`
`EXHIBIT L
`(Public Version - Redacted)
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`
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 2 of 24 PageID# 17640
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`Civil No. 1:20cv00393-LO-TCB
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs,
`
`v.
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`Defendants.
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`Counterclaim Plaintiffs,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Counterclaim Defendants.
`
`PLAINTIFFS’ AMENDED ANSWER TO DEFENDANT
`PHILIP MORRIS PRODUCTS S.A.’S SECOND AMENDED COUNTERCLAIMS
`
`Plaintiffs and Counterclaim Defendants RAI Strategic Holdings, Inc. (“RAI”) and R.J.
`
`Reynolds Vapor Company (“RJRV”) (collectively “Counterclaim Defendants”) answer the
`
`counterclaims of Defendant and Counterclaim Plaintiff Philip Morris Products S.A. (“PMP”) as
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`follows. Except as expressly stated, Counterclaim Defendants deny each and every allegation in
`
`PMP’s counterclaims. Counterclaim Defendants’ specific responses to the numbered allegations
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`are set forth below.1
`1 For convenience only, this Amended Answer includes headings used in PMP’s
`counterclaims. To the extent that a heading contains any allegation(s) made by PMP,
`
`
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`NATURE OF THE ACTION
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`1.
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`Counterclaim Defendants admit that the Counterclaims purport to arise under the
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`patent laws of the United States, 35 U.S.C. §§ 271, et seq., and to be claims for patent
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`infringement and declaratory judgment of non-infringement and invalidity. Counterclaim
`
`Defendants deny that they have infringed any valid and enforceable patent claim or that PMP is
`
`entitled to a declaration that Counterclaim Defendants’ asserted patents are invalid and not
`
`infringed. Counterclaim Defendants deny that PMP is entitled to any relief.
`
`2.
`
`Counterclaim Defendants deny PMP’s allegation that the PMP Asserted Patents
`
`cover inventions including innovative e-vapor technologies. Except as expressly stated,
`
`Counterclaim Defendants are without knowledge or information sufficient to form a belief as to
`
`the truth of the remaining allegations contained in Paragraph 2 and, on that basis, deny them.
`
`3.
`
`RJRV markets and sells electronic nicotine delivery systems under the brand
`
`names VUSE Solo, VUSE Ciro, VUSE Vibe, and VUSE Alto. Specifically, RJRV markets and
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`sells the Vuse Solo power unit, which includes a USB charging cable; the Vuse Solo flavor pack,
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`which consists of two cartridges containing e-liquid; the Vuse Ciro power unit, which includes a
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`USB charging cable; the Vuse Ciro flavor pack, which consists of three cartridges containing e-
`
`liquid; the Vuse Alto power unit, which includes a USB charging cable; the Vuse Alto flavor
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`pack, which consists of two pods containing e-liquid; the Vuse Vibe power unit, which includes
`
`a USB charging cable; and the Vuse Vibe flavor pack, which consists of two tanks containing e-
`
`liquid. In addition, RJRV sells the Vuse Vibe kit, which includes a Vuse Vibe power unit, a USB
`
`charging cable, and one tank containing e-liquid. RJRV specifically denies that it infringes the
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`counterclaims. To the extent that a heading contains any allegation(s) made by PMP,
`Counterclaim Defendants deny all such allegations.
`
`2
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`
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`PMP Asserted Patents. Except as expressly stated, RJRV denies the remaining allegations of
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`Paragraph 3.
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`4.
`
`Counterclaim Defendants admit that they have alleged that PMP infringes U.S.
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`Patent Nos. 9,814,268 (“the ’268 patent”); 10,492,542 (“the ’542 patent”); 9,839,238 (“the ’238
`
`patent”); 9,901,123 (“the ’123 patent”); and 9,930,915 (“the ’915 patent”). Counterclaim
`
`Defendants admit that proceedings regarding the ’238, ’123, and ’915 patents have been stayed
`
`pursuant to 28 U.S.C. § 1659. Except as expressly stated, Counterclaim Defendants deny the
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`remaining allegations of Paragraph 4.
