Description Exhibit # Ex. 2001 Declaration of Joseph C. McAlexander Ex. 2002 Curriculum Vitae of Joseph C. McAlexander Ex. 2003 November 10, 2020 Defendant R.J. Reynolds Vapor Company’s Preliminary Invalidity Contentions June 14, 2021 Amended Scheduling Order Ex. 2004 Ex. 2005 April 26, 2021 Defendants’ Memorandum in Support of Motion to Stay Litigation Pending Inter Partes Review (Public version) Ex. 2006 May 17, 2021 Plaintiffs’ Memorandum in Opposition to Defendants’ Motion to Stay Litigation Pending Inter Partes Review Ex. 2007 May 28, 2020 Complaint for Patent Infringement Ex. 2008 March 19, 2021 Defendant R.J. Reynolds Vapor Company’s Amended Preliminary Invalidity Contentions Ex. 2009 May 12, 2021 Claim Construction Memorandum Opinion Ex. 2010 Reserved Ex. 2011 June 10, 2015 Business Wire article titled “PAX Labs Raises $46.7 Million in Series C Funding”, https://www.businesswire.com/news/home/20150610005350/en/PA X-Labs-Raises-46.7-Million-in-Series-C-Funding Japanese Patent 2017/533726A (with translation) Ex. 2012 Ex. 2013 Declaration of Robert Magee

Although the District Court has not set a trial date, the scheduling order aims to conclude expert discovery by October 13, 2021 and dispositive motion briefing by December 22, 2021.

Petitioner may propose, as it has in other pending IPR proceedings, to stipulate that it will not rely on the primary references in the Petition, Juul 1 and Verleur, in the District Court case, in order to tip this factor in its favor.

Because the prior art in the Petition completely overlaps with the District Court case and the grounds asserted are identical, this Fintiv factor favors denying institution.

Indeed, Petitioner has not even attempted to make such a showing because its Petition does not even address reasonable expectation of success, or otherwise explain why a POSA would have been motivated to take the teachings of Verleur to arrive at the claimed invention.

Pursuant to 37 C.F.R. § 42.10(b), Patent Owner Altria Client Services LLC, hereby appoints the following practitioners as its attorneys to transact all business in the United States Patent & Trademark Office connected to the above-captioned Inter Partes Review of U.S. Patent No. 10,485,269:

Patent Owner, Altria Client Services LLC, hereby submits its mandatory notices pursuant to 37 C.F.R. § 42.8(a)(3).

A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) Altria Client Services LLC is a wholly owned subsidiary of Altria Group, Inc., a publicly-held corporation.

Related Matters (37 C.F.R. § 42.8(b)(2)) U.S. Patent No. 10,485,269 (the ’269 patent) is currently the subject of litigation in Altria Client Services LLC et al. v. R.J. Reynolds Vapor Company, No. 1:20-cv-00472-NCT-JLW (M.D.N.C.), filed on May 28, 2020.

On March 31, 2021, Petitioner concurrently filed IPR petitions for U.S. Patent Nos. 10,299,517, 10,492,541, and 10,588,357.

A power of attorney from Patent Owner is being submitted concurrently herewith.

Pursuant to 37 C.F.R. § 42.10(b), Petitioner R.J. Reynolds Vapor Company hereby appoints practitioners associated with Jones Day, Customer Number 20583, as its attorneys to transact all business in the United States Patent and Trademark Office associated with Petitions for Inter Partes Review of U.S.

Patents asserted in Altria Client Services LLC et al. v. R.J. Reynolds Vapor Company, No. 1:20-cv-00472-NCT-JLW (M.D.N.C.).

901 Lakeside Ave. Cleveland, OH 44114

The individual signing below has the authority to execute this document on behalfof R.J. Reynolds Vapor Company.

r Company Title: :

First, the statistics that Reynolds proffers concerning the institution and invalidity rates at the PTAB show the likelihood that the majority of Altria’s asserted patent claims will survive the IPR process, meaning that a trial in this case will go forward in any event.

