and MODORAL BRANDS, INC.,

Upon consideration of Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc.’s consent motion to extend the parties’ deadline to serve objections to exhibit lists, objections to deposition designations, and deposition counter-designations from August 4, 2022 to August 11, 2022, IT IS HEREBY ORDERED that the motion is GRANTED.

This the 28th day of July, 2022.

This matter is before the Court on a Joint Motion to Modify Pretrial Scheduling Order [Doc. #301].

The parties’ co-extensive efforts to coordinate trial preparation in addition to that ordered by the Court’s Pretrial Scheduling Order [Doc. #295] is appreciated.

And the parties are encouraged to continue to do so as outlined in their proposed schedule.

Objections to exhibits, deposition designations, and deposition counter-designations will be heard the week before trial during the pretrial hearing on motions in limine scheduled to begin on August 22, 2022, thus avoiding to the extent possible the inconvenience and hardship the resolution of such disputes would impose on the jury that will be convened for trial.

IT IS HEREBY ORDERED that the Joint Motion to Modify Pretrial Scheduling Order [Doc. #301] is DENIED.

First, it is determined that Defendants were sufficiently specific to meet their initial burden when they responded to Plaintiffs’ damages interrogatory by identifying “Plaintiffs’ licensee JUUL” as practicing Asserted Claims of the Hawes Patents “in the JUUL Device and accompanying Pods”, (Defs.’ Objs.

Perhaps it can be argued that because Defendants identified during fact discovery the licensed JUUL device and accompanying pods as practicing the Asserted Claims that Plaintiffs’ expert should have known to opine on marking in his opening report.

P. 56(a).” Groves v. Commc’n Workers of Am., 815 F.3d 177, 181 (4th Cir. 2016).15 The moving party bears the initial burden of establishing “the basis for its motion[] and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (citing Fed. R. Civ.

The “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).

“Clear and convincing evidence should place[] in the fact finder an abiding conviction that the truth of [the] factual contentions are highly probable.” Impax Labs., Inc. v. Lannett Holdings Inc., 893 F.3d 1372, 1378 (Fed. Cir. 2018) (citations omitted and alterations in original).

This matter has been set for trial on August 29, 2022.

In preparation for trial, the Court ORDERS that the parties submit pretrial filings on the following schedule: 1.

Pretrial disclosures must be made no later than July 21, 2022.

Plaintiffs pretrial motions based on new discovery resulting from the Court’s July 6, 2022 Memorandum Opinion and Order must be submitted by August 4, 2022.

Trial briefs and jury instructions must be submitted no later than August 4, 2022.

The parties submitted a Joint Status Report on May 23, 2022, in which Plaintiffs maintain that the progress of this case since the filing of the motion has had no effect while Defendants contend that their “invalidity contentions and theories have been narrowed and fully aired in the parties’ respective competing expert reports”.

Defendants “also amended [their] Final Invalidity Contentions for the Bried patent family to address newly discovered tins” that they purchased on pipestud.com “(a website whose inventory is constantly changing)” “shortly before [they] deposed a third party, Steven Fallon of pipestud.com.” (Defs.’ Opp’n at 13.)

Next, Plaintiffs are afforded the opportunity to conduct accelerated discovery of their choosing (interrogatories, requests for production of documents, depositions) related to Defendants’ combination and motivation disclosures.

Finally, Defendants are ordered to pay Plaintiffs’ attorney’s fees and costs associated with (a) Plaintiffs’ counsel’s work on the portion of this motion that pertains to violation of Rule 103.3(b) and (b) Plaintiff’s accelerated discovery, if any, related to Defendants’ combination and motivation disclosures.

In their brief, Defendants argue: For whatever strategic reason – perhaps because it was already well aware of the 2013-14 history concerning the Bried patents – Altria chose to not serve an interrogatory (or other discovery) related to that defense.

Two days later, the Court entered a Text Order deferring ruling on the motion to stay until the PTAB issued its institution decisions on the remaining patents.

In view of the amount of fact and expert discovery already conducted to date, Reynolds fully expects Altria to dismiss such counts with prejudice.