`
`PARTIES
`
`5.
`
`RAI admits that it is a North Carolina corporation with its principal place of
`
`business located at 401 North Main Street, Winston-Salem, North Carolina 27101. RAI admits
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`that it is an indirect, wholly owned subsidiary of Reynolds American Inc., and that Reynolds
`
`American Inc. is an indirect, wholly owned subsidiary of British American Tobacco, p.l.c., a
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`publicly-traded company on the London Stock Exchange headquartered in London, England.
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`Except as expressly stated, RAI denies the remaining allegations of Paragraph 5.
`
`6.
`
`RJRV admits that it is a North Carolina corporation with its principal place of
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`business located at 401 North Main Street, Winston-Salem, North Carolina 27101. RJRV admits
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`that it is an indirect, wholly owned subsidiary of Reynolds American Inc., and that Reynolds
`
`American Inc. is an indirect, wholly owned subsidiary of British American Tobacco, p.l.c., a
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`publicly-traded company on the London Stock Exchange headquartered in London, England.
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`Except as expressly stated, RJRV denies the remaining allegations of Paragraph 6.
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`3
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`7.
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`Counterclaim Defendants are informed and believe that Philip Morris Products
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`S.A. is organized under the laws of Switzerland with its principal place of business located at
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`Quai Jeanrenaud 3, 2000 Neuchâtel, Switzerland.
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`JURISDICTION AND VENUE
`
`8.
`
`Counterclaim Defendants admits that PMP’s counterclaims purportedly arise
`
`under the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., and the patent laws of the United
`
`States, Title 35 of the United States Code, and that federal courts have subject matter jurisdiction
`
`over such claims pursuant to 28 U.S.C. §§ 1331 and 1338(a). Counterclaim Defendants deny
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`that they have committed any acts that give rise to PMP’s causes of action for patent
`
`infringement.
`
`9.
`
`10.
`
`11.
`
`Denied.
`
`Denied.
`
`Counterclaim Defendants admit that, in their Amended Complaint, they allege
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`that PMP infringes Counterclaim Defendants’ U.S. Patent Nos. 9,814,268; 10,492,542;
`
`9,839,238; 9,901,123; and 9,930,915. Except as expressly stated, Counterclaim Defendants deny
`
`the remaining allegations of Paragraph 11.
`
`THE PMP ASSERTED PATENTS
`
`12.
`
`Counterclaim Defendants admit
`
`that Exhibit A
`
`to PMP’s answer and
`
`counterclaims purports to be a copy of U.S. Patent No. 9,814,265, the content of which speaks
`
`for itself. Counterclaim Defendants are without knowledge or information sufficient to form a
`
`belief as to the truth of the remaining allegations contained in Paragraph 12 and, on that basis,
`
`deny them.
`
`4
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`13.
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`Counterclaim Defendants admit
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`that Exhibit B
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`to PMP’s answer and
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`counterclaims purports to be a copy of U.S. Patent No. 10,555,556, the content of which speaks
`
`for itself. Counterclaim Defendants are without knowledge or information sufficient to form a
`
`belief as to the truth of the remaining allegations contained in Paragraph 13 and, on that basis,
`
`deny them.
`
`14.
`
`Counterclaim Defendants admit
`
`that Exhibit C
`
`to PMP’s answer and
`
`counterclaims purports to be a copy of U.S. Patent No. 10,104,911, the content of which speaks
`
`for itself. Counterclaim Defendants are without knowledge or information sufficient to form a
`
`belief as to the truth of the remaining allegations contained in Paragraph 14 and, on that basis,
`
`deny them.
`
`15.
`
`The statements in Paragraph 15 set forth PMP’s purported characterization of its
`
`alleged claims and rights and, as such, require no response from Counterclaim Defendants. To
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`the extent that PMP intends to make any allegations against Counterclaim Defendants in
`
`Paragraph 15, Counterclaim Defendants deny them.
