Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 1 of 22 PageID# 228
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`RICHMOND DIVISION
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY
`
`Plaintiffs,
`
`v.
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA, INC.; ALTRIA GROUP, INC.;
`PHILIP MORRIS INTERNATIONAL INC.;
`and PHILIP MORRIS PRODUCTS S.A.
`
`Defendants.
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`
`Civil Action No. 1:20-cv-393
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`David M. Maiorana (VA Bar No. 42334)
`Ryan B. McCrum
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Facsimile: (216) 579-0212
`Email: dmaiorana@jonesday.com
`Email: rbmccrum@jonesday.com
`
`Anthony M. Insogna
`JONES DAY
`4655 Executive Drive
`Suite 1500
`San Diego, CA 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Email: aminsogna@jonesday.com
`
`Stephanie E. Parker
`JONES DAY
`1420 Peachtree Street, N.E.
`Suite 800
`Atlanta, GA 30309
`Telephone: (404) 521-3939
`Facsimile: (404) 581-8330
`Email: separker@jonesday.com
`
`John J. Normile
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: (212) 326-3939
`Facsimile: (212) 755-7306
`Email: jjnormile@jonesday.com
`
`Counsel for Plaintiffs
`RAI Strategic Holdings, Inc. and
`R.J. Reynolds Vapor Company
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 2 of 22 PageID# 229
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`Plaintiffs, RAI Strategic Holdings, Inc. (“RAI”) and R.J. Reynolds Vapor Company
`
`(“RJRV”) (collectively, “Plaintiffs”), for their Complaint against Altria Client Services LLC
`
`(“ACS”), Philip Morris USA, Inc. (“PM USA”), Altria Group, Inc. (“AGI”), Philip Morris
`
`International, Inc. (“PMI”), and Philip Morris Products S.A. (“PMP”) (collectively,
`
`“Defendants”) allege as follows:
`
`THE PARTIES
`
`1.
`
`RAI is a North Carolina corporation with its principal place of business located at
`
`401 North Main Street, Winston-Salem, N.C. RAI is the assignee and sole owner of U.S. Patent
`
`Nos. 8,314,591 (the “’591 patent”) attached hereto as Exhibit A, 9,814,268 (the “’268 patent”)
`
`attached hereto as Exhibit B, 9,839,238 (the “’238 patent”) attached hereto as Exhibit C,
`
`9,901,123 (the “’123 patent”) attached here to as Exhibit D, 9,930,915 (the “’915 patent”)
`
`attached hereto as Exhibit E, and 10,492,542 (the “’542 patent”) attached hereto as Exhibit F
`
`(collectively, the “Asserted Patents”).
`
`2.
`
`RAI is the assignee of, and has the right to enforce (including for past
`
`infringement), each of the Asserted Patents.
`
`3.
`
`RJRV is a North Carolina corporation with its principal place of business located
`
`at 401 North Main Street, Winston-Salem, N.C. RJRV is the exclusive licensee of the Asserted
`
`Patents.
`
`4.
`
`Upon information and belief, ACS is a Virginia corporation with offices at 6601
`
`West Broad Street, Richmond, Virginia 23230.
`
`5.
`
`Upon information and belief, PM USA is a Virginia corporation with offices at
`
`6601 West Broad Street, Richmond, Virginia 23230.
`
`
`
`2
`
`

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`
`6.
`
`Upon information and belief, AGI is a Virginia corporation with offices at 6601
`
`West Broad Street, Richmond, Virginia 23230.
`
`7.
`
`Upon information and belief, AGI is the ultimate parent entity of ACS and PM
`
`USA.
`
`8.
`
`Upon information and belief, PMI is a Virginia corporation with offices at 120
`
`Park Avenue, New York, New York 10017.
`
`9.
`
`10.
`
`Upon information and belief, PMI is the ultimate parent entity of PMP.
