Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 1 of 21 PageID# 21359
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`
`
`
`
`Civil No. 1:20cv00393-LO-TCB
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`
`
`
`
`
`
`
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Plaintiffs,
`
`v.
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`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.,
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`Counterclaim Plaintiffs,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
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`Counterclaim Defendants.
`
`
`PLAINTIFFS’ AMENDED ANSWER TO DEFENDANT
`PHILIP MORRIS PRODUCTS S.A.’S SECOND AMENDED COUNTERCLAIMS
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`Plaintiffs and Counterclaim Defendants RAI Strategic Holdings, Inc. (“RAI”) and R.J.
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`Reynolds Vapor Company (“RJRV”) (collectively “Counterclaim Defendants”) answer the
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`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
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`

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`PMP’s counterclaims. Counterclaim Defendants’ specific responses to the numbered allegations
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`are set forth below.1
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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 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 PMP is entitled to a declaration
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`that Counterclaim Defendants’ asserted patents are invalid and not infringed. Counterclaim
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`Defendants deny that PMP is entitled to any relief.
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`2.
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`Counterclaim Defendants deny PMP’s allegation that the PMP Asserted Patents
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`cover inventions including innovative e-vapor technologies. Except as expressly stated,
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`Counterclaim Defendants are without knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations contained in Paragraph 2 and, on that basis, deny them.
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`3.
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`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
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`charging cable; and the Vuse Vibe flavor pack, which consists of two tanks containing e-liquid. In
`
`
`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,
`Counterclaim Defendants deny all such allegations.
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`
`
`2
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`

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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
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`Asserted Patents. Except as expressly stated, RJRV denies the remaining allegations of Paragraph
`
`3.
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`4.
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`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
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`patent”); 9,901,123 (“the ’123 patent”); and 9,930,915 (“the ’915 patent”). Counterclaim
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`Defendants admit that proceedings regarding the ’238, ’123, and ’915 patents have been stayed
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`pursuant to 28 U.S.C. § 1659. Except as expressly stated, Counterclaim Defendants deny the
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`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
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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, 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 S.A.
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`is organized under the laws of Switzerland with its principal place of business located at Quai
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`Jeanrenaud 3, 2000 Neuchâtel, Switzerland.
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`JURISDICTION AND VENUE
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`8.
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`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
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`have committed any acts that give rise to PMP’s causes of action for patent infringement.
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`9.
`
`10.
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`11.
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`Denied.
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`Denied.
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`Counterclaim Defendants admit that, in their Amended Complaint, they allege that
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`PMP infringes Counterclaim Defendants’ U.S. Patent Nos. 9,814,268; 10,492,542; 9,839,238;
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`9,901,123; and 9,930,915. Except as expressly stated, Counterclaim Defendants deny the
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`remaining allegations of Paragraph 11.
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`THE PMP ASSERTED PATENTS
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`12.
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`Counterclaim Defendants admit that Exhibit A to PMP’s answer and counterclaims
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`purports to be a copy of U.S. Patent No. 9,814,265, the content of which speaks for itself.
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`Counterclaim Defendants are without knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations contained in Paragraph 12 and, on that basis, deny them.
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`13.
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`Counterclaim Defendants admit that Exhibit B to PMP’s answer and counterclaims
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`purports to be a copy of U.S. Patent No. 10,555,556, the content of which speaks for itself.
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`Counterclaim Defendants are without knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations contained in Paragraph 13 and, on that basis, deny them.
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`4
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`14.
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`Counterclaim Defendants admit that Exhibit C to PMP’s answer and counterclaims
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`purports to be a copy of U.S. Patent No. 10,104,911, the content of which speaks for itself.
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`Counterclaim Defendants are without knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations contained in Paragraph 14 and, on that basis, deny them.
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`15.
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`The statements in Paragraph 15 set forth PMP’s purported characterization of its
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`alleged claims and rights and, as such, require no response from Counterclaim Defendants. To the
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`extent that PMP intends to make any allegations against Counterclaim Defendants in Paragraph
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`15, Counterclaim Defendants deny them.
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`16.
`
`Denied.
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`COUNTERCLAIM I: INFRINGEMENT OF U.S. PATENT NO. 9,814,265
`(AGAINST RJRV)
`
`17.
`
`18.
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`19.
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`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 16.
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`Denied.
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`RJRV admits that Claim 1 of the ’265 patent recites a “vaporizer device for
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`vaporizing a substance containing at least one active and/or aroma material, comprising.” RJRV
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`cannot confirm the source, accuracy, or completeness of the images or annotations in Paragraph
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`19 and thus lacks knowledge or information sufficient to form a belief about the truth of any
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`allegations contained therein and, on that basis, denies them. RJRV further responds that Paragraph
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`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
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`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
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`allegations against RJRV in Paragraph 19, RJRV denies them.
