(“Defendants”) hereby stipulate and agree as follows: WHEREAS,on May 28, 2020, Plaintiffs filed their Complaint against R.J. Reynolds Vapor Company in the above-captioned case (“the Action”); WHEREAS,on July 22, 2020, R.J. Reynolds Vapor Companyfiled its answer, affirmative defenses, and counterclaims to the Complaint (“R.J.

Reynolds Vapor Company’s Answerto the Complaint”); WHEREAS, on January 5, 2021, Plaintiffs filed their First Amended Complaint to add Modoral Brands,Inc.

WHEREAS,on January 26, 2021, Defendants filed their answer, affirmative defenses, and counterclaims to the First Amended Complaint (“Defendants’ Answerto the First Amended Complaint”); WHEREAS,Plaintiffs’ operative pleading asserts a claim for infringement of U.S. Patent No. 8,458,996 (the “996 Patent”) in Count VIII and Defendants’ operative pleading asserts affirmative defenses and counterclaimsrelated to the 996 Patent in Counts XV and XVI; NOW THEREFORE,the Parties, by and through their respective undersigned counsel in the Action, and subject to the approval of the Court, stipulate and agree as follows:

46); Defendants hereby dismiss without prejudice Counterclaims XV and XVI of R.J. Reynolds Vapor Company’s Answerto the Complaint (D.I.

50); Each Party shall be responsible for its own attorneys’ fees and costs with respect to the dismissed claims and counterclaims; , This stipulation shall not affect the Parties’ remaining claims, defenses, counterclaims, affirmative defenses and remedies to which the parties are otherwise entitled.

This matter is before the Court on a Motion to Stay by Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc. (collectively “RJR”) [Doc. #69] pending determination of nine petitions for inter partes review that RJR filed with the Patent Trial and Appeal Board (“PTAB”).

RJR also notes an additional but related factor – whether a stay will “reduce the burden of litigation on the parties and the court”, id.

That leaves the question of whether a stay should be entered as to the two patents involved in the PTAB’s inter partes review.

Considering the stage of the proceedings, the discovery already completed, and the PTAB’s denial of the other seven petitions, it is unlikely a stay would simplify the issues or reduce the burden

For the reasons explained above, IT IS HEREBY ORDERED that Motion to Stay by Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc. [Doc. #69] is DENIED.

As this Court has recognized, “’[g]ood cause’ means that scheduling deadlines cannot be met despite a party’s diligent efforts.” Kinetic Concepts, Inc. v. Convatec Inc., No. 1:08CV918, 2010 WL 1418312, at *3 (M.D.N.C. Apr. 2, 2010) (quoting George v. Duke Energy Ret.

Likewise, “[g]ood cause for modifying the scheduling order might exist if, for example, plaintiff uncovered previously unknown facts during discovery that would support an additional cause of action.” Forstmann v. Culp, 114 F.R.D.

RJR responds that (1) Altria could have brought a § 271(g) claim earlier because such a claim “does not require foreign manufacture” and (2) “even if foreign manufacture were required,” Altria failed to amend its complaint after receiving Reynolds’s express disclosures of noninfringement contentions and interrogatory responses that the tins used in the Accused VELO Products are made overseas by a third party, as well as after receiving documents that further confirmed the point.” (Defs.’ Opp’n to Pls.’ Mot for Leave to File a Second Am. Compl.

On at least two occasions in November 2020 prior to the deadline for leave to amend the pleadings, RJR informed Altria that the tins used in the Accused VELO Products are manufactured outside of the United States.

In its November 18, 2020 response to Altria’s interrogatories, RJR explained, The tins in the Accused VELO Products are manufactured, assembled, and tested in China and then supplied to Reynolds by JL Packaging Corp. Group.

and MODORAL BRANDS, INC, Defendants.

This matter is before the Court on the Joint Motion of the parties for an order amending the scheduling order to extend the deadline for existing fact discovery in this case by 14 days.

The Court has reviewed the record in this matter and finds there is good cause to allow the joint motion.

Accordingly, IT IS HEREBY ORDERED that the Scheduling Order (Docket Entries 33 and 85) shall be amended as follows:

Senior United States Distric

At trial, Altria identified no boundary demarcating where one alleged face ends and the next begins, and argues now that it did not need to do so to satisfy the claims as construed by the Court.

Altria’s response highlights that Alto does not have a separate vaporizer compartment because what McAlexander identified as satisfying that limitation similarly “maintain[s] and contain[s]” liquid, as illustrated in pink below:

Altria’s only other argument is that JUUL’s “legal department” purportedly elected not to mark (Doc. #540 at 17-18), but that unsupported assertion is irrelevant, and would inoculate any product subject to “legal department” review from the Patent Act’s requirements for recovering pre-suit damages.

That rate applied to potential transfers outside the United States, and Altria presented no evidence that aspect of the license was comparable to the hypothetical negotiation.

McAlexander’s conclusory testimony that the Fontem portfolio relates to “electronic cigarettes as a whole,” especially when considered in light of his admitted lack of relevant industry experience, cannot be sufficient evidence.