`
`16.
`
`Denied.
`
`COUNTERCLAIM I: INFRINGEMENT OF U.S. PATENT NO. 9,814,265
`(AGAINST RJRV)
`
`17.
`
`18.
`
`19.
`
`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 16.
`
`Denied.
`
`RJRV admits that Claim 1 of the ’265 patent recites a “vaporizer device for
`
`vaporizing a substance containing at least one active and/or aroma material, comprising.” RJRV
`
`cannot confirm the source, accuracy, or completeness of the images or annotations in Paragraph
`
`19 and thus lacks knowledge or information sufficient to form a belief about the truth of any
`
`allegations contained therein and, on that basis, denies them. RJRV further responds that
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`5
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`Paragraph 19 contains legal conclusions to which no answer is required. To the extent that an
`
`answer is required, RJRV denies the statements and allegations in Paragraph 19 and refers to its
`
`written discovery responses and to the Rebuttal Expert Report of Dr. Jeffrey C. Suhling
`
`Regarding U.S. Patent No. 9,814,265 served March 24, 2021. To the extent that PMP intends to
`
`make any other allegations against RJRV in Paragraph 19, RJRV denies them.
`
`20.
`
`RJRV admits that Claim 1 of the ’265 patent recites “a mouthpiece, having at
`
`least one fluid inlet and at least one fluid outlet.” RJRV cannot confirm the source, accuracy, or
`
`completeness of the images or annotations in Paragraph 20 and thus lacks knowledge or
`
`information sufficient to form a belief about the truth of any allegations contained therein and,
`
`on that basis, denies them. RJRV further responds that Paragraph 20 contains legal conclusions
`
`to which no answer is required. To the extent that an answer is required, RJRV denies the
`
`statements and allegations in Paragraph 20 and refers to its written discovery responses and to
`
`the Rebuttal Expert Report of Dr. Jeffrey C. Suhling Regarding U.S. Patent No. 9,814,265
`
`served March 24, 2021. To the extent that PMP intends to make any other allegations against
`
`RJRV in Paragraph 20, RJRV denies them.
`
`21.
`
`RJRV admits that Claim 1 of the ’265 patent recites “a heating device, configured
`
`to be connected to the mouthpiece.” RJRV cannot confirm the source, accuracy, or
`
`completeness of the images or annotations in Paragraph 21 and thus lacks knowledge or
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`information sufficient to form a belief about the truth of any allegations contained therein and,
`
`on that basis, denies them. RJRV further responds that Paragraph 21 contains legal conclusions
`
`to which no answer is required. To the extent that an answer is required, RJRV denies the
`
`statements and allegations in Paragraph 21 and refers to its written discovery responses and to
`
`the Rebuttal Expert Report of Dr. Jeffrey C. Suhling Regarding U.S. Patent No. 9,814,265
`
`6
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`served March 24, 2021. To the extent that PMP intends to make any other allegations against
`
`RJRV in Paragraph 21, RJRV denies them.
`
`22.
`
`RJRV admits that Claim 1 of the ’265 patent recites “a thermal resistor
`
`comprising a metallic foil or a thin sheet in a shape of a dual coil and/or sinuous line, having two
`
`ends and dimensions substantially the same as a cross-section of a cigarette or a cigar, wherein
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`interspaces of the shape are configured to allow a flow of fluid therethrough.” RJRV cannot
`
`confirm the source, accuracy, or completeness of the images or annotations in Paragraph 22 and
`
`thus lacks knowledge or information sufficient to form a belief about the truth of any allegations
`
`contained therein and, on that basis, denies them. RJRV further responds that Paragraph 22
`
`contains legal conclusions to which no answer is required. To the extent that an answer is
`
`required, RJRV denies the statements and allegations in Paragraph 22 and refers to its written
`
`discovery responses and to the Rebuttal Expert Report of Dr. Jeffrey C. Suhling Regarding U.S.