`
`Upon information and belief, PMP is a societe anonyme duly existing under the
`
`laws of Switzerland with a corporate address at Quai Jeanrenaud 3, 2000 Neuchâtel, Switzerland.
`
`JURISDICTION AND VENUE
`
`11.
`
`This action involves federal statutory questions and claims arising under the laws
`
`of the United States. This Court has jurisdiction over the subject matter of this action, without
`
`regard to the amount in controversy, pursuant to 35 U.S.C. § 271, et. seq. and 28 U.S.C. §§ 1331
`
`and 1338.
`
`12.
`
`Personal jurisdiction exists over the Defendants ACS, PM USA, AGI, and PMI
`
`because they are Virginia corporations and ACS, PM USA, and AGI have their principal places
`
`of business in this District.
`
`13.
`
`As a foreign corporation, personal jurisdiction exists over PMP at least by virtue
`
`of Federal Rule of Civil Procedure 4(k)(2). In addition, personal jurisdiction exists over PMP
`
`based on the fact that, upon information and belief, it is responsible for causing the tort of patent
`
`infringement to occur in Virginia and this District.
`
`14.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b). Defendants
`
`ACS, PM USA, AGI, and PMI are Virginia corporations, and thus reside in the District. In
`
`
`
`3
`
`

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`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 4 of 22 PageID# 231
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`addition, a substantial part of the events or omissions giving rise to this claim occur in the
`
`District. Finally, ACS, PM USA, and AGI have regular and established places of business in
`
`the District and, upon information and belief, have committed, induced, or contributed to acts of
`
`infringement in this District. One or more of the Defendants has been selling and continues to
`
`sell the infringing products in this District.
`
`15.
`
`Venue is proper as to PMP by virtue of 28 U.S.C. §§ 1391(c)(3) and 1400(b)
`
`because it is a foreign corporation.
`
`FACTUAL BACKGROUND
`
`THE ASSERTED PATENTS
`
`16.
`
`The ’591 patent is directed to a charging case for a personal vaporizing inhaler.
`
`The United States Patent and Trademark Office (“USPTO”) issued the ’591 patent on November
`
`20, 2012, with one independent claim, which recites:
`
`1. A case, comprising:
`
`a first cradle adapted to hold a personal vaporizing unit, said personal
`vaporizing unit having dimensions approximating a smoking article;
`
`a battery;
`
`a first contact and a second contact, said first contact and said second contact
`forming an electrical contact with said personal vaporizing unit when said personal
`vaporizing unit is held by said first cradle, said first contact and said second contact
`conducting charge from said battery to said personal vaporizing unit to charge said
`personal vaporizing unit.
`
`17.
`
`The ’268 patent is directed to a tobacco-containing smoking article. The USPTO
`
`issued the ’268 patent on November 4, 2017, with two independent claims, including Claim 16,
`
`which recites:
`
`16. A tobacco-containing, electrically-powered smoking article comprising:
`
`
`
`4
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 5 of 22 PageID# 232
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`(a) a tubular outer housing having a mouth-end and an end distal to the mouth-
`end, the housing comprising an opening adapted for intake of air into the smoking
`article;
`
`(b) an electrical power source within the outer housing;
`
`(c) a controller adapted for regulating current flow through the heater;
`
`(d) a rod-shaped carrier device removably engaged with the mouth-end of the
`outer housing and comprising a tubular mouth-end piece and a tubular cartridge
`with two open ends allowing air to flow therethrough, wherein the cartridge
`includes a tobacco material and an aerosol-generating material; and
`
`(e) an electrical resistance heater in contact with the tobacco material and the
`aerosol-generating material and adapted for heating at least a portion of the tobacco
`material and the aerosol-generating material.
`
`18.
`
`The ’238 patent is directed to a control body for an electronic smoking article.