“Although resolution of a motion to enforce a settlement agreement draws on standard contract principles, it may be accomplished within the context of the underlying litigation without the need for a new complaint.” Hensley v. Alcon Labs., Inc., 277 F.3d 535, 540 (4th Cir. 2002).

Consideration has long been understood as “some right, interest, or benefit accruing to the other party, or some forbearance, detriment, loss, or responsibility given, suffered, or undertaken by the other.” ACME Mfg.

Although the parties were afforded a hearing on this motion (during which the only evidence presented was an additional email exchange among counsel), there is no genuine factual dispute as to the existence and terms of the agreement as explained in this opinion.

On June 15, 2022, the undersigned entered a text order tequiting Plaintiffs to submit to the Court for in camera review the withheld documentsthat ate responsive to Defendants’ Request for Production No. 167 (“RFP No. 167”).

Here, Defendants waited until the last day of fact discovery to file their motion for letter rogatory, despite first noting the significance of Inova 2.0 on November 10, 2020 (see

Clearly, allowing Defendants to pursue international discovety through the dilatory letter rogatory process would delay this case and prejudice Plaintiffs and could potentially require them to amendotrefile theit motion fot summaty judgment.

Defendants claim that the information responsive to RFP No. 167 is relevant to the issue of “the potentially invalidating effect of the prior art JUUL products on four of the asserted patents here.” (Docket Entry 117 at 7.)

“In the absence of an improper purpose and whete there ate no countetvailing interests, sealing confidential business information is appropriate.” Adjabeng, 2014 WL 459851, at *3 (citing Bayer Cropscience Inc. v. Syngenta Crop Protection, LLC, No. 1:13— CV-316, 2013 WL 5703212, at *2-3 (M.D.N.C. Oct. 17, 2013)); see also Senderra Rx Partners, LLC v. Blue Cross Blue Shield of N. Carolina, No. 1:18-CV-871, 2019 WL 9633640, at *3 (M.D.N.C.July 26, 2019) (sealing portions of a network participation agreement between an insutance companyand its specialty pharmacy network because information in the document could hatm competitive standing if released).

and MODORAL BRANDS, INC.,

Before the Court is the Motion for Withdrawal of Counsel to withdraw Robert T. Vlasis, III as counsel of record for Plaintiffs Altria Client Services LLC and U.S. Smokeless Tobacco Company, LLC (“Plaintiffs”) in the above-captioned matter.

Upon consideration thereof and for good cause shown, IT IS HEREBY ORDERED that the Motion for Withdrawal of Counsel to withdraw Robert T. Vlasis, III as counsel is GRANTED.

This the 13th day of June, 2022.

Senior United States District Judge

This matter is before the Court on Plaintiffs’ Motion for Leave to File Supplemental Summary Judgment Briefing [Doc. #262].1 Plaintiffs’ motion for partial summary judgment, filed on November 10, 2021 pursuant to the Scheduling Order, remains pending.

On May 6, 2022, the Court granted Defendants’ motion to amend the Scheduling Order for leave to produce the transcript and accompanying exhibits from a recent third-party deposition and serve a four-page supplemental expert report.

Plaintiffs request leave to supplement their summary judgment brief with five pages that address this new evidence.

IT IS HEREBY ORDERED that Plaintiffs’ Motion for Leave to File Supplemental Summary Judgment Briefing [Doc. #262] is GRANTED.

Plaintiffs must separately docket their Supplemental Briefing in Support of Altria’s Motion for Partial Summary Judgment by 5:00 p.m. on the date of this Order.

This matter is before the Court on Defendants’ Motion to Withdraw Sealed Exhibit (Doc. #257-1) to be Replaced with a Supplemental, Narrowed Sealed Exhibit, [Doc. #260 (Mot.

Narrowed Sealed Ex.)].

To minimize the burden on third-party JUUL Labs, Inc. (the party claiming confidentiality) and for good cause shown, IT IS ORDERED that Defendants’ Motion [Doc. #260] is GRANTED.

The supplemental exhibit will be considered in place of the exhibit at Doc. #257-1, and JUUL Labs, Inc. shall submit its memorandum in support of maintaining the seal on the exhibit at Doc. #261-1 within fourteen days of the motion to seal.