`
`Patent No. 9,814,265 served March 24, 2021. To the extent that PMP intends to make any other
`
`allegations against RJRV in Paragraph 22, RJRV denies them.
`
`23.
`
`RJRV admits that Claim 1 of the ’265 patent recites “at least one contact tab
`
`including a first contact tab and a second contact tab being connected to respective opposed ends
`
`of the dual coil and/or sinuous line of the thermal resistor, the first contact tab and the second
`
`contact tab not being in direct contact with each other.” RJRV cannot confirm the source,
`
`accuracy, or completeness of the images or annotations in Paragraph 23 and thus lacks
`
`knowledge or information sufficient to form a belief about the truth of any allegations contained
`
`therein and, on that basis, denies them. RJRV further responds that Paragraph 23 contains legal
`
`conclusions to which no answer is required. To the extent that an answer is required, RJRV
`
`denies the statements and allegations in Paragraph 23 and refers to its written discovery
`
`7
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 9 of 24 PageID# 17647
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`responses and to the Rebuttal Expert Report of Dr. Jeffrey C. Suhling Regarding U.S. Patent No.
`
`9,814,265 served March 24, 2021. To the extent that PMP intends to make any other allegations
`
`against RJRV in Paragraph 23, RJRV denies them.
`
`24.
`
`RJRV admits that Claim 1 of the ’265 patent recites “at least one vaporizer
`
`membrane disposed in contact with the thermal resistor and being permeable to the flow of fluid,
`
`and which is wetted or can be wetted with the substance containing the at least one active and/or
`
`aroma material.” RJRV cannot confirm the source, accuracy, or completeness of the images or
`
`annotations in Paragraph 24 and thus lacks knowledge or information sufficient to form a belief
`
`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
`
`responds that Paragraph 24 contains legal conclusions to which no answer is required. To the
`
`extent that an answer is required, RJRV denies the statements and allegations in Paragraph 24
`
`and refers to its written discovery responses and to the Rebuttal Expert Report of Dr. Jeffrey C.
`
`Suhling Regarding U.S. Patent No. 9,814,265 served March 24, 2021. To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 24, RJRV denies them.
`
`25.
`
`RJRV admits that Claim 1 of the ’265 patent recites “the thermal resistor and the
`
`at least one vaporizer membrane are arranged orthogonally or at an angle to a direction of the
`
`flow of fluid in the mouthpiece.” RJRV cannot confirm the source, accuracy, or completeness of
`
`the images or annotations in Paragraph 25 and thus lacks knowledge or information sufficient to
`
`form a belief about the truth of any allegations contained therein and, on that basis, denies them.
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`RJRV further responds that Paragraph 25 contains legal conclusions to which no answer is
`
`required. To the extent that an answer is required, RJRV denies the statements and allegations in
`
`Paragraph 25 and refers to its written discovery responses and to the Rebuttal Expert Report of
`
`Dr. Jeffrey C. Suhling Regarding U.S. Patent No. 9,814,265 served March 24, 2021. To the
`
`8
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`extent that PMP intends to make any other allegations against RJRV in Paragraph 25, RJRV
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`denies them.
`
`26.
`
`27.
`
`28.
`
`Denied.
`
`Denied.
`
`Based on its investigation to date, Reynolds states that its first awareness of the
`
`’265 patent or corresponding U.S. Patent Publication No. 2014/0305454 may have occurred
`
` Reynolds otherwise denies the
`
`allegations of this paragraph.
`
`29.
`
`30.
`
`31.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNTERCLAIM II: INFRINGEMENT OF U.S. PATENT NO. 10,555,556
`(AGAINST RJRV)
`
`32.
`
`33.
`
`34.
`
`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 31.
