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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF VIRGINIA
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`ALEXANDRIA DIVISION
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`Case No. 1:20-cv-00393-LO-TCB
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`RAI STRATEGIC HOLDINGS, INC. AND R].
`REYNOLDS VAPOR COMPANY
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`Plaintiffs,
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`V.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
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`MORRIS USA, INC .; and PHILIP MORRIS
`PRODUCTS S.A.
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`Defendants.
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`ALTRIA CLIENT SERVICES LLC; PHILIP
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`MORRIS USA, INC .; and PHILIP MORRIS
`PRODUCTS S.A.
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`Counterclaim Plaintiffs,
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`RAI STRATEGIC HOLDINGS, INC. AND R].
`REYNOLDS VAPOR CONIPANY
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`Counterclaim Defendants.
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`
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`DEFENDANT PHILIP MORRIS PRODUCTS S.A.’S AMENDED PARTIAL ANSWER
`TO THE ANIENDED COMPLAINT AND SECOND AMENDED COUNTERCLAIMS
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`Defendant Philip Morris Products S.A. (“PMP” or “Defendant”) respectfillly submits its
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`Partial Answer in response to Plaintiffs RAI Strategic Holding, Inc. (“RAI”) and R]. Reynolds
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`Vapor Company’s (“RJRV”) (collectively, “RJR”) Amended Complaint. To the extent not
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`specifically admitted herein, the allegations of the Amended Complaint are denied, including any
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`allegations contained in the headings of the Amended Complaint.
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`INTRODUCTION AND PRELIMINARY STATEMENT OF PMP
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`RJR appears to have brought this action in the hopes of stopping PMP’s innovative IQOS
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`heated tobacco system, which has a proven track record in switching smokers away from
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`combustible cigarettes, from disrupting its core business in combustible cigarettes and overtaking
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`its secondary line of e-vapor products. Having failed to develop a competing offering in the heated
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`tobacco space, RJR apparently now seeks to block that space in its entirety by bringing this
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`meritless litigation. But in its haste to do so, RJR has overlooked the fact that its own line of e-
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`vapor products (which are far less effective in switching smokers away from combustible
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`cigarettes than IQOS) infringe multiple patents owned by PMP.
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`While Philip Morris International, PMP’s ultimate parent, built its success on the basis of
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`combustible cigarettes, it has committed itself to building its future on the basis of smoke-free
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`products that are substantially less harmful than combustible cigarettes. Consistent with that
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`vision, PMP has emerged as the global leader and pioneer in reduced-risk alternatives to
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`combustible cigarettes (“Reduced Risk Products” or “RRPs”). PMP has invested over seven
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`billion dollars since 2008 on research and development relating to RRPs such as IQOS. And it has
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`amassed a substantial portfolio of intellectual property, covering numerous innovations relating to
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`smoke-free technologies, including both heated tobacco and e-vapor products.
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`PMP first launched IQOS, a product that heats rather than burns tobacco to produce an
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`aerosol instead of smoke (known as a “Heat-Not-Burn” or “HNB” product), in select cities in Italy
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`and Japan in 2014. It is now sold in over 57 countries throughout the world. To date, over 11.2
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`million smokers have switched to IQOS and given up smoking for good, and this number is
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`growing daily. PMP conducted 10 clinical studies on IQOS and published over 340 peer-reviewed
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`articles on RRPs. There are also over 30 independent studies corroborating PMP’s findings with
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`2
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`respect to IQOS. Among the findings: IQOS produces an aerosol with 90 to 95% less toxins than
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`cigarette smoke.
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`In 2019, after a lengthy review, the United States Food and Drug Administration (“FDA”)
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`granted PMP’s request for a pre-market authorization to commercialize IQOS (through its
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`distributor, Altria) in the United States. In granting that request, the FDA determined that
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`marketing IQOS “would be appropriate for the protection of the public health.” Only July 7, 2020,
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`the FDA authorized the marketing of a version of IQOS as a modified risk tobacco product, finding
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`that IQOS “significantly reduces the production of harmful and potentially harmful chemicals.”
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`To date, no other HNB or e-vapor product has received these authorizations.