The Clerk is instructed to remove Docket Entry 257-1 from the record.

The deadlines for service of expert reports were August 4, 2021 (for issues on which the party bears the burden of proof), August 25, 2021 (for issues on which the opposing party bears the burden of proof), and September 8, 2021 (rebuttal) with expert depositions to follow.

On May 3, 2022, Defendants moved “to amend the Scheduling Order for leave to produce the transcript and accompanying exhibits from a recent third- party deposition and serve a 4-page supplemental expert report from [their] technical expert, Mr. Karl Leinsing, to address certain facts learned from that deposition.” (Mot.

As this Court has explained, “’the touchstone of “good cause” under Rule 16(b) is diligence.’” Kinetic Concepts, Inc. v. Convatec, Inc., No. 1:08CV918, 2010 WL 1418312, at *3 (quoting Marcum v. 

Thus, they have shown good cause to modify the Scheduling Order as requested — “for the limited purpose of permitting [them] to produce the [JUUL] deposition transcript (and accompanying exhibits) and serve a 4-page supplemental report from Mr. Leinsing addressing that new evidence.” Plaintiffs are permitted to serve a responsive report of similar length within fifteen days of this Order.

Furthermore, the parties are requestedto file a joint status report of no more than 3,000 words by May 23, 2022, addressing the following (without restating their respective arguments as to each motion with which the Court is already familiar):

Plaintiffs and Counterclaim Defendants,

Defendants and Counterclaim Plaintiffs.

Before the Court is the Motion for Withdrawal of Counsel [Doc. #250] to withdraw Robert S. Magee as counsel of record for Plaintiffs Altria Client Services LLC and U.S. Smokeless Tobacco Company, LLC (“Plaintiffs”) in the above- captioned matter.

Upon consideration thereof and for good cause shown, IT IS HEREBY ORDERED that the Motion for Withdrawal of Counsel to withdraw Robert S. Magee as Counsel is GRANTED.

This the 8th day of April, 2022.

Before the Court is the Motion for Withdrawal of Counsel to withdraw Brian E. Ferguson and Stephen P. Bosco as counsel of record for Plaintiffs Altria Client Services LLC and U.S. Smokeless Tobacco Company, LLC (“Plaintiffs”) in the above-captioned matter.

Upon consideration thereof and for good cause shown,

IT IS HEREBY ORDERED that the Motion for Withdrawal of Counsel to withdraw Brian E. Ferguson and Stephen P. Bosco as Counsel is GRANTED.

This the 6th day of January, 2022.

Plaintiffs and Counterclaim Defendants, v.

Defendants and Counterclaim Plaintiffs.

Before the Court is the Motion Requesting Leave to Withdraw Jesika W. French as Counsel for R.J. Reynolds Vapor Company and Modoral Brands, Inc. [Doc.

Upon consideration thereof and for good cause shown, IT IS HEREBY ORDERED that the Motion Requesting Leave to Withdraw Jesika W. French as Counsel is GRANTED.

This the 6th day of January, 2022.

Plaintiffs and Counterclaim Defendants, v. R.J. REYNOLDS VAPOR COMPANY and

This matter comes before the Court regarding the Joint Pre-Trial Stipulation of Plaintiff Altria Client Services LLC (“Altria”) and Defendant R.J. Reynolds Vapor Company (“RJRV”) (collectively “the Parties”) [Doc. #185].

Altria has asserted in this action that RJRV has willfully infringed and continues to willfully infringe United States Patent Nos. 10,143,242 (“the ’242 patent”), 10,264,824 (“the ’824 patent”) (collectively, “the Weigensberg patents”); and United States Patent Nos. 10,299,517 (“the ’517 patent”), 10,485,269 (“the ’269 patent”), 10,492,541 (“the ’541 patent”), and 10,588,357 (“the ’357 patent”) (collectively “the Hawes patents”).

Altria drops its claims of willful infringement of any of the asserted claims of the Hawes patents or the Weigensberg patents, and Altria will not seek enhanced damages under 35 U.S.C. §284 or attorney fees and costs under 35 U.S.C. §285 based on any such alleged willful infringement of the Hawes patents or the Weigensberg patents.

Senior United States District Judge