`
`Denied.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a cartridge for use in an
`
`aerosol-generating system, comprising.” RJRV cannot confirm the source, accuracy, or
`
`completeness of the images or annotations in Paragraph 34 and thus lacks knowledge or
`
`information sufficient to form a belief about the truth of any allegations contained therein and,
`
`on that basis, denies them. RJRV further responds that Paragraph 34 contains legal conclusions
`
`to which no answer is required. To the extent that an answer is required, RJRV denies the
`
`statements and allegations in Paragraph 34 and refers to its written discovery responses and to
`
`the Responsive Expert Report of Kelly R. Kodama Regarding U.S. Patent No. 10,555,556 served
`
`9
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`March 24, 2021. To the extent that PMP intends to make any other allegations against RJRV in
`
`Paragraph 34, RJRV denies them.
`
`35.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a liquid storage portion,
`
`comprising a housing configured to hold a liquid aerosol-forming substrate, the housing having
`
`an opening, wherein the liquid storage portion comprises at least two parts in fluid
`
`communication with each other.” RJRV cannot confirm the source, accuracy, or completeness
`
`of the images or annotations in Paragraph 35 and thus lacks knowledge or information sufficient
`
`to form a belief about the truth of any allegations contained therein and, on that basis, denies
`
`them. RJRV further responds that Paragraph 35 contains legal conclusions to which no answer is
`
`required. To the extent that an answer is required, RJRV denies the statements and allegations in
`
`Paragraph 35 and refers to its written discovery responses and to the Responsive Expert Report
`
`of Kelly R. Kodama Regarding U.S. Patent No. 10,555,556 served March 24, 2021. To the
`
`extent that PMP intends to make any other allegations against RJRV in Paragraph 35, RJRV
`
`denies them.
`
`36.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a first part of the liquid
`
`storage portion comprising a first capillary material, provided in a vicinity of the opening of the
`
`housing.” RJRV cannot confirm the source, accuracy, or completeness of the images or
`
`annotations in Paragraph 33 and thus lacks knowledge or information sufficient to form a belief
`
`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
`
`responds that Paragraph 33 contains legal conclusions to which no answer is required. To the
`
`extent that an answer is required, RJRV denies the statements and allegations in Paragraph 33
`
`and refers to its written discovery responses and to the Responsive Expert Report of Kelly R.
`
`10
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`Kodama Regarding U.S. Patent No. 10,555,556 served March 24, 2021. To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 33, RJRV denies them.
`
`37.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a second capillary material
`
`in fluid contact with the first capillary material and spaced apart from the opening by the first
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`capillary material.” RJRV cannot confirm the source, accuracy, or completeness of the images
`
`or annotations in Paragraph 37 and thus lacks knowledge or information sufficient to form a
`
`belief about the truth of any allegations contained therein and, on that basis, denies them. RJRV
`
`further responds that Paragraph 37 contains legal conclusions to which no answer is required. To
`
`the extent that an answer is required, RJRV denies the statements and allegations in Paragraph
`
`37 and refers to its written discovery responses and to the Responsive Expert Report of Kelly R.
`
`Kodama Regarding U.S. Patent No. 10,555,556 served March 24, 2021. To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 37, RJRV denies them.
`
`38.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a second part of the liquid
`
`storage portion comprising a container configured to hold the liquid aerosol-forming substrate
`
`and to supply the liquid to the second capillary material.” RJRV cannot confirm the source,
`
`accuracy, or completeness of the images or annotations in Paragraph 38 and thus lacks
`
`knowledge or information sufficient to form a belief about the truth of any allegations contained
`
`therein and, on that basis, denies them. RJRV further responds that Paragraph 38 contains legal
`
`conclusions to which no answer is required. To the extent that an answer is required, RJRV
`
`denies the statements and allegations in Paragraph 38 and refers to its written discovery
`
`responses and to the Responsive Expert Report of Kelly R. Kodama Regarding U.S. Patent No.
`
`10,555,556 served March 24, 2021. To the extent that PMP intends to make any other allegations
`
`against RJRV in Paragraph 38, RJRV denies them.
