UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN DISPOSABLE VAPORIZER
`DEVICES
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`Inv. No. 337-TA-1410
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`ORDER NO. 21:
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`DENYING COMPLAINANTS’ MOTION IN LIMINE NO. 1
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`(September 25, 2024)
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`On September 24, 2024, Complainants RAI Strategic Holdings, Inc. (“RAI”), R.J.
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`Reynolds Vapor Company (“RJRV”), R.J. Reynolds Tobacco Company (“RJRT”), and RAI
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`Services Company (“RAISC”) (collectively, “Complainants”) filed Motion in Limine No. 1.
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`(hereinafter, “Mot.”; Mot. Docket No. 1410-004). On September 25, 2024, Respondents SV3
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`LLC d/b/a Mi-One Brands; Breeze Smoke, LLC, and Dongguan (Shenzhen) Shikai Technology
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`Co., Ltd.; Bidi Vapor, LLC; Pastel Cartel, LLC, American Vape Company, LLC, and Affiliated
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`Imports, LLC; Shenzhen Kangvape Technology Co., Ltd.; Shenzhen Pingray Technology;
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`Shenzhen Yanyang Technology Co., Ltd.; Shenzhen IVPS Technology Co., Ltd.; TheSy, LLC
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`d/b/a Element Vape; Maduro Distributors d/b/a The Loon; Price Point Distributors, Inc. d/b/a
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`Price Point NY; Shenzhen Han Technology Co., Ltd.; Zhuhai Qisitech Co., Ltd., Guangdong
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`Qisitech Co., Ltd.; Guangdong Fuwo Intelligent Manufacturing Co., Ltd., and Guangdong
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`Cellular Workshop Electronics Technology Co., Ltd. (collectively, “Respondents”) filed an
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`opposition (hereinafter, “Resp. Opp.”; EDIS Doc. ID 833188). The undersigned also heard
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`argument on Complainants’ Motion at the pre-hearing conference on September 25, 2024.
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`See Order No. 20. The Motion indicated that Staff would take a position after reviewing the
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`papers; on the record at the pre-hearing conference, Staff indicated it opposed the relief
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`requested in Complainants’ Motion.
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`Complainants move in limine “to exclude Section V.A.4.c (spanning pages 147-153) and
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`Section V.A.5 (spanning pages 157-165) of Respondents’ Prehearing Brief and to preclude
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`Respondents from introducing new arguments, evidence, or testimony that was not previously
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`disclosed during discovery.” Mot. at 1-2. The identified portions of the pre-hearing brief address
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`(1) alleged invalidity of U.S. Patent No. 11,925,202 (“the ’202 patent”) on written description
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`grounds; (2) economic domestic industry; and (3) technical domestic industry. Id. at 3-5.
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`Complainants argue that Respondents’ pre-hearing brief impermissibly expands upon the
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`written description invalidity theory disclosed in its contentions and during expert discovery.
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`Mot. at 4-5. Specifically, Complainants contend that Respondents’ written description theory
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`was “limited to the argument that the ’202 patent’s claims had to require the use of ‘solid
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`tobacco,’” but that the identified portions of the pre-hearing brief argue that “the ’202 Patent
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`claims are invalid under Section 112 if they do not require the claimed device to include either
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`solid or liquid tobacco.” Mot. at 5. As to domestic industry, Complainants contend that
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`Respondents’ contentions and opposition to the temporary enforcement motion—which
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`Complainants state the parties agreed would be part of Respondents’ contentions—did not raise
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`any challenge to the technical or economic prong of domestic industry. Mot. at 8. Complainants
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`argue that Respondents’ pre-hearing brief—which challenges the significance of the identified
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`economic investments and charges that they are unrelated to “articles protected by the patent”—
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`are “completely new arguments” for which Complainants “has had no opportunity to marshal
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`evidence to meet.” Mot. at 9. Complainants similarly allege that the arguments regarding
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`technical domestic industry in Respondents’ pre-hearing brief—that the DI Products allegedly
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`are not a “smoking article” and lack a “storage compartment”—are similarly new and should be
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`struck. Mot. at 9. At the pre-hearing conference, Complainants stated that it was their position
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`that by not raising a challenge to domestic industry in its contentions and opposition to the
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`temporary enforcement motion, Respondents had “forfeited” the right to cross-examination or
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`argument on domestic industry.
