[Amend] Current report, items 8.01 and 9.01
Published: 2020-12-02 08:28:36
Filing Agent: Healthier Choices Management Corp
Period Ending In: 2020-12-02About Form 8-K/Apatent_litigation_8k.htm HEALTHIER CHOICES MANAGEMENT CORP. PATENT LITIGATIONZoom In Zoom Out
UNITED STATESSECURITIES AND EXCHANGE COMMISSIONWashington, D.C. 20549 FORM 8-K CURRENT REPORT Pursuant to Section 13 or 15(d) of the Securities Exchange Act of 1934 Date of Report (Date of earliest event reported): November 30, 2020 HEALTHIER CHOICES MANAGEMENT CORP.(Exact name of registrant as specified in its charter)
3800 N. 28th Way, #1Hollywood, Florida 33020(Address of Principal Executive Office) (Zip Code) (888) 766-5351(Registrant’s telephone number, including area code) Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions:
Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (§230.405 of this chapter) or Rule 12b-2 of the Securities Exchange Act of 1934 (§240.12b-2 of this chapter). Emerging growth company ? If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act. ? Explanatory Note
This Amendment No. 1 on Form 8-K/A to the Form 8-K filed on November 30, 2020 is being filed solely for the purpose of filing Exhibit 99.2.
On November 30, 2020, Healthier Choices Management Corp. (“HCMC”) issued a press release announcing the filing of its patent infringement lawsuit against Philip Morris USA, Inc. and Philip Morris Products S.A. in the U.S. District Court for the Northern District of Georgia (the “Complaint”). The lawsuit alleges infringement on HCMC-owned patent(s) by the Philip Morris product known and marketed as “IQOS®”. Philip Morris claims that it is currently approaching 14 million users of its IQOS® product and has reportedly invested over $3 billion in their smokeless tobacco products. A copy of the press release is attached as Exhibit 99.1.
The Complaint is attached as Exhibits 99.2 to this Current Report on Form 8-K and incorporated herein by reference.
SIGNATURES Pursuant to the requirements of the Securities Exchange Act of 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Healthier Choices Management Corp. (“Healthier Choices”), by and through its undersigned counsel, brings this action for patent infringement against Defendants Philip Morris USA, Inc. (“Philip Morris USA”) and Philip Morris Products S.A. (“PMP”) (collectively, “Defendants”) and alleges as follows:NATURE OF ACTION
10,561,170 (“the ’170 patent”), arising under the United States patent laws, Title 35, United States Code §§ 100, et seq., including 35 U.S.C. § 271.
innovative products and methods for, inter alia, consumers’ use and enjoyment of tobacco products.
JURISDICTION AND VENUE
U.S.C. §§ 100, et seq., and this Court has subject matter jurisdiction over Healthier Choices’ patent infringement claims under 28 U.S.C. §§ 1331 and 1338(a).
Civil Procedure 4(k)(2). In addition, personal jurisdiction exists over PMP based on the fact that it is responsible for causing patent infringement to occur in the State of Georgia and this District.
for sale, selling, and instructing its customers to use the accused infringing product within this District.
District for the purpose of offering for sale, selling, using, and/or instructing its customers how to use the accused infringing product. On information and belief, Philip Morris USA owns and maintains retail establishments at the Lenox Square shopping center with an address of 3393 Peachtree Rd. NE, Atlanta, Georgia 30326, (Exh. E (IQOS® store locator identifying an IQOS® Store at Lenox Square in Atlanta, Georgia); Exh. F (IQOS® store location within the Lenox Square shopping center)) and at the Mall of Georgia shopping center with an address of 3333 Buford Dr., Space 1004, Buford, Georgia 30519 (Exh. G (IQOS® store locator identifying an IQOS® Store at the Mall of Georgia in Buford, Georgia); Exh. H (IQOS® store location within the Mall of Georgia)) for the purpose of offering for sale, selling, using, and/or instructing its customers how to use the accused infringing product. (Exh. D.) Philip Morris USA also offers for sale, sells, uses, and/or instructs consumers how to use the accused infringing products at dedicated kiosks it established and maintains within this District at retail establishments of multiple third parties (e.g., Walgreens, Quiktrip, and Kroger).
but have re-opened as of June 22, 2020. (See Exh. I (IQOS® store locations, including the Lenox Square Store and the Mall of Georgia Store, re-open on June 22, 2020).)
U.S.C. § 1400(b) because, inter alia, Philip Morris USA has regular and established places of business in the District. Further, Philip Morris USA uses its regular and established places of business in this District to offer for sale, sell, use, and/or instruct its customers to use the accused infringing product thereby committing, inducing, and/or contributing to acts of patent infringement in this District. (See Exh. D-I.)