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`Apparently concerned by the commercial threat posed by IQOS, RJR is now attempting to
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`stop IQOS with this case. But in its haste to stop IQOS, RJR committed two fatal errors. First, it
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`asserted meritless patent claims. Second, it overlooked the fact that its own e-vapor products
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`infringe multiple patents owned by PMP and co-defendants Altria Client Services and Philip
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`Morris USA, Inc. PMP thus responds to RJR’s Complaint and brings counterclaims to recover the
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`considerable damages flowing from RJR’s infringement.
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`RESPONSES TO THE SPECIFIC ALLEGATIONS OF COMPLAINT
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`THE PARTIES
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`1.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 1 of the Complaint and, on that basis, denies them.
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`2.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 2 of the Complaint and, on that basis, denies them.
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`3.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 3 of the Complaint and, on that basis, denies them.
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`3
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`4.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 4 of the Complaint and, on that basis, denies them.
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`5.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 5 of the Complaint and, on that basis, denies them.
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`6.
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`Admitted.
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`JURISDICTION AND VENUE
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`7.
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`Paragraph 7 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that the Complaint purports to be an action arising under
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`the patent laws of the United States, 35 U.S.C. §§ 271, et seq., and that this Court has subject
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`matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338, but PMP denies that there is any legal
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`or factual basis for such action.
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`8.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 8 of the Complaint and, on that basis, denies them.
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`9.
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`Paragraph 9 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits for purposes of this action only that this Court has
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`personal jurisdiction over it. PMP otherwise denies the allegations in paragraph 9 of the
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`Complaint.
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`10.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 10 of the Complaint and, on that basis, denies them.
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`11.
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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, PMP admits for purposes of this action only that venue exists in this
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`District for the claims against PMP pursuant to 28 U.S.C. §§ 1391 and 1400(b). PMP otherwise
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`4
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`denies the allegations in paragraph 11 of the Complaint. PMP specifically denies the allegations
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`of paragraph 11 of the Complaint relating to PMP’s alleged infringement of any patents.
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`FACTUAL BACKGROUND
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`THE ASSERTED PATENTS
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`12.
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`PMP admits that the face of U.S. Patent No. 9,814,268 (“the ’268 patent”) states
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`that it is titled “Tobacco-containing smoking article.” PMP further admits that the face of the ’268
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`patent states that it issued on November 4, 2017 and that it includes two independent claims. PMP
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`admits that Plaintiffs have quoted claim 16 of the ’268 patent in paragraph 12 of the Complaint.
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`PMP otherwise denies the allegations in paragraph 12 of the Complaint.
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`13.
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`The Court has stayed Plaintiff’s Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`14.
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`The Court has stayed Plaintiffs’ Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`15.
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`The Court has stayed Plaintiffs’ Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`16.
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`The Court has stayed Plaintiffs’ Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`17.
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`The Court has stayed Plaintiffs’ Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`18.
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`The Court has stayed Plaintiffs’ Counts Two, Three, and Four pursuant to 28 U.S.C.
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`§ 1659. See Dkt. 27. PMP will provide a response at the appropriate time when the stay is lifted.
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`19.
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`PMP admits that the face of U.S. Patent No. 10,492,542 (“the ’542 patent”) states
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`that it is titled “Smoking articles and use thereof for yielding inhalation materials.” PMP further
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`admits that the face of the ’542 patent states that it issued on December 3, 2019 and that it includes
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`5
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`two independent claims. PMP admits that Plaintiffs have quoted claim 1 of the ’542 patent in
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`paragraph 19 of the Complaint. PMP otherwise denies the allegations in paragraph 19 of the
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`Complaint.
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`THE ACCUSED PRODUCTS
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`20.
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`PMP admits that it has developed a heat-not-burn tobacco heating system called
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`IQOS and the IQOS system includes an electrically powered device that comprises a holder and a
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`charger, and a disposable tobacco unit. PMP otherwise denies the allegations in paragraph 20 of
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`the Complaint.
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`21.
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`Paragraph 21 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that some of the packaging for the IQOS device sold in
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`the United States recites: “Manufactured for Philip Morris USA, Richmond VA. Made in
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`Malaysia,” and that some of the packaging for the tobacco unit states: “Mfd. for Philip Morris
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`USA, Richmond, VA. Made in Italy.” PMP is without knowledge or information sufficient to
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`admit or deny the remaining allegations in paragraph 21 of the Complaint and, on that basis, denies
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`them.