`
`The USPTO issued the ’238 patent on December 12, 2017, with two independent claims,
`
`including Claim 19, which recites:
`
`19. A control body for an electronic smoking article, the control body comprising:
`
`an elongated shell with an interior, a proximal end, and an opposing distal end;
`
` a
`
` coupler formed of an elongated body having a first end that forms a wall and that engages
`the proximal end of the shell and a second end that comprises a cavity configured to
`releasably engage a cartridge, wherein the coupler includes a pressure channel extending
`between a first end that is in fluid communication with the cavity and a second end that
`opens through the wall at the first end of the coupler, wherein the coupler includes an air
`inlet channel in fluid communication with the cavity and an air inlet aperture in an exterior
`surface of the coupler, and wherein the coupler has a longitudinal axis extending from the
`first end to the second end, and the first end of the pressure channel is spatially separated
`from the air inlet channel relative to the longitudinal axis of the coupler; and
`
`
`Plaintiffs have virtually marked and continue to virtually mark the ’238 patent at
`
`www.vusevapor.com/patents, pursuant to 35 U.S.C. § 287(a).
`
`20.
`
`The ’123 patent is directed to a smoking article that includes an electrical power
`
`source that powers a heater to heat aerosol-forming material in a disposable portion of the
`
`
`
`5
`
` a
`
`
`19.
`
` microprocessor.
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 6 of 22 PageID# 233
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`smoking article. The USPTO issued the ’123 patent on February 27, 2018, with three
`
`independent claims, including Claim 27, which recites:
`
`27. An electrically-powered, aerosol-generating smoking article comprising:
`
`an electrical power source in the form of a battery within a tubular outer housing
`having a mouth-end and an end distal to the mouth-end;
`
`at least one electrical resistance heater powered by said electrical power source,
`wherein at least a portion of the resistance heating element is elongated and
`extending downstream toward the mouth-end of the outer housing, the elongated
`portion of the resistance heating element positioned proximal to the center of the
`outer housing;
`
`a controller within the tubular outer housing and adapted for regulating current
`flow through the electrical resistance heater; and
`
`a cigarette-type device removably engaged with the mouth-end of the tubular
`outer housing and comprising a tobacco segment circumscribed by a wrapping
`material and comprising a tobacco material and an aerosol-forming material,
`wherein the elongated portion of the resistance heating element extends into the
`tobacco segment when the cigarette-type device is engaged with the mouth-end of
`the outer housing, such that during draw, aerosol-forming material can be
`volatilized to produce a visible mainstream aerosol incorporating tobacco
`components or tobacco-derived components that can be drawn into the mouth of
`the user of the smoking article.
`
`21.
`
`Plaintiffs have virtually marked and continue to virtually mark the ’123 patent at
`
`www.vusevapor.com/patents, pursuant to 35 U.S.C. § 287(a).
`
`22.
`
`The ’915 patent is directed to smoking articles and use thereof for yielding
`
`inhalation materials. The USPTO issued the ’915 patent on April 3, 2018, with one independent
`
`claim, which recites:
`
`1. A reusable control unit for use with a disposable smoking article, the reusable
`control unit comprising a control housing including:
`
`a receiving end for receiving an engaging end of the disposable smoking article
`and having an electrical energy source that includes a projection extending
`outwardly therefrom and that includes a component that forms an electrical
`connection with electrical contacts on a separate electrical heating member; and
`
`
`
`6
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 7 of 22 PageID# 234
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`a control unit section that houses a power source, a switching component that
`actuates flow of electrical current from the electrical energy source to the electrical
`heating member, and a flow regulating component that regulates a previously
`initiated current flow from the electrical energy source to the electrical heating
`member, wherein the component that forms an electrical connection with the
`electrical contacts is located on the projection.
`
`23.
`
`Plaintiffs have virtually marked and continue to virtually mark the ’915 patent at
`
`www.vusevapor.com/patents, pursuant to 35 U.S.C. § 287(a).
`
`24.
