Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 1 of 8 PageID# 6827
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`RAI STRATEGIC HOLDINGS, INC. AND R.J.
`REYNOLDS VAPOR COMPANY
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`Plaintiffs-Counterclaim
`Defendants,
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`v.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.
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`Defendants-Counterclaim
`Plaintiffs.
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`Case No. 1:20-cv-00393-LO-TCB
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`ALTRIA CLIENT SERVICES LLC AND PHILIP MORRIS USA INC.’S ANSWER TO
`PLAINTIFFS’ COUNTERCLAIM TO DEFENDANTS’ AMENDED COUNTERCLAIMS
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`Altria Client Services LLC (“ACS”) and Philip Morris USA Inc. (“PM USA”) respectfully
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`submit their Answer in response to Plaintiffs RAI Strategic Holding, Inc. (“RAI”) and R.J.
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`Reynolds Vapor Company’s (“RJRV”) (collectively, “RJR”) Counterclaim. To the extent not
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`specifically admitted herein, the allegations of the Counterclaim are denied, including any
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`allegations contained in the headings of the Counterclaim.
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`COUNTERCLAIM I: INEQUITABLE CONDUCT (’545 PATENT)
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`1.
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`1.
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`Denied.1
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`ACS and PM USA admit that the face of the ’545 patent states that U.S. Patent
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`Application No. 10/161,639 was filed on June 5, 2002, and that the face of the ’545 patent states
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`1 RJR’s counterclaims have labeled two paragraphs as paragraph 1 of their allegations. This refers
`to RJR’s allegation labeled paragraph 1 on page 20 of their counterclaims.
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`it has an issue date of October 12, 2004. Except as admitted herein, ACS and PM USA otherwise
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`deny the allegations in paragraph 1.2
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`2.
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`ACS and PM USA admit that the face of the ’545 patent lists the Attorney, Agent
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`or Firm as Burns, Doane, Swecker & Mathis, LLP. Except as admitted herein, ACS and PM USA
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`otherwise deny the allegations in paragraph 2.
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`3.
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`ACS and PM USA admit that the face of the ’545 patent states the ’545 patent was
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`assigned to Philip Morris Incorporated. ACS and PM USA admit that PM USA is the current
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`assignee of the ’545 patent and owns the entire right, title and interest in and to the ’545 patent.
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`Except as admitted herein, ACS and PM USA otherwise deny the allegations in paragraph 3.
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`4.
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`ACS and PM USA admit that the face of the ’545 patent lists the inventors as
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`Clinton E. Blake, John R. Hairfield, Jr., Charles T. Higgins, H. Neal Nunnally, and Robert L.
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`Ripley. Except as admitted herein, ACS and PM USA otherwise deny the allegations in paragraph
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`4.
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`5.
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`Paragraph 5 contains a legal standard to which no answer is required. To the extent
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`an answer is required, ACS and PM USA state that 37 C.F.R. § 1.56 speaks for itself. Except as
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`admitted herein, ACS and PM USA otherwise deny the allegations in paragraph 5.
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`6.
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`ACS and PM USA admit that during the prosecution of the ’545 patent, each of the
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`inventors listed on the face of the ’545 patent signed a document titled “Combined Declaration
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`and Power of Attorney for Utility Patent Application” which states in part “I acknowledge the duty
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`to disclose to the office all information known to me to be material to patentability as defined in
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`Title 37, Code of Federal Regulations, Sec. 1.56 (as amended effective March 16, 1992).” Except
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`as admitted herein, ACS and PM USA otherwise deny the allegations in paragraph 6.
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`2 This refers to RJR’s counterclaim labeled paragraph 1 on page 21 of their counterclaims.
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`2
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`Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 3 of 8 PageID# 6829
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`7.
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`ACS and PM USA are without knowledge or information sufficient to admit or
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`deny the allegations in paragraph 7 of the Complaint and, on that basis, deny them.
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`8.
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`Denied. Corporations do not owe a duty of candor to the United States Patent and
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`Trademark Office. See Avid Identification Sys., Inc. v. Crystal Imp. Corp., 603 F.3d 967, 974 n.1
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`(Fed. Cir. 2010).
