`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`Before the Honorable Clark S. Cheney
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN TOBACCO HEATING
`ARTICLES AND COMPONENTS
`THEREOF
`
`Investigation No. 337-TA-1199
`
`RESPONDENTS’ JOINT DISCLOSURE OF INITIAL CONTENTIONS
`IN RESPONSE TO INDIVIDUAL INTERROGATORY NO. 12
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Procedural Schedule set forth in Order No. 5, Respondents Altria Client
`
`Services LLC, Altria Group, Inc., Philip Morris USA, Inc., Philip Morris International Inc., and
`
`Philip Morris Products S.A. (collectively, “Respondents”) provide their initial invalidity
`
`contentions in response to Individual Interrogatory No. 12.
`
`Complainants assert claims from U.S. Patent No. 9,839,238 (“the ’238 patent”); U.S. Patent
`
`No. 9,930,915 (“the ’915 patent”); and U.S. Patent No. 9,901,123 (“the ’123 patent”) (collectively,
`
`“the Asserted Patents”). In particular, Complainants allege that Respondents infringe claim 19 of
`
`the ’238 patent; claims 1, 2, and 5 of the ’915 patent; and claims 27-30 of the ’123 patent
`
`(collectively, “the Asserted Claims”). Complainants also contend that their Domestic Industry
`
`Products practice claims 1-3, 5-11, 13, 15-16, 18-21 of the ’238 patent; claims 1-4 of the ’915
`
`patent; and claims 1-7, 9, 11-19, 21, 23-26 of the ’123 patent (collectively, “the Domestic Industry
`
`Claims”). Respondents’ initial invalidity contentions address the Asserted Claims and the
`
`Domestic Industry Claims of the Asserted Patents.
`
`Ex. 2028-0001
`
`
`
`2.
`
`Prior Art Patents, Patent Applications, and Publications
`
`The patents, patent applications, and publications identified in the table below are prior art
`
`to the ’123 patent, and they anticipate and/or render obvious the Asserted and/or Domestic Industry
`
`
`
`Claims of the ’123 patent.
`
`Prior Art
`U.S. Patent No. 5,249,586
`(“Morgan”)
`U.S. Patent Application
`Publication No. 2007/0102013
`(“Adams”)
`U.S. Patent No. 5,144,962
`(“Counts-962”)
`
`International Patent
`Application Publication No.
`WO 95/27412 (“Hajaligol”)
`Chinese Patent No. 2719043
`(“Hon ’043”)
`Chinese Patent No. 1775123
`(“Yang”)
`U.S. Patent No. 8,375,957
`(“Hon ’957”)
`U.S. Patent No. 4,947,874
`(“Brooks”)
`
`U.S. Patent No. 5,060,671
`(“Counts-671”)
`
`U.S. Patent No. 5,692,525
`(“Counts-525”)
`
`Issuing
`Country
`U.S.
`
`U.S.
`
`U.S.
`
`WIPO
`
`China
`
`China
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`Date
`Oct. 5,
`1993
`Sept. 28,
`2006
`
`Sept. 8,
`1992
`
`Oct. 19,
`1995
`
`Aug. 24,
`2005
`May, 24,
`2006
`May 16,
`2006
`Aug. 14,
`1990
`
`Oct. 29,
`1991
`
`Inventor(s)/Author(s)
`Morgan, Constance H.
`Nichols, Walter A.
`Adams, John M.
`Crowe, William J., et al.
`
`Counts, Mary E.
`Hajaligol, Mohammad R.,
`et al.
`Hajaligol, Mohammad R.
`Fleischhauer, Grier S., et
`al
`Lik, Hon
`
`Yinhai, Yang
`
`Lik, Hon
`
`Brooks, Johnny L.
`Roberts, Donald L.
`Simmons, Jerry S.
`Counts, Mary E.
`LaRoy, Bernard C., et al
`
`Dec. 2,
`1997
`
`Counts, Mary E.
`Houck, Willie G., Jr. et al
`
`Exhibit
`C19
`
`C1
`
`C1
`
`C2
`
`C4
`
`C5
`
`C6
`
`Addressed
`as
`appropriate
`
`Addressed
`as
`appropriate
`Addressed
`as
`appropriate
`
`
`9 Exhibit C1 is a copy of the petition for IPR in PTAB Case No. IPR2020-00919. That petition
`and all of its accompanying exhibits are incorporated by reference, in full.
`
`
`
`49
`
`Ex. 2028-0002
`
`
`
`
`between the inner surface of the outer container 20 and the outer surface of the cartridge 85.” ’123
`
`
`
`patent at 22:28-34; Fig. 1. Where the ’123 patent addresses a “cartridge” “adapted for airflow
`
`therethrough,” it describes such a cartridge in the context of an embodiment containing a “tobacco
`
`rod . . . blended with tobacco filler.” ’123 patent at 25:28-39; Fig. 2.
`
`6.
`
`35 U.S.C. § 112 – Indefiniteness
`
`A person of ordinary skill in the art would not be able to determine the scope of the
`
`invention because of the indefiniteness of at least the following terms:
`
`• “the elongated portion of the resistance heating element positioned proximal to
`the center of the outer housing”
`
`’123 patent, cl. 27. A person of ordinary skill would not understand with reasonable certainty the
`
`scope of this claim limitation, in particular when an elongated portion of a resistance heating
`
`element is, or is not, positioned “proximal” to the center of the smoking device’s outer housing.
`
`Dated: July 2, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`By: Brenda L. Danek
`Maximilian A. Grant
`Bert C. Reiser
`Jamie D. Underwood
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W.
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Brenda L. Danek
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Telephone: (312) 876-7700
`Facsimile: (312) 993-9767
`
`Counsel for Respondents Altria Client Services
`LLC, Altria Group, Inc., Philip Morris USA, Inc.,
`Philip Morris International Inc., and Philip Morris
`Products S.A.
`
`
`
`69
`
`Ex. 2028-0003
`
`
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