`
`The ’542 patent is directed to smoking articles and use thereof for yielding
`
`inhalation materials. The USPTO issued the ’542 patent on December 3, 2019, with two
`
`independent claims, including claim 1, which recites:
`
`1. A smoking article for receiving a disposable aerosol forming substance, the
`smoking article comprising:
`
` a
`
` housing having a proximal end for receiving the disposable aerosol forming
`substance and an opposite distal end;
`
` a
`
` power source arranged within the housing adjacent to the distal end;
`
` a
`
` receiving chamber formed at the proximal end of the housing and having an
`opening for receiving the disposable aerosol forming substance;
`
` a
`
` heating projection extending at least partially in the receiving chamber towards
`the proximal end of the housing and terminating at a free end which is configured
`to be inserted into the disposable aerosol forming substance for heating the
`disposable aerosol forming substance, the heating projection comprising:
`
`
`a heating member comprising an electrically resistive metal which is configured
`to heat the disposable aerosol forming substance;
`
`an electrical connector for providing a flow of electricity to the heating member
`for heating the heating member; and
`
` a
`
` control circuit positioned within the housing between the power source and the
`heating projection and connecting the heating member of the heating projection to
`the power source.
`
`
`
`
`7
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 8 of 22 PageID# 235
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`THE ACCUSED PRODUCTS
`
`25.
`
`Defendants have developed a heat-not-burn tobacco system called IQOS®. The
`
`IQOS® system includes an electrically powered smoking article that comprises an IQOS® holder,
`
`a disposable tobacco stick, and a charger.
`
`26.
`
`Defendants use, offer to sell, and sell the IQOS® system in United States, and
`
`import that system into the United States. For example, Defendants use, offer to sell, and sell the
`
`IQOS® system from a store that they own and operate in Atlanta, Georgia, since at least October
`
`2019, and from a store they own in this District (on information and belief, at 3402 W. Cary St.
`
`in the Carytown district of Richmond) since approximately November 2019. In addition,
`
`Defendants have sold the infringing tobacco sticks to retailers in both Atlanta, Georgia and in
`
`this District, which retailers sell those products to consumers. The packaging for the IQOS®
`
`device Defendants sell in the United States recites: “Manufactured for Philip Morris USA,
`
`Richmond, VA. Made in Malaysia.” The packaging for the disposable tobacco sticks states:
`
`“Mfd. for Philip Morris USA, Richmond, VA. Made in Italy.”
`
`27.
`
`The IQOS® holder is a rechargeable and reusable power unit that includes a
`
`casing or housing, control electronics, a battery as its electrical source, and a heating blade that
`
`heats using a regulated current flow from the battery to produce heat through resistance. The
`
`heater can be turned on using a pushbutton activated switch and turns off after a certain amount
`
`of time. The IQOS® holder has an end for receiving the tobacco stick. It is a tubular product,
`
`and its dimensions approximate the dimensions of a smoking article. The IQOS® holder has a
`
`circuit board that includes a projection extending outwardly therefrom and that includes a
`
`component that forms an electrical connection with electrical contacts on a separate electrical
`
`heating member.
`
`
`
`8
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 9 of 22 PageID# 236
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`28.
`
`The disposable tobacco stick is rod-shaped and is specially designed and intended
`
`for exclusive use with the IQOS® holder. The tobacco stick contains specially processed tobacco
`
`made from tobacco powder that has been reconstituted into sheets following the addition of
`
`water, glycerin, guar gum, and cellulose fibers. The IQOS® tobacco stick is sold in different
`
`flavors, including regular and menthol flavors (Smooth Menthol with 1.25 mg menthol per stick
`
`and Fresh Menthol with 2.5 mg menthol per stick) to satisfy different consumer preferences.
`
`The structure and operation across the variety of sticks is otherwise the same. The IQOS®
`
`tobacco stick is specifically designed to function with the IQOS® holder to produce an aerosol.