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`22.
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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, PMP admits that the holder, into which the tobacco unit is placed,
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`heats the tobacco via a heating blade. PMP admits the adult consumer pushes a button to turn on
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`the heating unit. PMP further admits the holder includes a battery and supplies heat to the tobacco
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`unit via the heating blade for six minutes or 14 puffs, whichever comes first. PMP is without
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`knowledge or information sufficient to admit or deny the remaining allegations in paragraph 22 of
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`the Complaint and, on that basis, denies them.
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`23.
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`Paragraph 23 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that the IQOS system’s tobacco unit is designed for
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`heating, not for burning or smoking, and contains a processed tobacco plug. PMP admits the
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`tobacco plug is made from tobacco leaves, which are ground and formed into tobacco sheets, called
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`cast-leaf. PMP further admits the adult consumer draws on the tobacco unit to inhale a nicotine
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`containing aerosol. PMP admits that the tobacco unit is available in different flavors, including
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`regular and menthol flavors. PMP further admits that the tobacco unit is sometimes referred to as
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`a HeatStick or Marlboro™ HeatStick. PMP is without knowledge or information sufficient to
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`admit or deny the remaining allegations in paragraph 23 of the Complaint and, on that basis, denies
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`them.
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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, PMP admits that the IQOS device includes a charger for charging the
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`holder and is sold with an AC power adaptor for recharging the charger. PMP further admits that
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`the charger contains its own battery that charges the holder. PMP is without knowledge or
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`information sufficient to admit or deny the remaining allegations in paragraph 24 of the Complaint
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`and, on that basis, denies them.
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`25.
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`Paragraph 25 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that the holder, tobacco unit, and the charger are
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`authorized by the FDA for use as part of the IQOS system. PMP specifically denies the allegations
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`of paragraph 25 of the Complaint relating to PMP’s alleged infringement of any patents. PMP is
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`without knowledge or information sufficient to admit or deny the remaining allegations in
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`paragraph 25 of the Complaint and, on that basis, denies them.
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`26.
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`Paragraph 26 contains legal conclusions to which no answer is required. PMP
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`specifically denies the allegations of paragraph 26 of the Complaint relating to PMP’s alleged
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`infringement of any patents.
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`7
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`27.
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`Paragraph 27 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that it sells the charger, holder, tobacco unit, and a
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`cleaner outside the United States. PMP further admits that the tobacco units are sold separately
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`in, for example, packs of 20. PMP is without knowledge or information sufficient to admit or deny
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`the remaining allegations in paragraph 27 of the Complaint and, on that basis, denies them.
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`28.
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`Paragraph 28 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that it offers for sale and sells the IQOS device with a
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`User Guide and Quick Start Guide outside the United States. PMP specifically denies any
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`allegations related to infringement of the Asserted Patents. PMP is without knowledge or
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`information sufficient to admit or deny the remaining allegations in paragraph 28 of the Complaint
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`and, on that basis, denies them.
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`29.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 29 of the Complaint and, on that basis, denies them.
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`30.
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`Paragraph 30 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits the adult consumer inserts the tobacco unit into the
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`holder, which contains an electronically controlled heater. PMP admits the adult consumer pushes
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`a button to turn on the heater, and then draws on the tobacco unit to inhale a nicotine containing
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`aerosol. PMP admits the tobacco units respond to the warming of the heat blade inside the holder,
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`which heats the tobacco, and that the tobacco reaches a temperature below 350°C, which is a high
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`enough temperature to release a nicotine-containing aerosol without burning the tobacco.
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`31.
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`PMP admits that ACS is licensed to distribute, offer to sell, and sell the IQOS
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`system and the corresponding tobacco sticks in the U.S. PMP is without knowledge or information
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`sufficient to admit or deny the remaining allegations in paragraph 31 of the Complaint and, on that
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`basis, denies them.
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`32.
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`PMP admits that ACS is licensed to distribute, offer to sell, and sell the IQOS
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`system and the corresponding tobacco sticks in the U.S. PMP further admits that some of the
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`packaging for the IQOS device that it sells in the United States recites: “Manufactured for Philip
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`Morris USA, Richmond VA. Made in Malaysia,” and that some of the packaging for the tobacco
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`unit states: “Mfd. for Philip Morris USA, Richmond, VA. Made in Italy.” PMP is without
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`knowledge or information sufficient to admit or deny the remaining allegations in paragraph 32 of
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`the Complaint and, on that basis, denies them.