As such, Reynolds is not employing the IPR process as an efficient alternative to district court adjudication of patent validity, but instead as a strategic weapon to delay Altria from proceeding expeditiously with its claims.

LEXIS 135202, *5 (Sept. 25, 2014) (“[T]his case is in a fairly early stage of litigation, Plaintiff having only recently filed its second amended complaint, with relatively minimal discovery to date.”); Sharpe Innovations v. T-Mobile United States, Nos. 2:17-cv-351, 2:17-cv-412, 2018 U.S. Dist.

And in a parallel litigation involving most of the same parties as here, Reynolds took the opposite position it now advances by opposing a pre-institution stay motion because “[a]t best, Defendants’ chances before the PTAB are unknown.” See Ex. 1, RAI Strategic Holdings, Inc. v. Altria Client Services LLC, No. 1:20-cv-00393-LO- TCB, Dkt. No. 405 at 11 (E.D.

... [W]here, as here, ‘the parties are direct competitors,’ ‘courts have found a higher risk of prejudice to the non-movant—for example, harms that go beyond calculable money damages, including more permanent loss of market share and goodwill.’” Ex. 1, EDVA Litigation, Dkt. No. 405 at 17.

PAX Labs Raises $46.7 Million in Series C Funding | Business Wire Page 1 PAX Labs Raises $46.7 Million in Series C Funding Investment Will Fuel Company’s Growth in Category Redefining Vapor Products June 10, 2015 10:00 AM Eastern Daylight Time SAN FRANCISCO--(BUSINESS WIRE)--PAX Labs, Inc., the technology company behind products that provide a cleaner, modern alternative to smoking, today announced $46.7 million in new funding led by existing investors with participation from Fidelity Management & Research Company; Sivia Capital; individual investors from finance, Pharma, entertainment and Silicon Valley leadership; and a group led by Chuck Pieper and Brian Finn.

PAX Labs will use this latest round of funding to accelerate its mission to apply vapor technology and science across already mature industries, providing better consumer options.

“Vaporization is a highly disruptive technology, and we are focused on applying our innovations across new industries and use cases,” said James Monsees, CEO and co-founder, PAX Labs.

“Our integrated science and technology platforms have the potential to rapidly innovate the $1 trillion existing tobacco industry and have broad applications for entire new delivery systems that will amaze consumers and drive growth.

Founded in 2007 by two Stanford Design Masters program graduates, PAX Labs (formerly known as Ploom, Inc.) applies vapor science and technology across a number of industries, beginning with the smoking experience.

The base plate 36 functions as a mounting surface for the electric heater 14 and a thermal barrier between the vaporization chamber 26 and other housing 16 components, such as controllers/control circuitry and/or the internal power supply 12.

[0027] Generally, any material that can be machined, or more preferably molded, to the desired shape, and that can withstand chemical degradation by the liquids used in the system and high temperatures (for example, in excess of 150° C or even 200° C) can be used to make the base plate.

A representative, non-limiting list of useful heat- resistant thermoplastic polymers include liquid crystal polymers ("LCP"), Polyetheretherketone (PEEK), Polyether Imide (PEI), Polyphenylene Sulfide (PPSs) fluoropolymers, Polyimides, Polyamideimides (PAIs), High-performance polyamides (HPPAs), polyimides (PIs), polyketones, polysulfone derivatives, polycyclohexane dimethyl-terephthalates (PCTs), fluoropolymers, polyetherimides (PEIs), polybenzimidazoles (PBIs), polybutylene terephthalates (PBTs), syndiotactic polystyrene, acrylonitrile-methyl acrylate copolymers (for example Barex® resins manufactured by Velox, Hamburg, Germany), and the like.

[0042] While the embodiment of Figs. 1-7 is effective, a person of ordinary skill in the art can recognize that more symmetry of airflow around the heater can improve particle size distribution and reduce the likelihood of condensation in the vaporization chamber.

