JOSEPH C. McALEXANDER Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc. (collectively

In support of its motion, Reynolds submits the contemporaneously filed memorandum and states further as follows: Reynolds moves to exclude certain proffered opinions by Altria Client Services LLC and U.S. Smokeless Tobacco Company LLC’s (“Altria’s”) technical expert Joseph C. McAlexander because those opinions fail the requirements of Federal Rule of Evidence 702.

In addition, Mr. McAlexander offers a compendium of quotations from documents and testimony, untethered to any relevant expertise, to support his opinions on secondary considerations of non-obviousness and on the intent element of induced and contributory infringement.

Rule 702 does not permit a party to enlist an expert as a mouthpiece for evidence or to opine on a person’s state of mind.

Accordingly, Reynolds respectfully requests that the Court exclude certain of Mr. McAlexander’s opinions under Federal Rule of Evidence 702.

Jake Wolfe, Reynolds’ corporate representative on sales, distribution, and customers of the VUSE ALTO Products, confirmed that Reynolds sells through three channels: e-commerce, through wholesalers, and vape shops.

Reynolds has made the VUSE ALTO Power Unit to have “the shape and diameter” that “requires a cartridge with an exact complementary design to accomplish the necessary mechanical and electrical connections” making it easy for adult

155 E- vapor systems also required screwing in various components, which made them more difficult to use.156 Prior art cartridges and tanks also had issues with leaking and the overall sensory experience for the adult consumer.157 427.

The VUSE ALTO Products are coextensive with the claims, being a pod assembly for an e-vapor apparatus with a plurality of external surfaces, a portion of them being transparent; a liquid compartment configured to hold the e-liquid in fluidic communication with the vaporizer compartment configured to heat the e-liquid, comprising a heater and a wick, and a plurality of electrical contacts with respective planar surfaces; connecting to the device body via a magnet that includes a battery that powers the heater in the pod assembly.

2:20-cv-00472-NCT-JLW, McAlexander Infringement Report – Pod Patents (’517, ’269, ’541, ’357) discovery or at trial, or should the Court revise or adopt a claim construction I have not considered, the information and opinions presented herein may be supplemented or amended.

Altria Group is the parent company of Philip Morris USA, a leader in the tobacco industry whose heritage stretches back well over one-hundred years.

Prior to the invention of the Hawes Patents, e-vapor devices primarily had a design architecture referred to as “Cig-a-like,” named for its visual similarity to traditional combustible cigarettes.

Reynolds, however, will be unable to show by clear and convincing evidence that the JUUL Articles or Verleur invalidate the Hawes Patents, given that Reynolds’s arguments are substantially identical to those the PTAB summarily rejected under the much lower reasonable likelihood standard.

“not shown sufficiently that Verleur would have suggested to an ordinary skilled artisan a cartomizer having the plurality of external surfaces required by” the Asserted Claims.

At the close of Altria’s case-in-chief and after the close of Reynolds case-in-chief, Altria anticipates moving this Court for entry of judgment as a matter of law that the Vuse Alto infringes the Asserted Claims of the Hawes Patents, and that the Asserted Claims of the Hawes Patents are valid on the grounds that, based on the evidence presented, no reasonable jury could find for Reynolds on these issues.

WHEREAS, the plaintiffs, Altria Client Services LLC and U.S. Smokeless Tobacco Company LLC (together, “Plaintiffs”), seek to amend the complaint filed in this action to add an additional defendant; and WHEREAS, the defendant, R.J. Reynolds Vapor Company (“Defendant”), consents to the proposed amended pleading; IT IS HEREBY ORDERED that the Motion (Docket Entry 43) is GRANTED and that:

Plaintiffs may file the proposed First Amended Complaint (see Docket Entry 42-1) no later than five (5) days from the date of this Order; and

The response to the amended complaint (by motion, answer, or otherwise) shall be due 21 days after the filing of the First Amended Complaint.

SO ORDERED this the 4th day of January 2021.

Joe L. Webster United States Magistrate Judge

Through counsel and pursuant to Local Rule 5.4, Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc. (collectively, “Reynolds”), respectfully requests that the Court seal confidential portions of Reynolds’s Opposition to Plaintiffs’ Supplemental Brief In Support of its Motion for Partial Summary Judgment and accompanying Exhibit 1 (the “Confidential Information”).

In support of this Motion, Reynolds respectfully submits the following: Reynolds’s Opposition refers to certain information that third-party JUUL Labs, Inc. (“JLI”) has indicated it considers to be sensitive material.

Reynolds included the Confidential Information—which is redacted in the public version of its Opposition—based on JLI’s marking of its entire corporate deposition transcript as “Highly Confidential Under Protective Order.” Accompanying Exhibit 1 to Reynolds’s Opposition is the Supplemental Rebuttal Expert Report of Joseph C. McAlexander III Concerning Validity of U.S. Patent Nos. 10,299,517, 10,485,269, 10,492,541, and 10,588,357.

WHEREFORE, Reynolds respectfully requests that the Court grant this Motion and seal the Confidential Information, subject to third-party JLI making the showing required by L.R.