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`Respondents argue that as to written description, “Respondents’ position is and always
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`has been that the asserted claims of the ’202 Patent are invalid for lack of written description
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`because, according to [Complainants’] infringement theory, they cover devices that do not
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`contain any tobacco, despite the inventors providing support in the specification for only devices
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`that include tobacco.” Resp. Opp. at 2. Respondents state that their expert opined that the
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`specification is limited to solid tobacco, and that his testimony at the hearing will be consistent
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`with the opinions expressed in his report. Resp. Opp. at 2-4. Respondents also argue that they did
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`not waive challenges to domestic industry, including because Respondents raised challenges in
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`their responses to the complaint, and because at least one set of Respondents, the Pastel
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`Respondents, served interrogatories on August 19, 2024 “reserv[ing] [their] right to dispute
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`whether the facts presented by Complainants are relevant to and/or satisfy the economic prong
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`of the domestic industry requirement.” Resp. Opp. at 5 (citing JX-0015C at 27 (first alteration
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`added)). Respondents also contend that their refusal to enter into stipulations regarding domestic
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`industry indicate their preservation of challenges to the sufficiency of Complainants’ domestic
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`industry showing. Id. at 6 n.3. Respondents also allege that their primary challenge is a “legal
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`issue” related to whether the identified investments are “‘relevant’ to the domestic industry
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`requirement.” Id. at 6-7. Further, Respondents contend that certain precedent upon which they
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`rely was not publicly available until after August 13, 2024, and that Respondents did not have
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`the information to challenge significance until after the deposition of a fact witness on September
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`18, 2024. Id. at 7-8. As to technical domestic industry, Respondents argue that the challenge was
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`not waived because Respondents raised challenges in their responses to the complaint. Id. at 8-9.
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`At the pre-hearing conference, Staff contended that as to the written description issue,
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`any purported daylight between the “solid tobacco” and “tobacco” theories could be explored on
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`cross-examination. As to domestic industry, Staff submitted that Complainants did not appear to
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`be seeking to exclude any affirmative evidence or testimony, and that Staff did not believe it was
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`proper to limit the scope of cross-examination or to limit Respondents’ ability to argue or
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`comment on the weight of the evidence presented by Complainants.
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`As to the written description issue, upon review of the parties’ arguments and evidence,
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`including the arguments presented at the pre-hearing conference, the undersigned DENIES
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`Complainants’ requested exclusion. As Complainants apparently concede, Respondents’
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`contentions on written description were not limited to “solid tobacco.” Mot. at 7 (“Respondents
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`generically argued that ‘the ’202 patent’s specification demonstrates that the inventors only had
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`possession of a smoking article that contains tobacco.’”). Respondents’ expert Dr. Dean will be
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`limited to testimony within the scope of his expert report and deposition, and Respondents do not
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`appear to contest this. See Resp. Opp. at 4 (“Mr. [sic] Dean will testify consistent with the
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`opinions set forth in his expert report.”).
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`As to economic and technical domestic industry, Respondents do not dispute that their
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`experts did not opine on economic or technical domestic industry. See Mot. at 5; see generally
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`Resp. Opp. at 4-9. Respondents represented at the pre-hearing conference that they were not
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`seeking to introduce affirmative testimony or argument on domestic industry. The undersigned
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`will not, however, at this time preclude cross-examination of Complainants’ witnesses on
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`economic and technical domestic industry or strike portions of Respondents’ prehearing brief. It
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`is generally appropriate to allow Respondents to argue that Complainants have failed to meet
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`their burden of proof. See Certain Cellular Base Station Communication Equipment,
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`Components Thereof, and Prods. Containing the Same, Inv. No. 337-TA-1302, Order No. 22,
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`EDIS Doc. ID 786194 at 5 (Dec. 1, 2022) (“Ericsson’s prehearing brief points to alleged failures
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`of proof reflected in Dr. Steffes’ opinion, which is permissible.”); Certain Gas Spring Nailer
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`Prods. & Components Thereof, Inv. No. 337-TA-1082, Order No. 18, EDIS Doc. ID 655509 at 2
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`(Aug. 31, 2018) (“At any point in the Investigation, a respondent can assert that the complainant
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`failed to satisfy its burden of proof.”). To the extent that Complainants believe that arguments or
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`evidence cited by Respondents in post-hearing briefs are waived under the circumstances here,
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`however, they may renew the challenge in post-hearing briefing.
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`Accordingly, Complainants’ Motion is DENIED in accordance with the above.
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`This order has been issued with a confidential designation. Within seven days of the date
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`of this document, the parties must jointly submit a statement by email to
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`bhattacharyya337@usitc.gov, stating whether or not each party seeks to have any portion of this
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`document redacted from the public version. Should any party seek to have any portion of this
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`document redacted from the public version thereof, the parties shall attach to the statement a
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`copy of a joint proposed public version of this document indicated with red brackets any portion
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`asserted to contain confidential business information pursuant to Ground Rule 1.9. To the extent
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`possible, the proposed redacting should be made electronically, in a PDF of the issued order,
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`using the “Redact Tool” within Adobe Acrobat, wherein the proposed redactions are submitted
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`as “marked”but notyet “applied.” The parties’ submission concerning the public version ofthis
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`documentshould notbe filed with the Commission Secretary.
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`SO ORDERED.
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` Monica Bhattacharyya
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`Administrative Law Judge
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