THE ’170 PATENT
a battery, an electronic module, a combustible material reservoir, and a heating element fixed in the combustible material reservoir;combustible material loaded into the combustible material reservoir;wherein the pipe is structured to transmit an electric current from the battery to the heating element, the heating element initiating a combustion reaction in the combustible material reservoir.(Exh. A, col. 9:36 – col. 10:4.)
5. A method of at least partially combusting a combustible material for inhalation, comprising:providing an electronic pipe comprising a battery, an electronic module, a combustible material reservoir, and a heating element fixed in the combustible material reservoir;loading the combustible material into the combustible material reservoir;
activating the electronic pipe such that electric current is transmitted from the battery to the heating element;initiating, by way of the heating element, a combustion reaction in the combustible material reservoir, the combustion reaction at least partially combusting the combustible material.(Exh. A, col. 10:15-29.)
DEFENDANTS’ INFRINGING IQOS® PRODUCT
(Id. at 20-22 (Figure 2).)
are manufactured, offered for sale, sold, and adapted to be used with one another. None of the IQOS® Holder, Electronic Module, Heating Element, Rechargeable Battery and Charger, or Tobacco Stick is a staple article of commerce suitable for a substantial non-infringing use. Rather, the IQOS® Holder, Electronic Module, Heating Element, Rechargeable Battery and Charger, or Tobacco Stick were specifically designed and Defendants sought and obtained FDA regulatory approval for their use solely and exclusively as parts of the Accused Infringing Product, and they are imported, marketed, offered for sale, and sold by Defendants solely and exclusively in and/or for use with the Accused Infringing Product.
an “iQOS User Guide.” (See Exh. L and M, respectively.) Defendants, import, offer for sale, and sell the Accused Infringing Product with, and the Accused Infringing Product is used according to, the Quick Start Guide and User Guide, each of which instructs consumers to operate the IQOS® system in a manner that infringes at least one claim of the ’170 patent.
THE IMPORTATION, SALE, OFFER FOR SALE, AND DISTRIBUTION OF THE ACCUSED INFRINGING PRODUCT
COUNT IINFRINGEMENT OF U.S. PATENT NO. 10,561,170
information and belief the casing and support components of the Accused Infringing Product support and guide an IQOS® Tobacco Stick onto the heating blade (heating element) when it is inserted into the electronic pipe.
(Exh. L at 14.)
or under the doctrine of equivalents. (See, e.g., Exh. J at 40-41 (“the THS [Tobacco Heating System] aerosol contains substantially lower levels of HPHCs [Harmful and Potentially Harmful Constituents] compared to cigarette smoke.Importantly, nitrogen oxides (NOx) and carbon monoxide (CO), two important combustion markers, were reduced by over 97%.”).) Thus, on information and belief, while Defendants assert that the Accused Infringing Product does not cause combustion of the IQOS® Tobacco Sticks, Defendants’ own testing concludes that 97%, not 100%, of the harmful chemicals associated with combustion are eliminated by the Accused Infringing Product, and the presence of 3% of the two important combustion markers nitrogen oxides and carbon monoxide indicates that at least some combustion occurs when the Accused Infringing Product is operated as designed and intended by Defendants.
of each and every limitation of at least claim 1 of the ’170 patent under 35 U.S.C.
§§ 271(b) and/or (c).
(Exh. K at 5; see also Exh. L, supra ¶ 44, at 14.) Therefore, on information and belief Defendants know and intend for consumers to operate the Accused Infringing Product in combination with the IQOS® Tobacco Sticks in a manner that satisfies this limitation of claim 5 literally or under the doctrine of equivalents.
to, after inserting an IQOS® Tobacco Stick into the Holder, turn on the Accused Infringing Product by means of a switch that “initiates the heating of the tobacco via the heating blade inserted into the tobacco plug.” (Exh. J at 23; Exh. L at 15.) Therefore, on information and belief Defendants know and intend for consumers to operate the Accused Infringing Product in combination with the IQOS® Tobacco Sticks in a manner that satisfies this limitation of claim 5 literally or under the doctrine of equivalents.
U.S.C. §§ 271(a), (b), and (c) in this Judicial District and elsewhere.
DEMAND FOR JURY TRIAL
Pursuant to Fed. R. Civ. P. 38, Healthier Choices hereby demands trial by jury in this action for all issues and claims so triable.PRAYER FOR RELIEF
WHEREFORE, Healthier Choices respectfully requests the Court to enter judgment in its favor and grant the following relief:
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CERTIFICATE OF COMPLIANCE
Pursuant to L.R. 7.1D, the undersigned counsel certify that the foregoing has been prepared in Times New Roman 14 point, one of the four fonts and points approved by the Court in L.R. 5.1C./s/ Lynnette D. Espy-Williams Lynnette D. Espy-Williams Georgia Bar No. 246106E-mail: email@example.com External Resources: