`
`IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF VIRGINIA
`
`Alexandria Division
`
`RAI STRATEGIC HOLDINGS, etal
`
`Plaintiff,
`
`V.
`
`CIVIL ACTION I:20cv393
`
`ALTRIA CLIENT SERVICES, LLC, etal
`
`Defendant.
`
`ORDER
`
`Before the Court are RAI's Motion to Dismiss with prejudice its counterclaims and
`
`certain affirmative defenses pursuant to F.R.C.P. 41 and 41(A)(2) and (15)(a)(2), and PMP's
`
`Motion for Summary Judgment on the same counterclaims and certain affirmative defenses.
`
`The Comt has reviewed the pleadings and considered the argument of the parties and
`
`grants RAI's Motion to Dismiss the following counterclaims and defenses as listed below with
`
`prejudice as requested. The Court denies PMP's Motion for Summary Judgment.
`
`1.
`
`2.
`
`A 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 Pis.' Am. Answer & Coimterclaim
`to Defs. Altria Client Servs. LLC & Philip Morris USA, Inc.'s Am.
`Counterclaims, Doc 274 at 19-26 (Oct. 30,2020).
`
`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") and U.S. Patent No. 10,555,556 ("the '556 Patent").
`See Pis.' Answer to Def. Philip Morris Products S.A.'s Second Am.
`Counterclaims, Doc 523 at 18 (Mar. 26,2021).
`
`3.
`
`The equitable defenses of estoppel, waiver, and acquiescence as to
`allegations that Plaintiffs infringed U. S. Patent No. 10,420,374 ("the '374
`
`
`
`Case 1:20-cv-00393-LO-TCB Document 804 Filed 08/06/21 Page 2 of 2 PageID# 21203
`Case 1:20-cv-00393-LO-TCB Document 804 Filed 08/06/21 Page 2 of 2 Page|D# 21203
`
`Patent”) and U. S. Patent No. 9,814,265 (“the ‘265 Patent”). See Doc. 2'74
`
`at 19; Dkt. 523 at 18.
`
`4.
`
`5.
`
`6.
`
`2.
`
`The equitable defense of unclean hands as to allegations that Plaintiffs
`infringed U.S. Patent No. 6,803,545 (“the ‘545 Patent”). Doc. 224 at 19.
`
`The defense that damages are statutorily limited by a failure to satisfy the
`requirements 0f35 U.S.C. § § 286 and 287 as to the infringement
`allegations for the ‘91 l, ‘556, and “265 Patents. See Doc 523 at 18.
`
`The defense that the allegations ofinfringement 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.
`
`The defense that the allegations of infringement as to the “545 and E374
`Patents are barer to the extent they are founded on activities occurring
`outside the territorial reach ofU. S. patent laws. Doc. 274 at 20.
`
`RAI shall file the proposed amended answer to PMP’s counterclaims withdrawing the
`
`defenses and its proposed amended response to Altria’s and PM USA’s counterciaims and
`
`%L
`
`iam O’Grady
`United States District Judge
`
`certain defenses.
`
`Alexandria, Virginia
`August L2
`, 2021
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