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`11
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`39.
`
`40.
`
`41.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNTERCLAIM III: INFRINGEMENT OF U.S. PATENT NO. 10,104,911
`(AGAINST RJRV)
`
`42.
`
`43.
`
`44.
`
`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 41.
`
`Denied.
`
`RJRV admits that Claim 1 of the ’911 patent recites an “aerosol generating
`
`system for heating a liquid aerosol-forming substrate, the system comprising.” RJRV cannot
`
`confirm the source, accuracy, or completeness of the images or annotations in Paragraph 44 and
`
`thus lacks knowledge or information sufficient to form a belief about the truth of any allegations
`
`contained therein and, on that basis, denies them. RJRV further responds that Paragraph 44
`
`contains legal conclusions to which no answer is required. To the extent that an answer is
`
`required, RJRV denies the statements and allegations in Paragraph 44 and refers to its written
`
`discovery responses and to the Responsive Expert Report of Kelly R. Kodama Regarding U.S.
`
`Patent No. 10,104,911 served March 24, 2021. To the extent that PMP intends to make any other
`
`allegations against RJRV in Paragraph 44, RJRV denies them.
`
`45.
`
`RJRV admits that Claim 1 of the ’911 patent recites “an aerosol-forming
`
`chamber.” RJRV cannot confirm the source, accuracy, or completeness of the images or
`
`annotations in Paragraph 45 and thus lacks knowledge or information sufficient to form a belief
`
`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
`
`responds that Paragraph 45 contains legal conclusions to which no answer is required. To the
`
`extent that an answer is required, RJRV denies the statements and allegations in Paragraph 45
`
`and refers to its written discovery responses and to the Responsive Expert Report of Kelly R.
`
`12
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`Kodama Regarding U.S. Patent No. 10,104,911 served March 24, 2021. To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 45, RJRV denies them.
`
`46.
`
`RJRV admits that Claim 1 of the ’911 patent recites “leakage prevention means
`
`configured to prevent or reduce leakage of liquid aerosol condensate from the aerosol generating
`
`system.” RJRV cannot confirm the source, accuracy, or completeness of the images or
`
`annotations in Paragraph 46 and thus lacks knowledge or information sufficient to form a belief
`
`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
`
`responds that Paragraph 46 contains legal conclusions to which no answer is required. To the
`
`extent that an answer is required, RJRV denies the statements and allegations in Paragraph 46
`
`and refers to its written discovery responses and to the Responsive Expert Report of Kelly R.
`
`Kodama Regarding U.S. Patent No. 10,104,911 served March 24, 2021. To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 46, RJRV denies them.
`
`47.
`
`RJRV admits that Claim 1 of the ’911 patent recites “wherein the at least one
`
`cavity is a blind hole recessed in the wall of the aerosol-forming chamber and has an open end, a
`
`closed end, and a longitudinal direction extending between the open end and the closed end.”
`
`RJRV admits that Claim 1 of the ’911 patent further recites “wherein the at least one cavity has a
`
`largest cross-sectional dimension x taken along a cross-section of the cavity in a direction
`
`perpendicular to the longitudinal direction of the cavity, where x is 0.5 mm, or 1 mm, or between
`
`0.5 mm and 1 mm.” RJRV cannot confirm the source, accuracy, or completeness of the images
`
`or annotations in Paragraph 47 and thus lacks knowledge or information sufficient to form a
`
`belief about the truth of any allegations contained therein and, on that basis, denies them. RJRV
`
`further responds that Paragraph 47 contains legal conclusions to which no answer is required. To
`
`the extent that an answer is required, RJRV denies the statements and allegations in Paragraph
`
`13
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 15 of 24 PageID# 17653
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`47 and refers to its written discovery responses and to the Responsive Expert Report of Kelly R.
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`Kodama Regarding U.S. Patent No. 10,104,911 served March 24, 2021. To the extent that PMP
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`intends to make any other allegations against RJRV in Paragraph 47, RJRV denies them.
