Case 1:20-cv-00393-LO-TCB Document 977-1 Filed 02/11/22 Page 1 of 4 PageID# 27565
`Case 1:20-cv-00393-LO-TCB Document 977-1 Filed 02/11/22 Page 1 of 4 PagelD# 27565
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`EXHIBIT A
`EXHIBIT A
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`Case 1:20-cv-00393-LO-TCB Document 977-1 Filed 02/11/22 Page 2 of 4 PageID# 27566
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`From:
`Sent:
`To:
`Cc:
`Subject:
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`Jared - -
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`Michalik, John M. <jmichalik@JonesDay.com>
`Thursday, January 27, 2022 1:52 PM
`Schubert, Jared (NY); #C-M PMIEDVA - LW TEAM
`RJREDVA; cmolster@molsterlaw.com
`RE: PMI/Altria v. Reynolds - Motions in Limine
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`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℠
`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
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`** External mail **
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`John,
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`We write to follow up on the parties’ prior discussions regarding Reynolds’ MIL Nos. 4-6, and 10 (as filed).
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`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 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
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`Case 1:20-cv-00393-LO-TCB Document 977-1 Filed 02/11/22 Page 3 of 4 PageID# 27567
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`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.
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`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;
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`If Reynolds confirms that it will not make any of the above arguments at trial, we may be able to resolve Reynolds’ MIL
`#6.
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`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.
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`Please let us know RJR’s position on the above MILs by 5 pm ET on Thursday.
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`Regards,
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`Jared S. Schubert
`
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`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
`
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`Case 1:20-cv-00393-LO-TCB Document 977-1 Filed 02/11/22 Page 4 of 4 PageID# 27568
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