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`33.
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`Paragraph 33 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that PMP prosecuted PMTAs with the FDA seeking
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`approval to offer for sale and sell the IQOS system in the United States, and that ACS and PM
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`USA consulted with Philip Morris Products S.A. in preparation of certain aspects of a PMTA.
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`PMP is without knowledge or information sufficient to admit or deny the remaining allegations in
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`paragraph 33 of the Complaint and, on that basis, denies them.
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`THE IMPORTATION, SALE, OFFER FOR SALE, AND DISTRIBUTION OF
`IQOS DEVICES
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`34.
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`PMP admits that, on or around May 24, 2017, it filed PMTAs with the FDA seeking
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`approval to offer for sale and sell the IQOS system in the United States. PMP admits that Altria
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`Client Services LLC and Philip Morris USA, Inc. consulted on the preparation of certain aspects
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`of a PMTA application. PMP is without knowledge or information sufficient to admit or deny the
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`remaining allegations in paragraph 34 of the Complaint and, on that basis, denies them.
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`35.
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`Admitted.
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`36.
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`PMP is without knowledge or information sufficient to admit or deny the remaining
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`allegations in paragraph 36 of the Complaint and, on that basis, denies them.
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`37.
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`Paragraph 37 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that admit that IQOS systems are manufactured by third
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`parties outside of the United States and certain IQOS systems are imported and sold in the United
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`States. PMP is without knowledge or information sufficient to admit or deny the remaining
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`allegations in paragraph 37 of the Complaint and, on that basis, denies them.
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`DEFENDANTS KNOW OF THE ASSERTED PATENTS, KNOW AND SPECIFICALLY
`INTEND THAT THE IQOS PRODUCTS INFRINGE THE ASSERTED PATENTS, AND
`KNOW THAT THE IQOS PRODUCTS ARE ESPECIALLY MADE OR ESPECIALLY
`ADAPTED FOR USE IN INFRINGING THE ASSERTED PATENTS
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`38.
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`Paragraph 38 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP admits that the face of U.S. Design Patent No. D844,221 and
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`U.S. Patent No. 10,258,087 list U.S. Patent No. 7,726,320 (“the ’320 patent”); and the face of U.S.
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`Patent No. 10,278,424 lists U.S. Patent No. 9,078,473. PMP is without knowledge or information
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`sufficient to admit or deny the remaining allegations in paragraph 38 of the Complaint and, on that
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`basis, denies them.
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`39.
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`40.
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`Denied.
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`Denied.
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`COUNT ONE
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`41.
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`PMP re-alleges, adopts, and incorporates by reference the allegations included
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`within paragraphs 1 through 40 as if fully set forth herein.
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`42.
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`PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 42 of the Complaint and, on that basis, denies them.
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`43.
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`Paragraph 43 contains legal conclusions to which no answer is required. To the
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`extent an answer is required, PMP denies the remaining allegations in paragraph 43.
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`Denied.
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`PMP admits that the quoted language in paragraph 45 appears in claim 16 of the
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`44.
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`45.
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`’268 patent.
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`46.
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`Paragraph 46 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP states that the IQOS system includes an electrically powered
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`device that comprises a holder and a charger, and a disposable tobacco unit. PMP otherwise denies
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`the allegations in paragraph 46.
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`47.
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`Paragraph 47 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP states that the IQOS system includes an electrically powered
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`device that comprises a battery. PMP otherwise denies the allegations of paragraph 47.
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`48.
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`Paragraph 48 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP states that the document cited speaks for itself. PMP otherwise
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`denies the allegations of paragraph 48.
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`49.
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`PMP admits that the quoted language in paragraph 49 appears in claim 16 of the
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`’268 patent.
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`50.
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`Paragraph 50 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP denies the allegations in paragraph 50.
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`51.
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`PMP admits that the quoted language in paragraph 51 appears in claim 16 of the
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`’268 patent.
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`52.
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`Paragraph 52 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP denies the allegations in paragraph 52.
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`53.
