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

(“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.

Pursuant to Local Civil Rule 5.4(c), Plaintiff Altria Client Services LLC, through its undersigned counsel, hereby moves the Court for leave to file under seal the unredacted September 7, 2022 trial transcript.

In support of this Motion, Plaintiff respectfully shows the following:

The trial transcript identifies and discusses the confidential financial and licensing information of third-party Fontem Ventures B.V. (“Fontem”), which is highlighted in yellow.

Pursuant to the Protective Order and local rules, Fontem, the party claiming confidentiality, will have 14 days to file a brief providing the information set forth in Local Rule 5.4(b).

WHEREFORE, for the reasons stated above, Plaintiff respectfully requests that the Court grant this motion, subject to Fontem making the showing required by Local Rule 5.4(b).

Pursuant to Local Civil Rule 5.4(c), Plaintiff Altria Client Services LLC (“Plaintiff”), through its undersigned counsel, hereby moves the Court for leave to file under seal the unredacted Opposition to Reynolds’s Rule 59 Motion for New Trial or Remittitur (the “Opposition”).

The Opposition refers to or otherwise contains information which Defendant R.J. Reynolds Vapor Company (“Reynolds”) has indicated it considers to be confidential material.

Confidential material of Plaintiff has been marked with blue in the version filed under seal.

The Opposition also refers to or otherwise contains information which Plaintiff and third-party Fontem Ventures B.V. (“Fontem”) jointly claim to be confidential material.

Joint confidential information of both Plaintiff and Fontem has been marked purple in the versions filed under seal.

This matter is before the Court on the Joint Motion of the parties for an order amending the scheduling order to extend all forthcoming case deadlines by twenty-one 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 Entry 33) shall be amended as follows: Fact Discovery Closes Wednesday, June 23, 2021 Wednesday, July 14, 2021 Original Deadline Amended Deadline

Serve Expert Reports on Issues on Which Opposing

Wednesday, December 22, 2021 so ORDERED, this flday of June 2021

Plaintiff and Counterclaim Defendant,

Pursuant to Local Rules 7.3 and 40.1(d), and the Court’s post-trial October 31, 2022 docket entry, Defendant R.J. Reynolds Vapor Company (“Reynolds”) respectfully moves to seal a small, discrete portion of the September 7, 2022 trial transcript disclosing confidential information, with a redacted transcript available for the public docket.

The specific portion of the trial transcript that Reynolds requests to seal are detailed in Reynolds’s accompanying non-confidential memorandum.

Specifically, Reynolds requests to seal trial testimony concerning the agreed value of acquired intellectual property rights from an agreement between Reynolds and non-party Fontem, which is subject to that agreement’s confidentiality provisions.

In support of this Motion, Reynolds submits contemporaneously herewith a proposed order and a non-confidential memorandum.

However, the term “non-hermetic seal” as used in the Bried Patents does not suffer the same fate; the “claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty”, Nautilus, 572 U.S. at 910.

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.

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[‘]”.

Patent 10,492,541 Mailed: November 23, 2021

Petitioner’s request for a refund of certain post-institution fees paid on March 31, 2021, in the above proceeding is hereby granted.

The amount of $22,500.00 has been refunded to Petitioner’s deposit account.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.