Case 1:20-cv-00393-LO-TCB Document 810 Filed 08/11/21 Page 1 of 22 PageID# 21299
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`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.
`
`
`
`Civil No. 1:20-cv-00393-LO-TCB
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`PLAINTIFFS’ SECOND AMENDED ANSWER TO DEFENDANTS ALTRIA CLIENT
`SERVICES LLC AND PHILIP MORRIS USA, INC.’S AMENDED COUNTERCLAIMS
`
`Plaintiffs and Counterclaim Defendants RAI Strategic Holdings, Inc. (“RAI”) and R.J.
`
`Reynolds Vapor Company (“RJRV”) (collectively “Counterclaim Defendants”) answer the
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`counterclaims of Defendants and Counterclaim Plaintiffs Altria Client Services LLC (“ACS”)
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`and Philip Morris USA, Inc. (“PM USA”) (collectively “Counterclaim Plaintiffs”) as follows.
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`Except as expressly stated, Counterclaim Defendants deny each and every allegation in
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`Counterclaim Plaintiffs’ counterclaims. Counterclaim Defendants’ specific responses to the
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`numbered allegations are set forth below.1
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`NATURE OF THE ACTION
`
`1.
`
`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 infringement
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`and declaratory judgment of non-infringement and invalidity. Counterclaim Defendants deny that
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`they have infringed any valid and enforceable patent claim or that Counterclaim Plaintiffs are
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`entitled to a declaration that Counterclaim Defendants’ asserted patents are invalid and not
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`infringed. Counterclaim Defendants deny that Counterclaim Plaintiffs are entitled to any relief.
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`2.
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`Counterclaim Defendants deny Counterclaim Plaintiffs’ allegation that the ACS
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`and PM USA Asserted Patents cover inventions including innovative e-vapor technologies.
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`Except as expressly stated, Counterclaim Defendants are without knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 2 and,
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`on that basis, deny them.
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`3.
`
`RJRV markets and sells electronic nicotine delivery systems under the brand names
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`VUSE Solo, VUSE Ciro, VUSE Vibe, and VUSE Alto. Specifically, RJRV markets and sells the
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`Vuse Solo power unit, which includes a USB charging cable; the Vuse Solo flavor pack, which
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`consists of two cartridges containing e-liquid; the Vuse Ciro power unit, which includes a USB
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`charging cable; the Vuse Ciro flavor pack, which consists of three cartridges containing e-liquid;
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`the Vuse Alto power unit, which includes a USB charging cable; the Vuse Alto flavor pack, which
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`consists of two pods containing e-liquid; the Vuse Vibe power unit, which includes a USB
`
`
`1 For convenience only, this Amended Answer includes headings used in Counterclaim
`Plaintiffs’ counterclaims. To the extent that a heading contains any allegation(s) made by
`Counterclaim Plaintiffs, Counterclaim Defendants deny all such allegations.
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`
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`2
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`charging cable; and the Vuse Vibe flavor pack, which consists of two tanks containing e-liquid. In
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`addition, RJRV sells the Vuse Vibe kit, which includes a Vuse Vibe power unit, a USB charging
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`cable, and one tank containing e-liquid. RJRV specifically denies that it infringes the PMP
`
`Asserted Patents. Except as expressly stated, RJRV denies the remaining allegations of Paragraph
`
`3.
`
`4.
`
`Counterclaim Defendants admit that they have alleged that Counterclaim Plaintiffs
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`infringe U.S. 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”).
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`Counterclaim Defendants admit that proceedings regarding the ’238, ’123, and ’915 patents have
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`been stayed pursuant to 28 U.S.C. § 1659. Except as expressly stated, Counterclaim Defendants
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`deny the remaining allegations of Paragraph 4.
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`PARTIES
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`5.
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`RAI 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. RAI admits
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`that it is an indirect, wholly owned subsidiary of Reynolds American Inc., and that Reynolds
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`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.