A representative, non- limiting list of useful heat- resistant thermoplastic polymers include liquid crystal polymers ("LCP"), polyetheretherketone (PEEK), polyether imide (PEI), polyphenylene sulfide (PPS) , fluoropolymers, polyimides, polyamideimides (PAIs), high- performance polyamides (HPPAs), polyimides (PIs), polyketones, polysulfone derivatives, polycyclohexane dimethyl- terephthalates (PCTs), fluoropolymers, polyetherimides (PEIs), polybenzimidazoles (PBIs), polybutylene terephthalates (PBTs), syndiotactic polystyrene, acrylonitrile-methyl acrylate copolymers (for example Barex® resins Velox, Hamburg, Germany), and the like.

In such circumstances, the non-hermetic seal can provide a limited amount of gas exchange with the ambient air while maintaining control over the egress of moisture, volatile flavors, or both (from the orally consumed tobacco product) out of the container.

Thus, a district court should “[f]irst ... look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.” Id. “[C]laims are of primary importance, in the effort to ascertain precisely what it is that is patented.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotations and citation omitted).

Finally, the prosecution history, which “consists of the complete record of the proceedings before the PTO [United States Patent and Trade Office] and includes the prior art cited during the examination of the patent”, should be considered by the court if it is in evidence.

Therefore, a person of ordinary skill in the art would understand the term “mouthpiece” to mean: the portion – assigned or allotted part – of the object which includes the area where the user normally places his or her lips.

According to Altria, the terms “are comprised of simple, common words that are readily understood by a POSA and the average juror” while Reynolds’ proposal “improperly imposes a specialized definition from Euclidian geometry that the front and rear faces must be ‘bounded by one or more edges[‘]”.

Pursuant to Local Patent Rule (“LPR”) 103.3 and the Court’s Scheduling Order (Dkt. 33), Defendant R.J. Reynolds Vapor Company (“Reynolds”), by its attorneys, sets forth the following Preliminary Invalidity Contentions to Plaintiffs Altria Client Services LLC and U.S. Smokeless Tobacco Company LLC (collectively “Altria” or “Plaintiffs”).

Reynolds’s discovery and investigation in connection with the validity of the Asserted Claims is ongoing, and Reynolds’s response is based on information obtained to date.

This response is not, however, an admission that any particular claim element is present in any current commercial product of Reynolds, either literally or under the doctrine of equivalents.

Additionally, prior art not included in this response, whether or not now known to Reynolds, may become relevant depending on the claim constructions that the Court may adopt.

Item offered for sale or publicly used or known Ball Regular Dome Lids (partial lid insert for canning jar) Dr. Pat Irish Mixture De- Luxe Pipe Tobacco Dunhill Nightcap Erinmore Flake Erinmore Mixture Escudo Navy De Luxe Flying Dutchman Tobacco Honey & Chocoloate Loose Cut Pipe Tobacco

A panel of three Administrative Patent Judges of the PTAB first decides whether to institute an IPR based on whether the petitioner has shown a reasonable likelihood of prevailing on at least one challenged claim.

mindful that, in the months leading up to PTAB’s decision whether to grant IPR, the parties and the court would expend many resources in litigation that could be rendered unnecessary by the outcome of IPR.” Sharpe Innovations, 2018 WL 11198604, at *3.

LLC v. Apple Inc., 621 F. App’x 995, 1005 (Fed. Cir. 2015) (finding factor weighed in favor of stay where the district court had held a Markman hearing and had heard dispositive motions, but the case had yet to go to trial).

“Generally, the statutory time constraints on IPR proceedings limit the extent of prejudice to the non-movant, particularly where a stay would not diminish the amount of monetary damages recoverable by the plaintiff.” Sharpe Innovations, 2018 WL 11198604, at *4.

Courts agree that this factor—which originated as one of the statutory factors designed by Congress for PTAB review of CBM patents—is “designed to place a thumb on the scales in favor of a stay” by “look[ing] prospectively in determining whether a stay will reduce the further burdens of litigation.” Id. (citation omitted).