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`9.
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`ACS and PM USA admit that the prosecution history of the ’545 patent contains
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`three documents titled “Information Disclosure Statement.” ACS and PM USA admit that these
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`documents titled “Information Disclosure Statement” were dated September 17, 2002, October 24,
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`2003, and April 30, 2004, respectively, and contain an electronic signature “/s/ Peter K. Skiff.”
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`Except as admitted herein, ACS and PM USA otherwise deny the allegations in paragraph 9.
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`10.
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`11.
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`Denied.
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`Paragraph 11 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, ACS and PM USA admit that Exhibit A is a document that purports
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`to be a copy of U.S. Patent No. 4,947,874. Exhibit A states on its face that it was filed on
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`September 8, 1988 and issued on August 14, 1990. Except as admitted herein, ACS and PM USA
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`otherwise deny the allegations in paragraph 11.
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`12.
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`ACS and PM USA admit that U.S. Patent No. 4,947,874 was cited on the face of
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`U.S. Patent Nos. 5,060,671; 5,095,921; 5,144,962; 5,179,966; 5,224,498; 5,249,586; 5,261,424;
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`5,269,327; 5,322,075; 5,372,148; 5,388,594; 5,498,850; 5,505,214; 5,573,692; 5,649,554;
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`5,665,262; 5,666,976; and 5,692,525. ACS and PM USA admit that EP 0358002 A2 was cited on
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`the face of U.S. Patent Nos. 5,095,921; 5,179,966; 5,224,498; 5,249,586; 5,261,424; 5,269,327;
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`5,322,075; 5,372,148; 5,388,594; 5,573,692; 5,649,554; 5,665,262; 5,666,976; and 5,692,525.
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`ACS and PM USA admit that U.S. Patent No. 5,322,075 states that the named inventors are
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`3
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`Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 4 of 8 PageID# 6830
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`Seetharama C. Deevi, Mohammad R. Hajaligol, Herbert Herman, Charles T. Higgins, Michael L.
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`Watkins, Bruce E. Waymack, and Sung Yi. ACS and PM USA admit that U.S. Patent No.
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`5,372,148 states that the named inventors are Hugh J. McCafferty, Charles T. Higgins, and
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`William L. Lucas, Sr. ACS and PM USA admit that U.S. Patent No. 5,388,594 states that the
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`named inventors are Mary E. Counts, Seetharama C. Deevi, Grier S. Fleischhauer, Mohammad R.
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`Hajalogol, Patrick H. Hayes, Charles T. Higgins, Willie G. Houck, Jr., Billy J. Keen, Jr., Bernard
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`C. LaRoy, Peter J. Lipowicz, Donald E. Miser, Constance H. Nichols, William H. Stevens,
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`Mantharam Subbiah, Michael L. Watkins, and Susan E. Wrenn. ACS and PM USA further state
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`that the documents cited in paragraph 12 speak for themselves. Except as admitted herein, ACS
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`and PM USA otherwise deny the allegations in paragraph 12.
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`13.
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`ACS and PM USA state that the U.S. Patent No. 6,040,560 cited in paragraph 13
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`speaks for itself. Except as admitted herein, ACS and PM USA otherwise deny the allegations in
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`paragraph 13.
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`14.
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`Paragraph 14 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, ACS and PM USA admit that U.S. Patent No. 4,947,874 is not listed
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`as a reference cited on the face of the ’545 patent. Except as admitted herein, ACS and PM USA
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`otherwise deny the allegations in paragraph 14.
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`15.
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`16.
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`Denied.
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`ACS and PM USA admit that the quoted language in paragraph 16 appears in claim
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`1 of the ’545 patent and that the document speaks for itself.
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`17.
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`Paragraph 17 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the quote in paragraph 17 appears in Ex. A, which purports to be U.S. Patent
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`No. 4,947,874 (“Brooks”), and that the document speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 17.
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`18.
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`Paragraph 18 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the document cited in paragraph 18 speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 18.
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`19.
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`Paragraph 19 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the document cited in paragraph 19 speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 19.
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`20.