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`5
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`20.
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`RJRV admits that Claim 1 of the ’265 patent recites “a mouthpiece, having at least
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`one fluid inlet and at least one fluid outlet.” RJRV cannot confirm the source, accuracy, or
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`completeness of the images or annotations in Paragraph 20 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
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`that basis, denies them. RJRV further responds that Paragraph 20 contains legal conclusions to
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`which no answer is required. To the extent that an answer is required, RJRV denies the statements
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`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,
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`2021. To the extent that PMP intends to make any other allegations against RJRV in Paragraph
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`20, RJRV denies them.
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`21.
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`RJRV admits that Claim 1 of the ’265 patent recites “a heating device, configured
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`to be connected to the mouthpiece.” RJRV cannot confirm the source, accuracy, or completeness
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`of the images or annotations in Paragraph 21 and thus lacks knowledge or information sufficient
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`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 21 contains legal conclusions to which no answer is
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`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 served March 24, 2021. To the extent that
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`PMP intends to make any other allegations against RJRV in Paragraph 21, RJRV denies them.
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`22.
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`RJRV admits that Claim 1 of the ’265 patent recites “a thermal resistor comprising
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`a metallic foil or a thin sheet in a shape of a dual coil and/or sinuous line, having two ends and
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`dimensions substantially the same as a cross-section of a cigarette or a cigar, wherein interspaces
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`of the shape are configured to allow a flow of fluid therethrough.” RJRV cannot confirm the
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`6
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`source, accuracy, or completeness of the images or annotations in Paragraph 22 and thus lacks
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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 22 contains legal
`
`conclusions to which no answer is required. To the extent that an answer is required, RJRV denies
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`the statements and allegations in Paragraph 22 and refers to its written discovery responses and to
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`the Rebuttal Expert Report of Dr. Jeffrey C. Suhling Regarding U.S. Patent No. 9,814,265 served
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`March 24, 2021. To the extent that PMP intends to make any other allegations against RJRV in
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`Paragraph 22, RJRV denies them.
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`23.
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`RJRV admits that Claim 1 of the ’265 patent recites “at least one contact tab
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`including a first contact tab and a second contact tab being connected to respective opposed ends
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`of the dual coil and/or sinuous line of the thermal resistor, the first contact tab and the second
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`contact tab not being in direct contact with each other.” RJRV cannot confirm the source,
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`accuracy, or completeness of the images or annotations in Paragraph 23 and thus lacks knowledge
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`or information sufficient to form a belief about the truth of any allegations contained therein and,
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`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 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
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`23, RJRV denies them.
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`24.
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`RJRV admits that Claim 1 of the ’265 patent recites “at least one vaporizer
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`membrane disposed in contact with the thermal resistor and being permeable to the flow of fluid,
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`and which is wetted or can be wetted with the substance containing the at least one active and/or
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`7
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`aroma material.” RJRV cannot confirm the source, accuracy, or completeness of the images or
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`annotations in Paragraph 24 and thus lacks knowledge or information sufficient to form a belief
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`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
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`responds that Paragraph 24 contains legal conclusions to which no answer is required. To the extent
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`that an answer is required, RJRV denies the statements and allegations in Paragraph 24 and refers
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`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.
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`25.
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`RJRV admits that Claim 1 of the ’265 patent recites “the thermal resistor and the at
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`least one vaporizer membrane are arranged orthogonally or at an angle to a direction of the flow
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`of fluid in the mouthpiece.” RJRV cannot confirm the source, accuracy, or completeness of the
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`images or annotations in Paragraph 25 and thus lacks knowledge or information sufficient to form
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`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 25 contains legal conclusions to which no answer is required. To
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`the extent that an answer is required, RJRV denies the statements and allegations in Paragraph 25
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`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 25, RJRV denies them.
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`26.
`
`27.
`
`28.
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`Denied.
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`Denied.
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`Based on its investigation to date, Reynolds states that its first awareness of the
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`’265 patent or corresponding U.S. Patent Publication No. 2014/0305454 may have occurred
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`8
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` Reynolds otherwise denies the allegations
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`of this paragraph.
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`29.
`
`30.
`
`31.
`
`Denied.
`
`Denied.
`
`Denied.
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`COUNTERCLAIM II: INFRINGEMENT OF U.S. PATENT NO. 10,555,556
`(AGAINST RJRV)
`
`32.
`
`33.
`
`34.
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`RJRV reasserts and incorporates by reference its responses to Paragraphs 1 to 31.
