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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
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`Case No. 1:20-cv-00393-LO-TCB
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`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs and 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 and Counterclaim Plaintiffs.
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`[PROPOSED] ORDER DISMISSING
`REYNOLDS’S COUNTERCLAIM AND DEFENSES
`This matter is before the Court on a motion by Plaintiffs RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company (collectively, “Reynolds”) to dismiss with prejudice Reynolds’s
`counterclaim and certain of Reynolds’s defenses to the counterclaims of Altria Client Services
`LLC, (“ACS”), Philip Morris USA Inc. (“PM USA”), and Philip Morris Products S.A. (“PMP”)
`(collectively, “Counterclaim Plaintiffs”). Reynolds seeks to dismiss the following:
`1) Its counterclaim and affirmative defense that U.S. Patent No. 6,803,545 (“the ’545
`Patent”) is unenforceable for inequitable conduct before the U.S. Patent and Trademark
`Office. See Pls.’ Am. Answer & Counterclaim to Defs. Altria Client Servs. LLC & Philip
`Morris USA, Inc.’s Am. Counterclaims, Doc. 274 at 19-26 (Oct. 30, 2020).
`2) The equitable defenses of estoppel, acquiescence, waiver, and unclean hands as to
`allegations that Plaintiffs infringed U.S. Patent No. 10,104,911 (“the ’911 Patent”), U.S.
`Patent No. 10,555,556 (“the ’556 Patent”), and U.S. Patent No. 9,814,265 (“the ’265
`Patent”). See Pls.’ Answer to Def. Philip Morris Products S.A.’s Second Am.
`Counterclaims, Doc. 523 at 18 (Mar. 26, 2021).
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`Case 1:20-cv-00393-LO-TCB Document 718-1 Filed 06/16/21 Page 2 of 2 PageID# 17537
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`3) The equitable defenses of estoppel, waiver and acquiescence as to allegations that
`Plaintiffs infringed U.S. Patent No. 10,420,374 (“the ’374 Patent”). See Doc. 274 at 19.
`4) The equitable defense of unclean hands as to allegations that Plaintiffs infringed U.S.
`Patent No. 6,803,545 (“the ’545 Patent”). Doc. 274 at 19.
`5) The defense that damages are statutorily limited by a failure to satisfy the requirements of
`35 U.S.C. §§ 286 and 287 as to the infringement allegations for the ’911, ’556, and ’265
`Patents. See Doc. 523 at 18.
`6) The defense that the allegations of infringement as to the ’911, ’556, and ’265 Patents are
`barred to the extent they are founded on activities occurring outside the territorial reach of
`U.S. patent laws. Id. at 19.
`7) The defense that the allegations of infringement as to the ’545 and ’374 Patents are barred
`to the extent they are founded on activities occurring outside the territorial reach of U.S.
`patent laws. Doc. 274 at 20.
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`UPON CONSIDERATION of Reynolds’s motion,
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`IT IS HEREBY ORDERED that Reynolds’s motion is GRANTED and the above-
`listed counterclaim and defenses are DISMISSED with prejudice.
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`ENTERED this _____ day of _________________, 2021.
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`Alexandria, Virginia
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`__________________________________________
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