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`ACS and PM USA admit that U.S. Patent No. 4,947,874 is not listed as a reference
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`cited on the face of the ’545 patent. Except as admitted herein, ACS and PM USA otherwise deny
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`the allegations of paragraph 20.
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`21.
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`22.
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`Denied.
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`Paragraph 22 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, ACS and PM USA admit that Exhibit C purports to be a copy of U.S.
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`Patent No. 5,372,148 and U.S. Patent No. 5,372,148 states on its face that it issued on December
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`13, 1994 and was filed on February 24, 1993. Except as admitted herein, ACS and PM USA
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`otherwise deny the allegations of paragraph 22.
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`23.
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`ACS and PM USA admit that U.S. Patent No. 5,372,148 states on its face that is
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`was assigned to Philip Morris Incorporated. The face of U.S. Patent No. 5,372,148 lists Hugh J.
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`McCafferty, Charles T. Higgins, and William L. Lucas Sr. as inventors. The ’545 patent states on
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`its face that it was assigned to Philip Morris Incorporated. Except as admitted herein, ACS and
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`PM USA otherwise deny the allegations of paragraph 23.
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`5
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`Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 6 of 8 PageID# 6832
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`24.
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`Paragraph 24 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, ACS and PM USA admit that U.S. Patent No. 5,372,148 is not listed
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`as a reference cited on the face of the ’545 patent. Except as admitted herein, ACS and PM USA
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`otherwise deny the allegations in paragraph 24.
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`25.
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`26.
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`Denied.
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`Paragraph 26 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the document cited in paragraph 26 speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 26.
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`27.
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`Paragraph 27 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the quote in paragraph 27 appears in Ex. C, which purports to be U.S. Patent
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`No. 5,372,148 (“McCafferty”), and that the document speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 27.
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`28.
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`Paragraph 28 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the documents cited in paragraph 28 speaks for itself. Except as admitted
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`herein, ACS and PM USA otherwise deny the allegations in paragraph 28.
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`29.
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`Paragraph 29 contains legal conclusions to which no answer is required. ACS and
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`PM USA state that the document cited in paragraph 29 speaks for itself. Except as admitted herein,
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`ACS and PM USA otherwise deny the allegations in paragraph 29.
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`30.
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`Paragraph 30 contains legal conclusions to which no answer is required. ACS and
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`PM USA admit that U.S. Patent No. 5,372,148 is not listed as a reference cited on the face of the
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`’545 patent. Except as admitted herein, ACS and PM USA otherwise deny the allegations of
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`paragraph 30.
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`31.
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`Denied.
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`6
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`Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 7 of 8 PageID# 6833
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`RESPONSE TO PRAYER FOR RELIEF
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`32.
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`ACS and PM USA deny that RJR is entitled to any relief sought in their
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`Counterclaim or any relief whatsoever.
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`Dated: November 13, 2020
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`Respectfully submitted,
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`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`max.grant@lw.com
`Matthew J. Moore (pro hac vice)
`matthew.moore@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004
`Tel: (202) 637-2200; Fax: (202) 637-2201
`
`Clement J. Naples (pro hac vice)
`clement.naples@lw.com
`LATHAM & WATKINS LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200; Fax: (212) 751-4864
`
`Gregory K. Sobolski (pro hac vice)
`Greg.sobolski@lw.com
`LATHAM & WATKINS LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Tel: (415) 391-0600; Fax: (415) 395-8095
`
`Brenda L. Danek (pro hac vice)
`brenda.danek@lw.com
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`Tel: (312) 876-7700; Fax: (312) 993-9767
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`Counsel for Defendants-Counterclaim
`Plaintiffs Altria Client Services LLC and
`Philip Morris USA Inc.
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`7
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`Case 1:20-cv-00393-LMB-WEF Document 327 Filed 11/13/20 Page 8 of 8 PageID# 6834
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th day of November, 2020, a true and correct copy of the
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`foregoing was served using the Court’s CM/ECF system, with electronic notification of such
`filing to all counsel of record:
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`/s/ Maximilian A. Grant
`Maximilian A. Grant (VSB No. 91792)
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`Email: max.grant@lw.com
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`Counsel for Defendants Altria Client
`Services LLC, and Philip Morris USA Inc.
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