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`Denied.
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`RJRV admits that Claim 1 of the ’556 patent recites “a cartridge for use in an
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`aerosol-generating system, comprising.” RJRV cannot confirm the source, accuracy, or
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`completeness of the images or annotations in Paragraph 34 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
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`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 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
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`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
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`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
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`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
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`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.
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`36.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a first part of the liquid storage
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`portion comprising a first capillary material, provided in a vicinity of the opening of the housing.”
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`RJRV cannot confirm the source, accuracy, or completeness of the images or annotations in
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`Paragraph 33 and thus lacks knowledge or information sufficient to form a belief about the truth
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`of any allegations contained therein and, on that basis, denies them. RJRV further responds that
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`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
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`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 33, RJRV denies them.
`
`37.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a second capillary material in
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`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
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`annotations in Paragraph 37 and thus lacks knowledge or information sufficient to form a belief
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`about the truth of any allegations contained therein and, on that basis, denies them. RJRV further
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`responds that Paragraph 37 contains legal conclusions to which no answer is required. To the extent
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`that an answer is required, RJRV denies the statements and allegations in Paragraph 37 and refers
`
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`10
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`to its written discovery responses and to the Responsive Expert Report of Kelly R. Kodama
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`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.
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`38.
`
`RJRV admits that Claim 1 of the ’556 patent recites “a second part of the liquid
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`storage portion comprising a container configured to hold the liquid aerosol-forming substrate and
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`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
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`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 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.
`
`39.
`
`40.
`
`41.
`
`Denied.
`
`Denied.
`
`Denied.
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`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.
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`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
`
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`11
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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 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.”
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`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
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`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
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`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 45, RJRV denies them.
`
`46.
`
`RJRV admits that Claim 1 of the ’911 patent recites “leakage prevention means
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`configured to prevent or reduce leakage of liquid aerosol condensate from the aerosol generating
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`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
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`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
`
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`12
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`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
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`end, and a longitudinal direction extending between the open end and the closed end.” RJRV
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`admits that Claim 1 of the ’911 patent further recites “wherein the at least one cavity has a largest
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`cross-sectional dimension x taken along a cross-section of the cavity in a direction perpendicular
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`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 47 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 47, RJRV denies them.
`
`48.
`
`49.
`
`50.
`
`51.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Based on its investigation to date, Reynolds states that its first awareness of the
`
`’911 patent or corresponding U.S. Patent Publication No. 2013/0306064 may have occurred
`
`
`
`
`
`
`
`13
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 14 of 21 PageID# 21372
`
`
`
`
`
`
`
`
`
`
`
` Reynolds otherwise denies the allegations of this paragraph.
`
`52.
`
`53.
`
`54.
`
`Denied.
`
`Denied.
`
`Denied.
`
`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.
`
`56.
`
`Counterclaim Defendants’ Amended Complaint alleges that PMP has infringed and
`
`is currently infringing “one or more claims of the ’268 patent (including claim 16)” by importing,
`
`selling, offering for sale, and/or distributing the IQOS system in the United States. Dkt. 52 at ¶ 44.
`
`Except as expressly stated, Counterclaim Defendants deny the remaining allegations of Paragraph
`
`56.
`
`57.
`
`58.
`
`59.
`
`Denied.
`
`Denied.
`
`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.
`
`
`
`14
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 15 of 21 PageID# 21373
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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,
`
`Counterclaim Defendants deny the remaining allegations of Paragraph 61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`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.
`
`
`
`15
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 16 of 21 PageID# 21374
`
`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.
`
`74.
`
`75.
`
`76.
`
`Denied.
`
`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.
`
`
`
`16
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 17 of 21 PageID# 21375
`
`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.
`
`DENIAL OF ANY REMAINING ALLEGATIONS
`
`Except as specifically admitted herein, Counterclaim Defendants deny any remaining
`
`allegations in PMP’s counterclaims.
`
`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.
`
`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
`
`The counterclaims fail to state a claim upon which relief can be granted.
`
`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.
`
`
`
`17
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 815 Filed 08/11/21 Page 18 of 21 PageID# 21376
`
`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 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
`(Preclusion of Costs)
`
`PMP is barred under 35 U.S.C. § 288 from recovering costs associated with its action.
`
`SIXTH AFFIRMATIVE DEFENSE
`(Ensnarement)
`
`PMP’s claims are barred or limited in whole or in part by the doctrine of ensnarement.
`
`SEVENTH AFFIRMATIVE DEFENSE
`(No Injunctive Relief)
`
`PMP is not entitled to injunctive relief as it has, at a minimum, an adequate remedy at law
`
`upon any finding of infringement and