`
`Users inhale through the mouth-end of a filter on the IQOS® tobacco stick. The IQOS® tobacco
`
`stick is also marketed in conjunction with the Marlboro™ brand and is sometimes referred to as
`
`a HeatStick or Marlboro™ HeatStick.
`
`29.
`
`The IQOS® system also includes an IQOS® charger for charging and storing the
`
`IQOS® holder after each use and an AC power adaptor for recharging the charger. The charger
`
`contains its own battery that contacts the IQOS® holder for charging.
`
`30.
`
`Neither the IQOS® holder, nor the tobacco stick, nor the IQOS® charger is a
`
`staple article or commodity of commerce suitable for substantial non-infringing use. Instead,
`
`they are authorized by the United States Food and Drug Administration (“FDA”) solely and
`
`exclusively for use as part of the IQOS® system and are marketed and sold by Defendants solely
`
`and exclusively for use as part of the IQOS® system.
`
`31.
`
`The IQOS® holder constitutes a material part of the invention claimed in all the
`
`Asserted Patents. The IQOS® charger constitutes a material part of the invention claimed in at
`
`least the ’591 patent. The tobacco stick constitutes a material part of the invention claimed in at
`
`least the ’268 and ’123 patents.
`
`
`
`9
`
`

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`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 10 of 22 PageID# 237
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`32.
`
`Defendants sell the IQOS® charger, IQOS® holder, and tobacco stick in a kit that
`
`also contains a tool designed for cleaning the IQOS® holder. The IQOS® tobacco sticks are also
`
`sold separately, in, for example, packs of 20 for exclusive use with the IQOS® system.
`
`33.
`
`Defendants are offering for sale and selling the IQOS® system with a User Guide
`
`and Quick Start Guide, both of which instruct end users to operate the IQOS® system in a way
`
`that infringes the Asserted Patents.
`
`34.
`
`Upon information and belief, Defendants’ customers, distributors, or resellers, as
`
`well as end users of the IQOS® system demonstrate or operate the IQOS® system in the United
`
`States in accordance with the IQOS® User Guide and Quick Start Guide that are included with
`
`the IQOS® system.
`
`35.
`
`The IQOS® system works as follows: The user inserts a tobacco stick into the
`
`holder and turns on the device by means of the pushbutton activated switch. The switch signals
`
`to the control electronics, which cause the battery to produce and supply electrical current to the
`
`heating blade. The blade heats the aerosol-forming materials in the tobacco stick, generating an
`
`inhalable nicotine-containing aerosol for the user. The temperature of the heating blade is
`
`controlled so that its operating temperature does not exceed 350°C. This allows for heating of
`
`the tobacco constituents below the level of combustion, while producing a visible aerosol
`
`containing water, glycerin and nicotine.
`
`36.
`
`Upon information and belief, ACS is licensed to distribute, offer to sell, and sell
`
`the IQOS® system and the corresponding tobacco sticks in the U.S., and it started doing so at
`
`least as early as October 2019.
`
`37.
`
`Upon information and belief, PM USA is licensed to distribute, offer to sell, and
`
`sell the IQOS® system and the corresponding tobacco sticks in the U.S., and it started doing so at
`
`
`
`10
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 11 of 22 PageID# 238
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`least as early as October 2019. According to packaging materials submitted to the FDA and sold
`
`in the United States, the IQOS® system and components thereof are manufactured for PM USA.
`
`38.
`
`Upon information and belief, PMI developed, and continues to develop, the
`
`IQOS® system.
`
`39.
`
`Upon information and belief, PMP is the applicant for the pre-market tobacco
`
`application (“PMTA”) for the IQOS® system and is responsible for and controls the worldwide
`
`design, manufacturing and marketing of the IQOS® system, either directly or indirectly through
`
`its related entities, including manufacturing of the IQOS® system or components thereof in one
`
`or more of Switzerland, Italy, China, Malaysia, and/or Singapore for importation into the United
`
`States.