`
`48.
`
`49.
`
`50.
`
`51.
`
`Denied.
`
`Denied.
`
`Denied.
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`Based on its investigation to date, Reynolds states that its first awareness of the
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`’911 patent or corresponding U.S. Patent Publication No. 2013/0306064
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` Reynolds otherwise denies the allegations of this
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`paragraph.
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`52.
`
`53.
`
`54.
`
`Denied.
`
`Denied.
`
`Denied.
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`COUNTERCLAIM IV: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`THE ’268 PATENT
`(AGAINST RJRV AND RAI)
`
`55.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 54.
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`14
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`
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 16 of 24 PageID# 17654
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`56.
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`Counterclaim Defendants’ Amended Complaint alleges that PMP has infringed
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`and is currently infringing “one or more claims of the ’268 patent (including claim 16)” by
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`importing, selling, offering for sale, and/or distributing the IQOS system in the United States.
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`Dkt. 52 at ¶ 44. Except as expressly stated, Counterclaim Defendants deny the remaining
`
`allegations of Paragraph 56.
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`57.
`
`58.
`
`59.
`
`Denied.
`
`Denied.
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`Counterclaim Defendants admit
`
`that an immediate, real and justiciable
`
`controversy has arisen and exists between the parties concerning alleged infringement of the
`
`’268 patent. Except as expressly stated, Counterclaim Defendants deny the remaining
`
`allegations of Paragraph 59.
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`COUNTERCLAIM V: DECLARATORY JUDGMENT OF INVALIDITY OF THE
`’268 PATENT
`(AGAINST RJRV AND RAI)
`
`60.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 59.
`
`61.
`
`Counterclaim Defendants allege in their Amended Complaint that the ’268 patent
`
`is “currently in force and presumed valid.” Dkt. 52 at ¶ 42. Except as expressly stated,
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`Counterclaim Defendants deny the remaining allegations of Paragraph 61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`15
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`
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 17 of 24 PageID# 17655
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`COUNTERCLAIM VI: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`THE ’542 PATENT
`(AGAINST RJRV AND RAI)
`
`66.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 65.
`
`67.
`
`Counterclaim Defendants’ Amended Complaint alleges that PMP has infringed
`
`and is currently infringing “one or more claims of the ’542 patent (including claim 1)” by
`
`importing, selling, offering for sale, and/or distributing the IQOS system in the United States.
`
`Dkt. 52 at ¶ 162. Except as expressly stated, Counterclaim Defendants deny the remaining
`
`allegations of Paragraph 67.
`
`68.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`Counterclaim Defendants admit
`
`that an immediate, real and justiciable
`
`controversy has arisen and exists between the parties concerning alleged infringement of the
`
`’542 patent. Except as expressly stated, Counterclaim Defendants deny the remaining
`
`allegations of Paragraph 70.
`
`COUNTERCLAIM VII: DECLARATORY JUDGMENT OF INVALIDITY OF THE
`’542 PATENT
`(AGAINST RJRV AND RAI)
`
`71.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 70.
`
`72.
`
`Counterclaim Defendants allege in their Amended Complaint that the ’542 patent
`
`is “currently in force and presumed valid.” Dkt. 52 at ¶ 160. Except as expressly stated,
`
`Counterclaim Defendants deny the remaining allegations of Paragraph 72.
`
`73.
`
`Denied.
`
`16
`
`
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 18 of 24 PageID# 17656
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`74.
`
`75.
`
`76.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNTERCLAIM VIII: DECLARATORY JUDGMENT OF UNENFORCEABILITY
`OF THE ’268 PATENT
`(AGAINST RJRV AND RAI)
`
`77 – 140. All proceedings relating to the ’268 patent are stayed. (Dkt. 432.)
`
`Counterclaim Defendants will provide a response to Counterclaim Plaintiffs’ allegations at the
`
`appropriate time after the stay is lifted.