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`6.
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`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 ACS is a Virginia
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`corporation with its principal place of business located at 6601 West Broad Street, Richmond,
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`Virginia 23230.
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`8.
`
`Counterclaim Defendants are informed and believe that PM USA is a Virginia
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`Corporation with its principal place of business at 6601 West Broad Street, Richmond, Virginia
`
`23230.
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`JURISDICTION AND VENUE
`
`9.
`
`Counterclaim Defendants admits that PMP’s counterclaims purportedly arise under
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`the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., and the patent laws of the United States,
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`Title 35 of the United States Code, and that federal courts have subject matter jurisdiction over
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`such claims pursuant to 28 U.S.C. §§ 1331 and 1338(a). Counterclaim Defendants deny that they
`
`have committed any acts that give rise to PMP’s causes of action for patent infringement.
`
`10.
`
`11.
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`Denied.
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`Denied. Counterclaim Defendant RJRV has moved to sever and transfer
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`Counterclaim Plaintiffs’ infringement counterclaims (nos. I and II) to the Middle District of North
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`Carolina under Fed. R. Civ. P. 21 and 28 U.S.C. § 1404(a).
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`12.
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`Counterclaim Defendants admit that, in their Amended Complaint, they allege that
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`Counterclaim Plaintiffs infringe Counterclaim Defendants’ U.S. Patent Nos. 9,814,268;
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`10,492,542; 9,839,238; 9,901,123; and 9,930,915. Except as expressly stated, Counterclaim
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`Defendants deny the remaining allegations of Paragraph 12.
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`THE ACS AND PM USA ASSERTED PATENTS
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`13.
`
`Counterclaim Defendants admit that Exhibit A to Counterclaim Plaintiffs’ answer
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`and counterclaims purports to be a copy of U.S. Patent No. 6,803,545, the content of which speaks
`
`for itself. Counterclaim Defendants are without knowledge or information sufficient to form a
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`4
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`belief as to the truth of the remaining allegations contained in Paragraph 13 and, on that basis,
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`deny them.
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`14.
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`Counterclaim Defendants admit that Exhibit B to Counterclaim Plaintiffs’ answer
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`and counterclaims purports to be a copy of U.S. Patent No. 10,420,374, the content of which speaks
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`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 Counterclaim Plaintiffs’ purported
`
`characterization of their alleged claims and rights and, as such, require no response from
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`Counterclaim Defendants. To the extent that Counterclaim Plaintiffs intend to make any
`
`allegations against Counterclaim Defendants in Paragraph 15, Counterclaim Defendants deny
`
`them.
`
`16.
`
`Denied.
`
`COUNTERCLAIM I: INFRINGEMENT OF U.S. PATENT NO. 6,803,545
`(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 ’545 patent recites an “electrically heated smoking
`
`system 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
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`responds that Paragraph 19 contains legal conclusions to which no answer is required. To the extent
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`that an answer is required, RJRV further denies the statements and allegations in Paragraph 19
`
`insofar as they purport to require an application of various terms of the patent claims (“electrically
`
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`5
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`heated smoking system”) and are therefore premature before the Court has provided its
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`interpretation of the patent claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S.
`
`370 (1996). To the extent that PMP intends to make any other allegations against RJRV in
`
`Paragraph 19, RJRV denies them.
`
`20.