`
`THE IMPORTATION, SALE, OFFER FOR SALE, AND DISTRIBUTION OF IQOS®
`DEVICES
`
`40.
`
`Upon information and belief, on or around May 24, 2017, PMP, in concert with
`
`the other Defendants, filed PMTAs with FDA seeking approval to offer for sale and sell the
`
`IQOS® system in the United States.
`
`41.
`
`On or around April 30, 2019, FDA announced that it had authorized the
`
`marketing and sale of the IQOS® system in the United States.
`
`42.
`
`ACS and PM USA started importing, selling, offering for sale, and distributing
`
`IQOS® products in the United States at least as early as October 2019.
`
`43.
`
`Upon information and belief, PMP manufactures portions or all of the IQOS®
`
`system for ACS and PM USA, and the IQOS® system is imported into the United States for sale
`
`and offer for sale after importation.
`
`
`
`11
`
`

`

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`
`DEFENDANTS KNOW OF THE ASSERTED PATENTS, KNOW AND SPECIFICALLY
`INTEND THAT THE IQOS® PRODUCTS INFRINGE THE ASSERTED PATENTS, AND
`KNOW THAT THE IQOS® PRODUCTS ARE ESPECIALLY MADE OR ESPECIALLY
`ADAPTED FOR USE IN INFRINGING THE ASSERTED PATENTS
`
`44.
`
`Upon information and belief, Defendants know of the Asserted Patents. First,
`
`upon information and belief, Defendants regularly survey the patent literature—and especially
`
`that of their competitors—for relevant patents and have encountered the Asserted Patents.
`
`Second, this complaint informs Defendants about the Asserted Patents. Third, some of the
`
`Defendants have cited the Asserted Patents during prosecution of their own patents. ACS cited
`
`the ’591 patent while prosecuting its U.S. Patent No. 10,123,566 and its U.S. Design Patent No.
`
`D844,221 (the “’221 patent”); it cited U.S. Patent No. 7,726,320 (the “’320 patent”), the ancestor
`
`of both the ’268 and ’123 patents, during prosecution of its ’221 patent and its U.S. Patent No.
`
`10,258,087 (the “’087 patent”); and it cited U.S. Patent No. 9,078,473 (the “’473 patent”), the
`
`parent of the ’915 patent, during prosecution of its U.S. Patent No. 10,278,424. PMP cited both
`
`the ’320 and ’473 patents during prosecution of its U.S. Patent No. 10,206,428; and it cited U.S.
`
`Patent publication No. 2017/0020200, which corresponds to the ’123 patent, during prosecution
`
`of its U.S. Patent No. 9,986,767. Defendant ACS cited the U.S. publication of the ’238 patent
`
`(U.S. Patent Application Publication No. 2015/0245658) during prosecution of its U.S. Patent
`
`Nos. D870,375 and 10,021,910. Moreover, Plaintiffs have virtually marked and continue to
`
`virtually mark the ’123, ’915, and ’238 patents.
`
`45.
`
`Upon information and belief, Defendants know and specifically intend that their
`
`actions—including providing the User Guide and Quick Start Guide with their products—induce
`
`actual infringement of the Asserted Patents. First, upon information and belief, Defendants
`
`analyze whether they have freedom to operate and therefore have considered whether their
`
`
`
`12
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`

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`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 13 of 22 PageID# 240
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`actions induce others to infringe the Asserted Patents. Second, this complaint informs
`
`Defendants that their actions induce infringement.
`
`46.
`
`Upon information and belief, Defendants know that each of the elements in the
`
`IQOS® system is especially made or especially adapted for use in an infringement of the
`
`Asserted Patents and is not a staple article or commodity of commerce suitable for substantial
`
`noninfringing use. First, upon information and belief, Defendants analyze whether they have
`
`freedom to operate and therefore have considered whether their actions contribute to others
`
`infringing the Asserted Patents. Second, this complaint informs Defendants of their
`
`infringement.
