple Inc. excluded references “to issues [from the jury] to be decided by the Court,” including
`“injunction/post-trial damages,” in a single-sentence opinion lacking any underlying analysis or
`reasoning. No. 13-cv-447, 2015 WL 11089593, at *2 (E.D. Tex. Jan. 25, 2015).
`
`5
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 9 of 12 PageID# 27466
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`PMI/Altria will not reference PMP’s claim for injunctive relief or present evidence solely
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`related to that claim at trial, and thus does not oppose an order barring any party (not just PMP, as
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`RJR requests) from making such references at trial. But RJR provides no basis to categorically
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`exclude “any argument or evidence related to” PMP’s injunctive relief claim from trial, and the
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`Court should deny that overbroad aspect of RJR’s motion.
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`II.
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`RJR’S MIL #5 SHOULD BE DENIED AS MOOT
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`To avoid unnecessary motion practice, PMI/Altria told RJR during the meet and confer
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`process that PMI/Altria does not intend to reference any claim for attorneys’ fees, costs, or
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`enhanced damages at trial, and would be amenable to resolving RJR’s MIL #5. RJR never
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`responded and instead filed its motion. To streamline the issues and conserve judicial resources,
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`PMI/Altria proposed the following stipulation after receiving RJR’s MIL #5:
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`No party will reference any request for costs, attorneys’ fees, or enhanced damages
`at trial. This agreement does not preclude any party from presenting otherwise
`relevant evidence, including but not limited to evidence related to damages and
`willfulness.
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`Ex. D (1/26/22 Email). RJR refused and failed to offer any legitimate basis for its refusal.6 See
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`Ex. E (1/27/22 Michalik Email). PMI/Altria therefore requests that the Court adopt the proposed
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`stipulation above and deny RJR’s MIL #5 as moot. See TecSec, Inc. v. Adobe Inc., No. 10-cv-115,
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`2018 WL 11388472, at *4 (E.D. Va. Nov. 21, 2018) (adopting Adobe’s proposed MIL stipulation
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`“as binding” where Adobe proposed the stipulation, “but rather than agree to jointly file the
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`stipulation, TecSec instead brought this Motion in Limine”).
`
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`6 RJR stated that it “cannot agree in advance to the introduction of unidentified evidence,” Ex. E,
`but PMI/Altria’s proposal does not require an agreement on the admissibility of any evidence. It
`merely places reasonable limits on the scope of the agreement, so as not to subsequently prevent
`any party from seeking to present otherwise relevant evidence at trial.
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`6
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 10 of 12 PageID# 27467
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`III. CONCLUSION
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`PMI/Altria respectfully request that the Court deny RJR’s MIL #4 and deny RJR’s MIL #5
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`as moot.
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`Dated: February 11, 2022
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`
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`
`
`
`Respectfully submitted,
`
`By: /s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`Lawrence J. Gotts (VSB No. 25337)
`lawrence.gotts@lw.com
`Matthew J. Moore (pro hac vice)
`matthew.moore@lw.com
`Jamie Underwood (pro hac vice)
`jamie.underwood@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Clement J. Naples (pro hac vice)
`clement.naples@lw.com
`LATHAM & WATKINS LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200; Fax: (212) 751-4864
`
`Gregory J. Sobolski (pro hac vice)
`greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`
`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Tel: (312) 876-7700
`Fax: (312) 993-9767
`
`
`7
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 11 of 12 PageID# 27468
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`Counsel for Plaintiffs Altria Client Services
`LLC, Philip Morris USA Inc., and Philip
`Morris Products S.A.
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`8
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`

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`Case 1:20-cv-00393-LO-TCB Document 972 Filed 02/11/22 Page 12 of 12 PageID# 27469
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 11th day of February, 2022, a true and correct copy of the
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`foregoing was served using the Court’s CM/ECF filing system, with electronic notification of
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`such filing to all counsel of record.
`
`
`
`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
` LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`Email: max.grant@lw.com
`
`Counsel for Plaintiffs Altria Client
`Services LLC, Philip Morris USA Inc.,
`and Philip Morris Products S.A.
`
`
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`9
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`