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`RJRV admits that Claim 1 of the ’545 patent recites “at least one electrical
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`resistance heating element.” RJRV cannot confirm the source, accuracy, or completeness of the
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`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
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`further responds that Paragraph 20 contains legal conclusions to which no answer is required. To
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`the extent that an answer is required, RJRV further denies the statements and allegations in
`
`Paragraph 20 insofar as they purport to require an application of various terms of the patent claims
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`(“at least one electrical resistance heating element”) and are therefore premature before the Court
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`has provided its interpretation of the patent claims pursuant to Markman v. Westview Instruments,
`
`Inc., 517 U.S. 370 (1996). 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 ’545 patent recites “a lithium ion power source
`
`electrically connected to the at least one electrical resistance heating element.” RJRV cannot
`
`confirm the source, accuracy, or completeness of the images or annotations in Paragraph 21 and
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`thus lacks knowledge or information sufficient to form a belief about the truth of any allegations
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`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 further denies the statements and allegations in Paragraph 21 insofar as they purport to
`
`require an application of various terms of the patent claims (“a lithium ion power source
`
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`6
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`electrically connected to the at least one electrical resistance heating element”) and are therefore
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`premature before the Court has provided its interpretation of the patent claims pursuant to
`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent that PMP intends to
`
`make any other allegations against RJRV in Paragraph 21, RJRV denies them.
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`22.
`
`RJRV admits that Claim 1 of the ’545 patent recites “a controller to control a flow
`
`of modulated pulses of electrical power from the lithium ion power source to the at least one
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`electrical resistance heating element to prevent damage to the lithium ion power source.” RJRV
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`cannot confirm the source, accuracy, or completeness of the images or annotations in Paragraph
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`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
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`22 contains legal conclusions to which no answer is required. To the extent that an answer is
`
`required, RJRV further denies the statements and allegations in Paragraph 22 insofar as they
`
`purport to require an application of various terms of the patent claims (“a controller to control a
`
`flow of modulated pulses of electrical power from the lithium ion power source to the at least one
`
`electrical resistance heating element to prevent damage to the lithium ion power source”) and are
`
`therefore premature before the Court has provided its interpretation of the patent claims pursuant
`
`to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent that PMP intends
`
`to make any other allegations against RJRV in Paragraph 22, RJRV denies them.
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`23.
`
`RJRV lacks knowledge or information sufficient to form a belief about the truth of
`
`any allegations contained in Paragraph 23 and, on that basis, denies them.
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`24.
`
`25.
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`26.
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`Denied.
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`Denied.
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`Denied.
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`7
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`27.
`
`RJRV states that, based on its investigation to date, its first awareness of the ’545
`
`Patent was
`
`28.
`
`29.
`
`30.
`
`Denied.
`
`Denied.
`
`Denied.
`
`
`
`
`
`COUNTERCLAIM II: INFRINGEMENT OF U.S. PATENT NO. 10,420,374
`(AGAINST RJRV)
`
`31.
`
`32.
`
`33.
`
`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 30.
`
`Denied.
`
`RJRV admits that Claim 1 of the ’374 patent recites an “electronic vaping device
`
`comprising.” 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
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`responds that Paragraph 33 contains legal conclusions to which no answer is required. To the extent
`
`that an answer is required, RJRV further denies the statements and allegations in Paragraph 33
`
`insofar as they purport to require an application of various terms of the patent claims (“electronic
`
`vaping device”) and are therefore premature before the Court has provided its interpretation of the
`
`patent claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the
`
`extent that PMP intends to make any other allegations against RJRV in Paragraph 33, RJRV denies
`
`them.
`
`34.
`
`RJRV admits that Claim 1 of the ’374 patent recites “a puff sensor assembly.”