`
`COUNT ONE
`INFRINGEMENT OF U.S. PATENT NO. 8,314,591
`
`47.
`
`Plaintiffs reallege, adopt, and incorporate by reference the allegations included
`
`within paragraphs 1 through 46 as if fully set forth herein.
`
`48.
`
`The USPTO thoroughly examined the ’591 patent. It is currently in force and
`
`presumed valid.
`
`49.
`
`Defendants import, sell, offer for sale, and/or distribute the IQOS® system in the
`
`United States.
`
`50.
`
`Upon such importation, sale, offer for sale, and/or distribution in the United
`
`States, Defendants directly infringe, induce others to infringe, and contribute to the infringement
`
`by others of at least claims 1, 2, and 7 of the ’591 patent under 35 U.S.C. § 271(a), (b), and (c) in
`
`this Judicial District and elsewhere.
`
`51.
`
`Plaintiffs have been and continue to be damaged by Defendants’ infringement of
`
`these claims.
`
`
`
`13
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`
`52.
`
`Plaintiffs have suffered and continue to suffer irreparable harm with no adequate
`
`remedy at law unless this Court enjoins Defendants and their agents, servants, employees,
`
`attorneys, representatives, and all others acting on their behalf from directly infringing, inducing
`
`infringement, and/or contributing to infringement of the ’591 patent.
`
`53.
`
`The balance of hardships favors an injunction, and such injunction would not
`
`disserve the public interest.
`
`54.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek enhanced damages under 35 U.S.C. § 284.
`
`55.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek attorneys’ fees and costs under 35 U.S.C. § 285.
`
`56.
`
`Therefore, Plaintiffs seek a judgment that Defendants directly infringe, induce
`
`infringement of, and contribute to infringement of at least claims 1, 2, and 7 of the ’591 patent by
`
`the importation, sale, offer for sale, and distribution in the United States of the IQOS® system.
`
`COUNT TWO
`INFRINGEMENT OF U.S. PATENT NO. 9,814,268
`
`57.
`
`Plaintiffs reallege, adopt, and incorporate by reference the allegations included
`
`within paragraphs 1 through 56 as if fully set forth herein.
`
`58.
`
`The USPTO thoroughly examined the ’268 patent. It is currently in force and
`
`presumed valid.
`
`59.
`
`Defendants import, sell, offer for sale, and/or distribute the IQOS® system in the
`
`United States.
`
`60.
`
`Upon such importation, sale, offer for sale, and/or distribution in the United
`
`States, Defendants directly infringe, induce others to infringe, and contribute to the infringement
`
`
`
`14
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 15 of 22 PageID# 242
`
`by others of at least claims 16 and 17 of the ’268 patent under 35 U.S.C. § 271(a), (b), and (c) in
`
`this Judicial District and elsewhere.
`
`61.
`
`Plaintiffs have been and continue to be damaged by Defendants’ infringement of
`
`these claims.
`
`62.
`
`Plaintiffs have suffered and continue to suffer irreparable harm with no adequate
`
`remedy at law unless this Court enjoins Defendants and their agents, servants, employees,
`
`attorneys, representatives, and all others acting on their behalf from directly infringing, inducing
`
`infringement, and/or contributing to infringement of the ’268 patent.
`
`63.
`
`The balance of hardships favors an injunction, and such injunction would not
`
`disserve the public interest.
`
`64.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek enhanced damages under 35 U.S.C. § 284.
`
`65.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek attorneys’ fees and costs under 35 U.S.C. § 285.
`
`66.
`
`Therefore, Plaintiffs seek a judgment that Defendants directly infringe, induce
`
`infringement of, and contribute to infringement of at least claims 16 and 17 of the ’268 patent by
`
`the importation, sale, offer for sale, and distribution in the United States of the IQOS® system.