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`PMP admits that the quoted language in paragraph 53 appears in claim 16 of the
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`’268 patent.
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`54.
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`Paragraph 54 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP admits that the IQOS system includes a holder that comprises
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`a battery. PMP otherwise denies the allegations in paragraph 54.
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`55.
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`PMP admits that the quoted language in paragraph 55 appears in claim 16 of the
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`’268 patent.
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`56.
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`Paragraph 56 contains legal conclusions to which no response is required. To the
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`extent an answer is required, PMP denies the allegations of paragraph 56.
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`57.
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`PMP states that the document cited in paragraph 57 speaks for itself. PMP
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`otherwise denies the remaining allegations of paragraph 57.
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`58.
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`PMP admits that the quoted language in paragraph 58 appears in claim 16 of the
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`’268 patent.
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`59.
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`PMP states that the document cited in paragraph 59 speaks for itself. PMP
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`otherwise denies the remaining allegations of paragraph 59.
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`60.
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`PMP admits that the quoted language in paragraph 60 appears in claim 16 of the
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`’268 patent.
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`61.
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`62.
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`’268 patent.
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`Denied.
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`PMP admits that the quoted language in paragraph 62 appears in claim 16 of the
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`63.
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`PMP states that the document cited in paragraph 63 speaks for itself. PMP
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`otherwise denies the allegations in paragraph 63.
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`64.
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`Denied.
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`65.
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`66.
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`67.
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`68.
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`69.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Paragraph 69 contains a summary request for relief, and no response is required.
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`To the extent a response is required, PMP denies that Plaintiffs are entitled to any relief sought in
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`their Complaint or any relief whatsoever.
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`COUNTS TWO THROUGH FOUR
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`
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`70-158. The Court has stayed Counts Two, Three, and Four of the Complaint under 28
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`U.S.C. § 1659. See Dkt. 27. The Amended Complaint improperly adds allegations to Counts that
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`this Court expressly stayed under 19 U.S.C. § 1659(a). See Dkt. 27. This is not permitted.
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`Plaintiffs cannot amend allegations for stayed counts without leave of the Court. See, e.g., Sandisk
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`Corp. v. Phison Elecs. Corp., Nos. 07-cv-605, 2008 WL 4533715 (W.D. Wis. Sept. 17, 2008)
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`(addressing motions practice where the parties sought leave of the court to lift a stay under 19
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`U.S.C. § 1659 to proceed with ministerial discovery). Consequently, the new allegations set forth
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`in Counts Two, Three, and Four from the Amended Complaint are not properly part of this action.
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`(Dkt. 52, ¶¶ 70-158). Absent this Court lifting the stay imposed by its June order, which Plaintiffs
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`failed to confer on and failed to move for, Plaintiffs have no ability to amend any portion of the
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`stayed Counts. PMP will respond to these counts if they are properly amended and at the
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`appropriate time when the stay is lifted.
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`COUNT FIVE
`INFRINGEMENT OF U.S. PATENT NO. 10,432,542
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`159. PMP re-alleges, adopts, and incorporates by reference the allegations included
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`within paragraphs 1 through 158 as if fully set forth herein.
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`13
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`160. PMP is without knowledge or information sufficient to admit or deny the
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`allegations in paragraph 160 of the Complaint and, on that basis, denies them.
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`161. Paragraph 161 contains legal conclusions to which no answer is required. PMP is
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`without knowledge or information sufficient to admit or deny the remaining allegations in
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`paragraph 161 of the Complaint and, on that basis, denies them.
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`162. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
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`draft claims directed at the Accused Products, but the claims are far removed from the alleged
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`invention possessed at the time of filing and described by the inventors when they filed the original
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`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
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`written description, anticipation, and obviousness.
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`163. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
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`draft claims directed at the Accused Products, but the claims are far removed from the alleged
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`invention possessed at the time of filing and described by the inventors when they filed the original
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`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
`164. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
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`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
`165. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
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`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`14
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`
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`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
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`written description, anticipation, and obviousness.
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`166. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
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`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
`167. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
`
`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
`168. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
`
`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
`169. Denied. Plaintiffs filed for the ’542 patent in September 2019 and attempted to
`
`draft claims directed at the Accused Products, but the claims are far removed from the alleged
`
`invention possessed at the time of filing and described by the inventors when they filed the original
`
`patent application on August 9, 2011 and are therefore invalid for, among other things, lack of
`
`written description, anticipation, and obviousness.