Special Appearance Under Local Rule 83.1(d) * Counsel for Defendants and Counterclaim Plaintiffs, R.J. Reynolds Vapor Company and Modoral Brands, Inc.

It appearing to the Court that counsel for the parties have selected JONATHAN R. HARKAVY, Esquire, by agreement, as their mediator; IT IS ORDERED, pursuant to Local Rule 83.9d(a), that JONATHAN R. HARKAVY, is appointed mediator in the above-entitled action.

IT IS FURTHER ORDERED, pursuant to Local Rule 83.9e(b), that the mediator shall confer with the parties regarding scheduling of the mediated settlement conference, determine the place and time of the conference, and give notice to the parties.

FURTHER, when the mediated settlement conference is completed, the mediator shall submit the Report of Mediator to the Clerk, pursuant to Local Rule 83.9f.

Let copies of this order be sent to counsel for the parties and to the mediator.

This, the 1st day of December, 2020.

Pursuant to the Court’s Docket Notices on January 3, 2023 (Dkt. 562-572), Plaintiff Altria Client Services LLC, through its undersigned counsel, hereby gives notice of its intention on or before January 27, 2023 to request redaction of all transcripts of pretrial proceedings held on August 22, 2022 through August 26, 2022, and all transcripts of jury trial proceedings held on August 29, 2022 through September 6, 2022.

Altria’s redactions will be consistent with the Parties’ previously filed motions to seal confidential pretrial and trial testimony (Dkt. 482 and 484).

Respectfully submitted this 10th day of January 2023.

Such Confidential Business Information, whether submitted in writing or in oral testimony, shall constitute “Protected Material” and shall be treated in accordance with the terms of this Protective Order.

any person retained by a party or its counsel as an independent consultant or expert (including staff assisting the expert): (i) who is not an employee of any party or of any domestic or foreign manufacturer, wholesaler, retailer, or distributor of the products, devices or component parts which are the subject of this litigation; (ii) who has read this Order and executed the Commitment to be Bound by Protective Order attached hereto as “Exhibit A”; and (iii) as to whom the procedures set forth in paragraph 8 have been followed;

Final Disposition: Within sixty (60) days after final disposition of this litigation (which is defined as the later of: (a) dismissal of all claims and defenses in this action, with or without prejudice; and (b) final judgment herein after the completion and exhaustion of all appeals, rehearings, remands, trials, or reviews of this action, including the time limits for filing any motions or applications for extension of time pursuant to applicable law), each receiving party shall assemble and return to the disclosing party all items containing Protected Material, including all copies of such matter which may have been made.

Notwithstanding this provision, counsel are entitled to retain an archival copy of all pleadings, motion papers, trial, deposition and hearing transcripts, legal memoranda, correspondence, deposition and trial exhibits, expert reports, attorney work product, and consultant and expert work product, even if such materials contain Protected Material.

However, nothing shall prohibit a party from making a request for a privilege log as to a specific custodian or issue upon a showing of good cause.

As discussed in the hearing, both parties agree that discovery should be commenced on a modified exceptional case-management track established in Local Rule 26.1, however Defendants propose an extended schedule to account for the number of patents at issue in this case, the potential pursuit of discovery of non-U.S. prior art products, and the general gravity of the Covid-19 pandemic.

1 The Parties agree that they do not at this time anticipate presenting live testimony at the claim construction hearing.

Rule 30(b)(6) designees and knowledgeable employees of each Party will be made available in the city where they live or do business without the need for a subpoena.

After these dates, the Court will consider, inter alia, whether the granting of leave would delay trial.

- Production of Samples: The parties agree to work cooperatively in good faith to exchange product samples, and specifically requested components thereof, in a timely manner so that counsel and/or experts have sufficient time to analyze them under the applicable schedule.

Third, Reynolds states that, “[i]n a segment of Figlar’s deposition played at trial, Altria’s counsel read from Reynolds’s corporate policy,” incorrectly implying that Altria designated this testimony.

But this is insufficient to authenticate the date without “a certification from [a Facebook] custodian of records that would support a finding that the [post] constitutes admissible evidence.” See Ratner v. Kohler, No. 17-cv-00542, 2018 WL 1055528, at *11 (D. Haw.

Rather, one of Reynolds’s cited cases cautions that, while post-priority date evidence may be relevant to the state of the art, “defendants may not argue at trial that these references form part of the prior art.” Netscape Commc’ns Corp. v. ValueClick, Inc., 707 F. Supp.

Co., LLC v. Powell, 607 F. App’x 238, 244 (4th Cir. 2015) (“[W]e find that RFT failed to preserve a number of the errors it asserts on appeal because either the district court’s ruling or RFT’s objection thereto is absent from the record.”).

There Has Been No Miscarriage of Justice Reynolds claims that “Altria’s comparison between Alto’s total revenue and its requested royalty skewed the jury’s damages verdict by impermissibly suggesting, without support, that Altria’s patents contributed to the entire market value of Alto.” Br.

Pursuant to Local Rule 5.4 and as the party contending confidentiality of certain portions of Exhibit 1, Plaintiff Altria Client Services LLC, through its undersigned counsel, hereby submits this Brief in support of Defendant’s Motion to Seal (Dkt No. 506).