`
`COUNT THREE
`INFRINGEMENT OF U.S. PATENT NO. 9,839,238
`
`67.
`
`Plaintiffs reallege, adopt, and incorporate by reference the allegations included
`
`within paragraphs 1 through 66 as if fully set forth herein.
`
`68.
`
`The USPTO thoroughly examined the ’238 patent. It is currently in force and
`
`presumed valid.
`
`
`
`15
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 16 of 22 PageID# 243
`
`69.
`
`Defendants import, sell, offer for sale, and/or distribute the IQOS® system in the
`
`United States.
`
`70.
`
`Upon such importation, sale, offer for sale, and/or distribution in the United
`
`States, Defendants directly infringe, induce others to infringe, and contribute to the infringement
`
`by others of at least claim 19 of the ’238 patent under 35 U.S.C. § 271(a), (b), and (c) in this
`
`Judicial District and elsewhere.
`
`71.
`
`Plaintiffs have been and continue to be damaged by Defendants’ infringement of
`
`these claims.
`
`72.
`
`Plaintiffs have suffered and continue to suffer irreparable harm with no adequate
`
`remedy at law unless this Court enjoins Defendants and their agents, servants, employees,
`
`attorneys, representatives, and all others acting on their behalf from directly infringing, inducing
`
`infringement, and/or contributing to infringement of the ’238 patent.
`
`73.
`
`The balance of hardships favors an injunction, and such injunction would not
`
`disserve the public interest.
`
`74.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek enhanced damages under 35 U.S.C. § 284.
`
`75.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek attorneys’ fees and costs under 35 U.S.C. § 285.
`
`76.
`
`Therefore, Plaintiffs seek a judgment that Defendants directly infringe, induce
`
`infringement of, and contribute to infringement of at least claim 19 of the ’238 patent by the
`
`importation, sale, offer for sale, and distribution in the United States of the IQOS® system.
`
`
`
`16
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 17 of 22 PageID# 244
`
`COUNT FOUR
`INFRINGEMENT OF U.S. PATENT NO. 9,901,123
`
`77.
`
`Plaintiffs reallege, adopt, and incorporate by reference the allegations included
`
`within paragraphs 1 through 76 as if fully set forth herein.
`
`78.
`
`The USPTO thoroughly examined the ’123 patent. It is currently in force and
`
`presumed valid.
`
`79.
`
`Defendants import, sell, offer for sale, and/or distribute the IQOS® system in the
`
`United States.
`
`80.
`
`Upon such importation, sale, offer for sale, and/or distribution in the United
`
`States, Defendants directly infringe, induce others to infringe, and contribute to the infringement
`
`by others of at least claims 27-30 of the ’123 patent under 35 U.S.C. § 271(a), (b), and (c) in this
`
`Judicial District and elsewhere.
`
`81.
`
`Plaintiffs have been and continue to be damaged by Defendants’ infringement of
`
`these claims.
`
`82.
`
`Plaintiffs have suffered and continue to suffer irreparable harm with no adequate
`
`remedy at law unless this Court enjoins Defendants and their agents, servants, employees,
`
`attorneys, representatives, and all others acting on their behalf from directly infringing, inducing
`
`infringement, and/or contributing to infringement of the ’123 patent.
`
`83.
`
`The balance of hardships favors an injunction, and such injunction would not
`
`disserve the public interest.
`
`84.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek enhanced damages under 35 U.S.C. § 284.
`
`85.
`
`Defendants’ infringement has been and continues to be deliberate, willful, and
`
`unlicensed, permitting Plaintiffs to seek attorneys’ fees and costs under 35 U.S.C. § 285.
`
`
`
`17
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1 Filed 04/09/20 Page 18 of 22 PageID# 245
`
`86.
`
`Therefore, Plaintiffs seek a judgment that Defendants directly infringe, induce
`
`infringement of, and contribute to infringement of at least claims 27-30 of the ’123 patent by the
`
`importation,