`
`COUNTERCLAIM IX: DECLARATORY JUDGMENT OF UNENFORCEABILITY
`OF THE ’542 PATENT
`(AGAINST RJRV AND RAI)
`
`141 – 172. All proceedings relating to the ’542 patent are stayed. (Dkt. 432.)
`
`Counterclaim Defendants will provide a response to Counterclaim Plaintiffs’ allegations at the
`
`appropriate time after the stay is lifted.
`
`DEMAND FOR JURY TRIAL
`
`173. Counterclaim Defendants admit that PMP has requested trial by jury on all issues
`
`so triable.
`
`PRAYER FOR RELIEF
`
`Counterclaim Defendants deny all the allegations and prayers for relief in Paragraphs
`
`(A)-(P) of PMP’s prayer for relief, and request that the Court deny all such relief to PMP with
`
`prejudice.
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`DENIAL OF ANY REMAINING ALLEGATIONS
`
`Except as specifically admitted herein, Counterclaim Defendants deny any remaining
`
`allegations in PMP’s counterclaims.
`
`17
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 19 of 24 PageID# 17657
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`AFFIRMATIVE DEFENSES
`
`Subject to the responses above, Counterclaim Defendants allege and assert the following
`
`defenses in response to the allegations in PMP’s counterclaims, undertaking the burden of proof
`
`only as to those defenses deemed affirmative defenses by law, regardless of how such defenses
`
`are denominated herein.
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`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
`
`The counterclaims fail to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
`(No Infringement)
`
`RJRV does not infringe any valid and enforceable claim of the PMP Asserted Patents,
`
`literally or under the doctrine of equivalents, directly or indirectly, willfully or otherwise. RJRV
`
`has not performed any act and is not proposing to perform any act in violation of any rights
`
`validly belonging to PMP.
`
`THIRD AFFIRMATIVE DEFENSE
`(Invalidity)
`
`The asserted claims of the PMP Asserted Patents are invalid for failure to satisfy the
`
`requirements of 35 U.S.C. § 100 et seq., including, but not limited to, one or more of the
`
`following: 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`FOURTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel and Disclaimer)
`
`PMP’s claims are barred, in whole or in part, and PMP is barred, based on statements,
`
`representations, and admissions made to the United States Patent and Trademark Office during
`
`prosecution of the patent applications resulting in the issuance of the PMP Asserted Patents or
`
`related patent applications, from asserting any interpretation of any valid, enforceable claim of
`
`18
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`
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`Case 1:20-cv-00393-LO-TCB Document 720-12 Filed 06/16/21 Page 20 of 24 PageID# 17658
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`the PMP Asserted Patents that would be broad enough to cover or otherwise include any
`
`Accused Product alleged to infringe the PMP Asserted Patents, either literally or under the
`
`doctrine of equivalents.
`
`FIFTH AFFIRMATIVE DEFENSE
`(Equitable Defenses)
`
`PMP’s attempted enforcement of the PMP Asserted Patents against RJRV is barred by
`
`one or more of the equitable doctrines, such as estoppel, acquiescence, waiver, and unclean
`
`hands.
`
`SIXTH AFFIRMATIVE DEFENSE
`(Limitation on Damages)
`
`PMP’s claims for damages are statutorily limited by a failure to satisfy the requirements
`
`of 35 U.S.C. §§ 286 and 287.
`
`SEVENTH AFFIRMATIVE DEFENSE
`(Preclusion of Costs)
`
`PMP is barred under 35 U.S.C. § 288 from recovering costs associated with its action.
`
`EIGHTHSIXTH AFFIRMATIVE DEFENSE
`(Ensnarement)
`
`PMP’s claims are barred or limited in whole or in part by the doctrine of ensnarement.
`
`NINTHSEVENTH AFFIRMATIVE DEFENSE
`(No Injunctive Relief)
`
`PMP is not entitled to injunctive relief as i