Case 1:20-cv-00393-LO-TCB Document 972-5 Filed 02/11/22 Page 1 of 4 PageID# 27520
`Case 1:20-cv-00393-LO-TCB Document 972-5 Filed 02/11/22 Page 1 of 4 PagelD# 27520
`
`EXHIBIT E
`EXHIBIT E
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 972-5 Filed 02/11/22 Page 2 of 4 PageID# 27521
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Michalik, John M.
`Schubert, Jared (NY); #C-M PMIEDVA - LW TEAM
`RJREDVA; cmolster@molsterlaw.com
`RE: PMI/Altria v. Reynolds - Motions in Limine
`Thursday, January 27, 2022 4:52:08 PM
`
`Jared - -
`
`We appreciate PM/Altria’s willingness to narrow the issues in dispute. However, we disagree that
`your proposed stipulations would moot the issues raised in Reynolds’s motions in limine. For
`example, regarding MIL No. 10, we do not agree that it would be appropriate for PM/Altria to elicit
`specific testimony about “Fontem’s infringements allegations against Reynolds in their prior
`litigations.” Your proposal also reserves a right to introduce unspecified “otherwise relevant
`evidence” relating to the topics addressed in Reynolds’s motions. We cannot agree in advance to
`the introduction of unidentified evidence, nor do we think it would be fruitful to attempt to capture
`all such possibilities in the language of a stipulation. In these circumstances, we believe the most
`efficient course is for PM/Altria to specify the extent to which it agrees with Reynolds’s motions in
`PM/Altria’s briefs in opposition, reserving any remaining issues for the hearing and, if necessary, for
`the Court to evaluate the proffered evidence in the context of trial.
`
`
`John M. Michalik
`Partner
`JONES DAY® - One Firm Worldwide(cid:930)
`77 West Wacker
`Chicago, Illinois 60601-1692
`Office +1.312.269.4215
`Mobile +1.312.315.5926
`jmichalik@jonesday.com
`
`From: Jared.Schubert@lw.com <Jared.Schubert@lw.com>
`Sent: Wednesday, January 26, 2022 11:19 AM
`To: Michalik, John M. <jmichalik@JonesDay.com>; RJREDVA <RJREDVA@jonesday.com>;
`cmolster@molsterlaw.com
`Cc: pmiedva.lwteam@lw.com
`Subject: PMI/Altria v. Reynolds - Motions in Limine
`
`
`** External mail **
`
`
`John,
`
`We write to follow up on the parties’ prior discussions regarding Reynolds’ MIL Nos. 4-6, and 10 (as
`filed).
`
`RJR’s MIL #4: RJR seeks to exclude “all evidence and argument regarding any request for, or alleged
`entitlement to, an injunction.” We believe that RJR’s request is overbroad as drafted. During the
`meet and confer process, RJR had indicated it might propose stipulated language to eliminate this
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 972-5 Filed 02/11/22 Page 3 of 4 PageID# 27522
`
`MIL. RJR ultimately did not, but we remain open to finding a way to conserve judicial resources. To
`that end, PMI/Altria proposes that the parties agree to not (i) reference PMP’s claim for injunctive
`relief in front of the jury and (ii) present argument, evidence, or testimony solely related to PMP’s
`claim for injunctive relief. This proposal would moot RJR’s MIL #4.
`RJR’s MIL #5: RJR seeks to exclude “all evidence and argument regarding any request for or alleged
`entitlement to an award of enhanced damages or attorneys’ fees.” Dkt. 832 at 9. PMI/Altria is
`willing to agree to this motion, so long as it is mutual and makes clear that it does not render
`otherwise relevant evidence inadmissible. PMI/Altria therefore proposes that the parties agree to
`the following stipulation: “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.” This proposal
`would moot RJR’s MIL #5.
`
`RJR’s MIL #6: Reynolds seeks to exclude “any argument, evidence, or testimony regarding Reynolds
`not obtaining or relying on an opinion of counsel or suggesting that Reynolds should have obtained
`one (and any other adverse inference related to absence of an opinion of counsel).” Dkt. 839 at 6.
`As discussed during the meet and confer process, we would like Reynolds to confirm that it will not
`present certain argument, evidence, or testimony at trial, as described below. We don’t believe
`Reynolds was willing to give that confirmation, which is necessary to evaluate the need for this
`motion. To streamline the issues and avoid unnecessary briefing, please confirm Reynolds will not
`present argument, evidence, or testimony at trial suggesting that Reynolds:
`
`1. Relied on legal advice or an opinion of counsel letter for the asserted patents, including to
`argue alleged non-infringement, invalidity, or a lack of willfulness;
`2. Had, after being on notice of an asserted patent, a good faith belief that it was not infringing
`that patent; and
`3. Implemented processes or procedures to avoid infringing any of the asserted patents;
`
`If Reynolds confirms that it will not make any of the above arguments at trial, we may be able to
`resolve Reynolds’ MIL #6.
`
`RJR’s MIL #10: RJR seeks to exclude introducing “any evidence or argument that RJR infringed or has
`been accused of infringing third-party patents” with a carve out regarding the Fontem litigation.
`During the meet and confer process, RJR had indicated it might propose stipulated language to
`eliminate this MIL. RJR ultimately did not, but we remain open to finding a way to conserve judicial
`resources. To that end, we propose the following stipulation: “No party will present argument,
`evidence, or testimony that Reynolds infringed or has been accused of infringing a patent owned by
`a third-party, other than a Fontem entity. For clarity, this agreement does not preclude any party
`from presenting argument, evidence, or testimony relating to PMI/Altria’s infringement allegations
`in this case or Fontem’s infringements allegations against Reynolds in their prior litigations.” This
`proposal would moot RJR’s MIL #10.
`
`Please let us know RJR’s position on the above MILs by 5 pm ET on Thursday.
`
`Regards,
`
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 972-5 Filed 02/11/22 Page 4 of 4 PageID# 27523
`
`Jared S. Schubert
`
`LATHAM & WATKINS LLP
`1271 Avenue of the Americas
`New York, NY 10020
`Direct Dial: +1.212.906.4637
`Email: jared.schubert@lw.com
`https://www.lw.com
`
`
`_________________________________
`
`This email may contain material that is confidential, privileged and/or attorney work product
`for the sole use of the intended recipient. Any review, disclosure, reliance or distribution by
`others or forwarding without express permission is strictly prohibited. If you are not the
`intended recipient, please contact the sender and delete all copies including any attachments.
`
`Latham & Watkins LLP or any of its affiliates may monitor electronic communications sent or
`received by our networks in order to protect our business and verify compliance with our
`policies and relevant legal requirements. Any personal information contained or referred to
`within this electronic communication will be processed in accordance with the firm's privacy
`notices and Global Privacy Standards available at www.lw.com.
`***This e-mail (including any attachments) may contain information that is private,
`confidential, or protected by attorney-client or other privilege. If you received this e-mail in
`error, please delete it from your system without copying it and notify sender by reply e-mail,
`so that our records can be corrected.***
`
`