R.J. Reynolds Moves to Add Claims to Vaping Patent Case

On Monday, RAI Strategic Holdings, Inc. (RAI) and R.J. Reynolds Vapor Company’s motion for leave in order to amend its complaint and notice of investigation to add a claim from a patent in a case against Altria Client Services, et al. was made public. A confidential motion was originally filed July 13.  The case is pending before Judge Clark S. Cheney in the U.S. International Trade Commission.

RAI is the parent company that owns R.J. Reynolds, and Altria is the parent owner of Juul Labs, Inc.  RAI originally filed its complaint against Altria on April 9, and Altria responded on June 1.  The complaint was based on Altria’s alleged infringement upon three patents that RAI owns: 9,839,238; 9,901,123; and 9,930,915.  RAI is now seeking to add claim 3 of the ‘915 patent.  In its motion, RAI mentioned that counsel for complainants and respondents discussed the substance of the motion, but were unable to come to an agreement.

RAI stated the reasoning for adding claim 3 of the ‘915 patent is due to information from discovery, “Respondents produced nearly two million pages of documents.  Those documents included information—not publicly available–demonstrating Respondents’ infringement of claim 3 of the ‘915 patent.” 

In its argument, RAI argued it had five reasons to show good cause for the motion to be granted.  First, they are complainants that are only seeking to assert “a single dependent claim from a currently asserted patent, and that claim is closely tied to the current scope of this Investigation.”  Specifically, claim 3 recites in full claim 1, which is already asserted, so RAI argued “claim 3 would not add undue technical complexity to the case.”

Similarly, they argued that the product that infringes on claim 3 is the IQOS system, which is already accused in claim 1.  Third, the complainants argued there was not “sufficient pre-suit information to assert claim 3 in the original complaint.”  The fourth reason similarly argued that the claim could not have been brought earlier because the information was not known or available.  Finally, complainants argued the public interest will be served by the inclusion of all relevant claims in a single investigation.

Additionally, the complainants argued that there will be no prejudice to the respondents.  One reason being the “significant overlap” with claims already asserted in the investigation.  In addition, this motion is being filed early in the investigation, so there is no need for procedural schedule changes.

RAI and R.J. Reynolds are being represented by Jones Day, and Altria is being represented by Latham & Watkins.