On June 3, 2021, the ITC released the public version (see Part I, Part II, Part III, Part IV) of the final initial determination (“ID”) issued by ALJ Clark S. Cheney finding a violation of section 337 in Certain Tobacco Heating Articles and Components Thereof (Inv. No. 337-TA-1199).

By way of background, this investigation was based on an April 9, 2020 complaint filed by RAI Strategic Holdings, Inc.; R.J. Reynolds Vapor Company; and R.J. Reynolds Tobacco Company (collectively, “Complainants”) alleging violations of section 337 by Respondents Altria Client Services LLC; Altria Group, Inc.; Philip Morris USA, Inc.; Philip Morris International Inc.; and Philip Morris Products S.A. (collectively, “Respondents”) through the importation and/or sale of certain tobacco heating articles that infringed one or more claims of U.S. Patent Nos. 9,839,238 (“the ’238 patent”); 9,901,123 (“the ’123 patent”); and 9,930,915 (“the ’915 patent”) (collectively, the “Asserted Patents”).

According to the ID, ALJ Cheney determined that there is a violation of section 337 with respect to the ’123 and ’915 patents based on the following conclusions of law:

  • Claims 27-30 of the ’123 patent have been infringed.
  • Claims 1-3 and 5 of the ’915 patent have been infringed.
  • Claim 19 of the ’238 patent has not been infringed.
  • The technical prong of the domestic industry requirement has been satisfied with respect to the ’123, ’915, and ’238 patents.
  • The economic prong of the domestic industry requirement has been satisfied with respect to the ’123, ’915, and ’238 patents.
  • Claims 27-30 of the ’123 patent have not been shown invalid.
  • Claims 1-3 and 5 of the ’915 patent have not been shown invalid.
  • Claim 19 of the ’238 patent has been shown invalid as anticipated in view of the prior art.
  • Claim 19 of the ’238 patent has not been shown invalid for failing to satisfy the written description requirement of 35 U.S.C. § 112.

As a result of his finding of a violation of section 337 with respect to the ’123 and ’915 patents, ALJ Cheney recommended issuance of a limited exclusion order (“LEO”) directed to Respondents. The ALJ did not recommend a warranty and repair exception to the LEO, noting that Respondents had not provided evidence establishing that its customers expect or require exact replacements parts or will be detrimentally affected by using non-infringing alternatives, or demonstrated that a repair industry exists in the United States. Additionally, ALJ Cheney did not recommend the inclusion of a certification provision in the LEO, noting that the accused products infringe without exception and U.S. Customs and Border Production would be able to identify what products should be excluded by a simple visual inspection. The ALJ did not recommend issuance of cease-and-desist orders because Complainants’ briefing failed to show such orders were necessary to prevent Respondents from undercutting the remedy provided by a LEO. Finally, ALJ Cheney recommended that the Commission set a 0% bond.