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`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
`
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`8
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`of any allegations contained therein and, on that basis, denies them. RJRV further responds that
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`Paragraph 34 contains legal conclusions to which no answer is required. To the extent that an
`
`answer is required, RJRV further denies the statements and allegations in Paragraph 34 insofar as
`
`they purport to require an application of various terms of the patent claims (“a puff sensor
`
`assembly”) and are therefore premature before the Court has provided its interpretation of the
`
`patent claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). 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 ’374 patent recites “a controller.” RJRV cannot
`
`confirm the source, accuracy, or completeness of the images or annotations in Paragraph 35 and
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`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 further denies the statements and allegations in Paragraph 35 insofar as they purport to
`
`require an application of various terms of the patent claims (“a controller”) and are therefore
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`premature before the Court has provided its interpretation of the patent claims pursuant to
`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). 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 ’374 patent recites “a metal casing.” RJRV cannot
`
`confirm the source, accuracy, or completeness of the images or annotations in Paragraph 36 and
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`thus lacks knowledge or information sufficient to form a belief about the truth of any allegations
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`contained therein and, on that basis, denies them. RJRV further responds that Paragraph 36
`
`contains legal conclusions to which no answer is required. To the extent that an answer is required,
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`RJRV further denies the statements and allegations in Paragraph 36 insofar as they purport to
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`require an application of various terms of the patent claims (“a metal casing”) and are therefore
`
`premature before the Court has provided its interpretation of the patent claims pursuant to
`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent that PMP intends to
`
`make any other allegations against RJRV in Paragraph 36, RJRV denies them.
`
`37.
`
`RJRV admits that Claim 1 of the ’374 patent recites “a capacitor arranged in the
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`metal casing and connected to the controller.” RJRV cannot confirm the source, accuracy, or
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`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
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`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 further denies the
`
`statements and allegations in Paragraph 37 insofar as they purport to require an application of
`
`various terms of the patent claims (“a capacitor arranged in the metal casing and connected to the
`
`controller”) and are therefore premature before the Court has provided its interpretation of the
`
`patent claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the
`
`extent that PMP intends to make any other allegations against RJRV in Paragraph 37, RJRV denies
`
`them.
`
`38.
`
`RJRV lacks knowledge or information sufficient to form a belief about the truth of
`
`any allegations contained in Paragraph 38 and, on that basis, denies them.
`
`39.
`
`RJRV admits that Claim 1 of the ’374 patent recites, inter alia, “a flexible
`
`conductive membrane and a rigid conductive plate spaced apart by an insulating ring spacer
`
`between the flexible conductive membrane and the rigid conductive plate.” RJRV cannot confirm
`
`the source, accuracy, or completeness of the images or annotations in Paragraph 39 and thus lacks
`
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`10
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`knowledge or information sufficient to form a belief about the truth of any allegations contained
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`therein and, on that basis, denies them. RJRV further responds that Paragraph 39 contains legal
`
`conclusions to which no answer is required. To the extent that an answer is required, RJRV further
`
`denies the statements and allegations in Paragraph 39 insofar as they purport to require an
`
`application of various terms of the patent claims (“a flexible conductive membrane and a rigid
`
`conductive plate spaced apart by an insulating ring spacer between the flexible conductive
`
`membrane and the rigid conductive plate”) and are therefore premature before the Court has
`
`provided its interpretation of the patent claims pursuant to Markman v. Westview Instruments, Inc.,
`
`517 U.S. 370 (1996). To the extent that PMP intends to make any other allegations against RJRV
`
`in Paragraph 39, RJRV denies them.
`
`40.
`
`RJRV admits that Claim 1 of the ’374 patent recites, inter alia, “an air dielectric
`
`between the flexible conductive membrane and the rigid conductive plate.” RJRV cannot confirm
`
`the source, accuracy, or completeness of the images or annotations in Paragraph 40 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 40 contains legal
`
`conclusions to which no answer is required. To the extent that an answer is required, RJRV further
`
`denies the statements and allegations in Paragraph 40 insofar as they purport to require an
`
`application of various terms of the patent claims (“an air dielectric between the flexible conductive
`
`membrane and the rigid conductive plate”) and are therefore premature before the Court has
`
`provided its interpretation of the patent claims pursuant to Markman v. Westview Instruments, Inc.,
`
`517 U.S. 370 (1996). To the extent that PMP intends to make any other allegations against RJRV
`
`in Paragraph 40, RJRV denies them.
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`11
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`41.
`
`RJRV admits that Claim 1 of the ’374 patent recites “the flexible conductive
`
`membrane is configured to deform in response to airflow through the electronic vaping device.”