A court considering a motion to maintain documents under seal must first determine the nature of the information and the public’s right to access.

“The right of public access to documents or materials filed in a district court derives from two independent sources: the common law and the First Amendment.” Wash. Post, 386 F.3d at 575.

2d at 656 (same); Adjabeng v. GlaxoSmithKline, LLC, No. 1:12-CV-568, 2014 WL 459851, at *3 (M.D.N.C. Feb. 5, 2014) (“In the absence of an improper purpose and where there are no countervailing interests, sealing confidential business information is appropriate.”); Woven Elecs.

For the forgoing reasons, Plaintiff respectfully requests that the Court grant Defendant’s Motion to Seal filed on November 2, 2022 (Dkt. No. 506) and enter the Proposed Order.

However, even if Reynolds were found to infringe, Plaintiff Altria Client Services, LLC (“Altria”) failed to present any evidence from which a reasonable juror could conclude that it would be entitled to the over $14 million in pre-suit damages that it seeks for the Vaping Patents.

First, Altria does not contend it provided actual notice of alleged infringement of the Vaping Patents to Reynolds before filing this lawsuit in May 2020; thus, partial summary judgment should be granted on that issue.

During fact discovery and prior to the August 4, 2021 deadline for opening expert reports, Altria never expressed confusion as to the identity of the licensed JUUL product Reynolds identified in its response to Interrogatory 16.

However, even if the Court were to consider Mr. McAlexander’s opinions, they are wholly inadequate to meet Altria’s burden of establishing that the licensed JUUL product does not practice the Vaping Patents, and summary judgment should be granted.

* * * Accordingly, Altria failed to present any evidence that the licensed JUUL product did not practice the Vaping Patents, and Mr. McAlexander’s untimely opinions (even if considered) are insufficient to meet Altria’s burden under Arctic Cat.

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13· and MODORAL BRANDS, INC., 14· · · · ·Defendants and 15· Counterclaim Plaintiffs.

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·4· · · · · · ·I, Amanda Gorrono, the officer ·5· ·before whom the foregoing deposition was ·6· ·taken, do hereby certify that the ·7· ·foregoing transcript is a true and correct ·8· ·record of the testimony given; that said ·9· ·testimony was taken by me stenographically 10· ·and thereafter reduced to typewriting 11· ·under my direction; and that I am neither 12· ·counsel for, related to, nor employed by 13· ·any of the parties to this case and have 14· ·no interest, financial or otherwise, in 15· ·its outcome.

16· · · · · · ·IN WITNESS WHEREOF, I have 17· · · ·hereunto set my hand this 18th day of 18· · · ·June, 2021.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2021-00745 Patent 10,485,269 mediation, etc.) was used and the general result.

Pursuant to Federal Rule of Civil Procedure 62, Plaintiff Altria Client Services LLC (“Altria”) and Defendant R.J. Reynolds Vapor Co. (“Reynolds”), by and through their respective counsel, submit this agreed order for approval of the parties’ joint stipulation regarding a stay of execution in lieu of a supersedeas or appeal bond.

In support, the parties recite and stipulate as follows: WHEREAS the Court entered Judgment on October 5, 2022 in favor of Altria on its claims for infringement of claims 1, 9, and 10 of U.S. Patent No. 10,299,517; claim 19 of U.S. Patent No. 10,485,269; and claim 24 of U.S. Patent No. 10,492,541, including an award of compensatory damages (Dkt. 473) (the “Judgment”); WHEREAS execution on the Judgment is presently stayed pursuant to Federal Rule of Civil Procedure 62(a); WHEREAS Reynolds and Altria have stipulated to prejudgment interest, post- judgment interest, and supplemental damages (Dkt. 470), and interest on such amounts and the amount of the Judgment are accruing and will continue to accrue during any stay of execution on and any proceedings to enforce the Judgment; WHEREAS the parties agree that a stay of execution on and proceedings to enforce the Judgment (including payment of costs, accruing ongoing royalties, and interest which has accrued and shall continue to accrue) pending resolution of any post-Judgment motions and appeal is appropriate; and WHEREAS, in the interest of avoiding unnecessary expense, the parties have agreed to dispense with the requirement that Reynolds provide a supersedeas bond or other security in order to stay execution on and proceedings to enforce the Judgment, NOW, THEREFORE, the parties hereby stipulate and agree as follows:

Reynolds shall not be required to provide a supersedeas bond or other security as a condition of staying execution on the Judgment or proceedings to enforce it pending the Court’s resolution of all post-Judgment motions filed and any appeal taken by either party.

Altria shall not make any attempt or effort to execute on or enforce the Judgment—or payment of any ongoing royalties, costs, or interest that has accrued or continues to accrue thereon—before 14 days after the final termination of all appeals in this case, including proceedings in the U.S. Court of Appeals for the Federal Circuit or the expiration of time to file a petition to the United States Supreme Court for a writ of certiorari.

Altria is entering into this Stipulation in the interest of avoiding unnecessary burden and expense.