`
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`RESPONSE TO PRAYER FOR RELIEF
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`170. PMP denies that Plaintiffs are entitled to any relief sought in their Complaint or any
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`relief whatsoever.
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`AFFIRMATIVE AND OTHER DEFENSES
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`Pursuant to Federal Rule of Civil Procedure 8(c), and without altering any applicable
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`burdens of proof or burdens of persuasion, PMP asserts the following defenses to the Complaint
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`and reserves its right to assert additional defenses.
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`FIRST AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`PMP does not and has not infringed any valid, enforceable, asserted claim of the Asserted
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`Patents, either literally or under the doctrine of equivalents, under any theory of infringement.
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`SECOND AFFIRMATIVE DEFENSE
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`(Invalidity)
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`Each asserted claim of the Asserted Patents is invalid for failure to comply with one or
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`more of the requirements of Title 35 of the United States Code, including without limitation, 35
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`U.S.C. §§ 101, 102, 103, 112, and/or 116, and the rules, regulations, and laws pertaining thereto.
`
`THIRD AFFIRMATIVE DEFENSE
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`(Prosecution History Estoppel and Disclaimer)
`
`Plaintiffs are barred, based on statements, representations, and admissions made during
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`prosecution of the patent applications resulting in the Asserted Patents or related patent
`
`applications, from asserting any interpretation of any valid, enforceable claim of the Asserted
`
`Patents that would be broad enough to cover any Accused Product alleged to infringe the Asserted
`
`Patents, either literally or under the doctrine of equivalents.
`
`16
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`
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`FOURTH AFFIRMATIVE DEFENSE
`
`(Equitable Defenses)
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`Plaintiffs’ attempted enforcement of the Asserted Patents against PMP is barred by one
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`or more of the equitable doctrines, such as estoppel, acquiescence, waiver, and unclean hands.
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`FIFTH AFFIRMATIVE DEFENSE
`
`(Limitation on Damages)
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`Plaintiffs’ claims for damages are statutorily limited or barred by 35 U.S.C. §§ 286 and/or
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`287.
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`SIXTH AFFIRMATIVE DEFENSE
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`(Preclusion of Costs)
`
`Plaintiffs are barred under 35 U.S.C. § 288 from recovering costs associated with its action.
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`SEVENTH AFFIRMATIVE DEFENSE
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`(No Injunctive Relief)
`
`Plaintiffs are not entitled to injunctive relief as they have, at a minimum, an adequate
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`remedy at law upon any finding of infringement and have not suffered any irreparable injury.
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`EIGHTH AFFIRMATIVE DEFENSE
`
`(No Willfulness)
`
`Plaintiffs are barred from obtaining a finding of willfulness or receiving enhanced
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`damages because they have not alleged that PMP engaged in reprehensible conduct, and PMP
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`has engaged in no such conduct, which is a prerequisite for a willfulness finding and an award of
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`enhanced damages.
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`17
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`
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`NINTH AFFIRMATIVE DEFENSE
`
`(Failure to State a Claim)
`
`The Complaint fails to state a claim upon which relief can be granted, for at least the
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`reasons described in the Motion to Dismiss filed in this action.
`
`TENTH AFFIRMATIVE DEFENSE
`
`(Inequitable Conduct)
`
`The ’268 patent is unenforceable due to inequitable conduct on the United States Patent
`
`& Trademark Office (“Patent Office”). PMP incorporates by reference its allegations in
`
`Counterclaim VIII: Declaratory Judgment of Unenforceability of the ’268 Patent, set forth below.
`
`ELEVENTH AFFIRMATIVE DEFENSE
`
`(Unclean Hands and Patent Misuse)
`
`The ’542 patent is unenforceable due to unclean hands. The ’542 patent is also
`
`unenforceable under the doctrine of patent misuse. PMP incorporates by reference its allegations
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`in Counterclaim IX: Declaratory Judgment of Unenforceability of the ’542 Patent, set forth
`
`below.
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`RESERVATION OF RIGHTS
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`PMP hereby reserves the right to amend its Partial Answer and reserve