`
`RJRV cannot confirm the source, accuracy, or completeness of the images or annotations in
`
`Paragraph 41 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 41 contains legal conclusions to which no answer is required. To the extent that an
`
`answer is required, RJRV further denies the statements and allegations in Paragraph 41 insofar as
`
`they purport to require an application of various terms of the patent claims (“the flexible
`
`conductive membrane is configured to deform in response to airflow through the electronic vaping
`
`device”) and are therefore premature before the Court has provided its interpretation of the patent
`
`claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent
`
`that PMP intends to make any other allegations against RJRV in Paragraph 41, RJRV denies them.
`
`42.
`
`RJRV admits that Claim 1 of the ’374 patent recites “the puff sensor assembly is
`
`configured to sense rate and direction of the airflow through the electronic vaping device.” RJRV
`
`cannot confirm the source, accuracy, or completeness of the images or annotations in Paragraph
`
`42 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
`
`42 contains legal conclusions to which no answer is required. To the extent that an answer is
`
`required, RJRV further denies the statements and allegations in Paragraph 42 insofar as they
`
`purport to require an application of various terms of the patent claims (“the puff sensor assembly
`
`is configured to sense rate and direction of the airflow through the electronic vaping device”) and
`
`are therefore premature before the Court has provided its interpretation of the patent claims
`
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`12
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`pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent that PMP
`
`intends to make any other allegations against RJRV in Paragraph 42, RJRV denies them.
`
`43.
`
`44.
`
`Denied.
`
`RJRV admits that Claim 1 of the ’374 patent recites “detect a draw action at a
`
`mouth-end piece of the electronic vaping device based on the rate and direction of the airflow
`
`through the electronic vaping device.” 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 further denies the
`
`statements and allegations in Paragraph 44 insofar as they purport to require an application of
`
`various terms of the patent claims (“detect a draw action at a mouth-end piece of the electronic
`
`vaping device based on the rate and direction of the airflow through the electronic vaping device”)
`
`and are therefore premature before the Court has provided its interpretation of the patent claims
`
`pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). 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 ’374 patent recites “detect a blowing action at the
`
`mouth-end piece of the electronic vaping device based on the rate and direction of the airflow
`
`through the electronic vaping device.” 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
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`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 further denies the
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`13
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`Case 1:20-cv-00393-LO-TCB Document 810 Filed 08/11/21 Page 14 of 22 PageID# 21312
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`statements and allegations in Paragraph 45 insofar as they purport to require an application of
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`various terms of the patent claims (“detect a blowing action at the mouth-end piece of the electronic
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`vaping device based on the rate and direction of the airflow through the electronic vaping device”)
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`and are therefore premature before the Court has provided its interpretation of the patent claims
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`pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent that PMP
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`intends to make any other allegations against RJRV in Paragraph 45, RJRV denies them.
`
`46.
`
`RJRV admits that Claim 1 of the ’374 patent recites “actuate a heater in response
`
`to detecting the draw action, but not in response to detecting the blowing action.” RJRV further
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`responds that Paragraph 46 contains legal conclusions to which no answer is required. To the
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`extent that an answer is required, RJRV further the statements and allegations in Paragraph 46
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`insofar as they purport to require an application of various terms of the patent claims (“actuate a
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`heater in response to detecting the draw action, but not in response to detecting the blowing
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`action”) and are therefore premature before the Court has provided its interpretation of the patent
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`claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). To the extent
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`that PMP intends to make any other allegations against RJRV in Paragraph 46, RJRV denies them.
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`47.
`
`48.
`
`49.
`
`50.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
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`COUNTERCLAIM III: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`THE ’268 PATENT
`(AGAINST RJRV AND RAI)
`
`51.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 50.
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`
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`14
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`Case 1:20-cv-00393-LO-TCB Document 810 Filed 08/11/21 Page 15 of 22 PageID# 21313
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`52.
