Case 1:20-cv-00393-LO-TCB Document 803 Filed 08/05/21 Page 1 of 3 PageID# 21199
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF VIRGINIA
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`Alexandria Division
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`RAI STRATEGIC HOLDINGS, etal
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`Plaintiff,
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`V.
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`CIVIL ACTION l:20cv393
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`ALTRIA CLIENT SERVICES, LLC, etal
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`Defendant.
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`ORDER
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`RAI moves for summary judgment that the '374 patent is invalid imder 35 U.S.C.
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`§ 102(a)(1) because the claimed invention was publicly available before its filing date. In
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`support thereof, RAI states that the original written description of the 949 PCT patent
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`application, (949 PCT) which became the '374 patent, did not disclose embodiments that provide
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`support for the later claims. RAI states that the continuation-in-part of the '374 patent expanded
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`and transformed the claimed invention of the 949 PCT, and therefore the '374 patent is not
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`entitled to the 949 PCT filing date. Without the benefit of the 949 PCT filing date, the '374
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`patent filing date is July 7,2015. As a result, RAI states that one of the PMP's own products,
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`the VUSE Solo, is prior art that renders the '374 patent invalid.
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`RAI more specifically claims that the '374 patent changed the conductive material
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`in the claims from rigid or semi-rigid (949 PCT) to flexible ('374 patent) and from metallic sheet
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`to soft plastic, thereby abandoning the novelty of the earlier conductive material in the 949 PCT
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`application.
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`PMP responds that whether or not a priority document (949 PCT) contains
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`sufficient disclosure to comply with the written description in the ‘374 patent is a question of fact
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`for the jury. PMP asserts that its technical expert, Mr. McAlexander, has opined that a person of
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`skill in the art (POSITA) would find that it does. RAI responds that the Court should outright
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`reject the position that rigid or semi rigid connotes flexible and that metallic sheet connotes soft
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`plastic. Therefore, RAI states that Mr. McAlexander’s opinion should be entirely discounted.
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`The Court has reviewed the underlying materials and finds that there is a triable
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`issue of fact as to whether the ‘374 patent is entitled to the earlier June 29, 2010 filing date of the
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`949 PCT. The Court also finds that whether or not the VUSE Solo product is prior art to the
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`‘374 patent, if it does not get the June 29, 2010 filing date, is a question of fact for the jury.
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`Therefore, summary judgment on whether the ‘374 patent is invalid under 35 U.S.C. § 102(a)(1)
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`is DENIED.
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`RAI has moved for summaryjudgment of no infringement of its VUSE Solo,
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`Vibe, and Ciro by the PMP’s 911 patent, literally or under the Doctrine of Equivalents (DOE).
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`PMP agrees that no literal infringement exists but asserts that its expert, Dr. Abraham, has
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`opined that the three products do infringe under DOE.
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`RAI states that PMP cannot prove infringement under the DOE because of
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`prosecution history estoppel and also vitiation. After a review of the underlying materials, and
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`using the Court’s previous definitions of the terms in the 911 patent, the Court finds that whether
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`or not the three products infringe the 9] l patent under the DOE is an issue of fact for the jury.
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`Summary judgment is therefore DENIED.
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`RAI moves for summary judgment of no willful infringement of the 545, 911 and
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`265 patents under the standard set out in the well-known Halo Electronics case, arguing that the
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`facts in support of PMP’s claims fall short as a matter of law.
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`I’MP responds that RATS pre-suit
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`knowledge and “tie down" of the accused products, its statements to the FDA, its failure to
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`attempt to design around the patents, as well as its expert’s opinion of RAI’S knowledge of the
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`patents, create issues of fact to be decided by the jury.
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`Finding that PMP has sufficiently alleged facts under the Halo Electronics totality
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`of the circumstances test that may rise 10 a level where ajury may consider willfulness, the Court
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`denies RAI’s motion for summaryjudgment. Whether the Court ultimately allows willful
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`infringement to be considered by thejury will be decided after the close ofthe evidence.
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`Liam O’Gradygs
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`United States District Judge
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`Alexandria Virginia
`August 5 ,2021
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