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`Counterclaim Defendants’ Amended Complaint alleges that PMP has infringed and
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`is currently infringing “one or more claims of the ’268 patent (including claim 16)” by importing,
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`selling, offering for sale, and/or distributing the IQOS system in the United States. Dkt. 52 at ¶ 44.
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`Except as expressly stated, Counterclaim Defendants deny the remaining allegations of Paragraph
`
`52.
`
`53.
`
`54.
`
`55.
`
`Denied.
`
`Denied.
`
`Counterclaim Defendants admit that an immediate, real and justiciable controversy
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`has arisen and exists between the parties concerning alleged infringement of the ’268 patent.
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`Except as expressly stated, Counterclaim Defendants deny the remaining allegations of Paragraph
`
`55.
`
`COUNTERCLAIM IV: DECLARATORY JUDGMENT OF INVALIDITY OF THE
`’268 PATENT
`(AGAINST RJRV AND RAI)
`
`56.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 55.
`
`57.
`
`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 57.
`
`58.
`
`59.
`
`60.
`
`61.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`
`
`15
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`Case 1:20-cv-00393-LO-TCB Document 810 Filed 08/11/21 Page 16 of 22 PageID# 21314
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`COUNTERCLAIM V: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`THE ’542 PATENT
`(AGAINST RJRV AND RAI)
`
`62.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 61.
`
`63.
`
`Counterclaim Defendants’ Amended Complaint alleges that Counterclaim
`
`Plaintiffs have infringed and are 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 63.
`
`64.
`
`65.
`
`66.
`
`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
`
`66.
`
`COUNTERCLAIM VI: DECLARATORY JUDGMENT OF INVALIDITY OF THE
`’542 PATENT
`(AGAINST RJRV AND RAI)
`
`67.
`
`Counterclaim Defendants reassert and incorporate by reference their responses to
`
`Paragraphs 1 to 66.
`
`68.
`
`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 68.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`
`
`16
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`

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`Case 1:20-cv-00393-LO-TCB Document 810 Filed 08/11/21 Page 17 of 22 PageID# 21315
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`71.
`
`72.
`
`Denied.
`
`Denied.
`
`COUNTERCLAIM VIII:2 DECLARATORY JUDGMENT OF UENFORCEABILITY
`OF THE ’268 PATENT
`(AGAINST RJRV AND RAI)
`
`73 – 136. Counterclaim Defendants have moved to dismiss Counterclaim VIII for failure
`
`to state a claim. Counterclaim Defendants will provide a response to Counterclaim Plaintiffs’
`
`allegations at the appropriate time if the motion is denied.
`
`COUNTERCLAIM IX: DECLARATORY JUDGMENT OF UENFORCEABILITY
`OF THE ’268 PATENT
`(AGAINST RJRV AND RAI)
`
`137 – 168. Counterclaim Defendants have moved to dismiss Counterclaim IX for failure
`
`to state a claim. Counterclaim Defendants will provide a response to Counterclaim Plaintiffs’
`
`allegations at the appropriate time if the motion is denied.
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`DEMAND FOR JURY TRIAL
`
`169. Counterclaim Defendants admit that Counterclaim Plaintiffs have 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)-(N) of PMP’s prayer for relief, and request that the Court deny all such relief to
`
`Counterclaim Plaintiffs with prejudice.
`
`DENIAL OF ANY REMAINING ALLEGATIONS
`
`Except as specifically admitted herein, Counterclaim Defendants deny any remaining
`
`allegations in Counterclaim Plaintiffs’ counterclaims.
`
`
`2 Counterclaim Plaintiffs’ Counterclaims VII and VIII are misnumbered as Counterclaims VIII and IX.
`This Amended Answer follows the same numbering for the sake of simplicity.
`
`
`
`17
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`Case 1:20-cv-00393-LO-TCB Document 810 Filed