Case: 22-1268 Document: 47 Page: 1 Filed: 04/12/2023
United States Court of Appeals
for the Federal Circuit
______________________
HEALTHIER CHOICES MANAGEMENT CORP.,
Plaintiff-Appellant
v.
PHILIP MORRIS USA, INC., PHILIP MORRIS
PRODUCTS S.A.,
Defendants-Appellees
______________________
2022-1268
______________________
Appeal from the United States District Court for the
Northern District of Georgia in No. 1:20-cv-04816-TCB,
Judge Timothy C. Batten, Sr.
-------------------------------------------------
HEALTHIER CHOICES MANAGEMENT CORP.,
Plaintiff-Appellant
v.
PHILIP MORRIS USA, INC., PHILIP MORRIS
PRODUCTS S.A.,
Defendants-Appellees
______________________
2022-1563
______________________
Case: 22-1268 Document: 47 Page: 2 Filed: 04/12/2023
2 HEALTHIER CHOICES MANAGEMENT CORP. v.
PHILIP MORRIS USA, INC.
Appeal from the United States District Court for the
Northern District of Georgia in No. 1:20-cv-04816-TCB,
Judge Timothy C. Batten, Sr.
______________________
Decided: April 12, 2023
______________________
BARRY P. GOLOB, Cozen O'Connor P.C., Washington,
DC, argued for plaintiff-appellant. Also represented by
THOMAS FISHER.
MAXIMILIAN A. GRANT, Latham & Watkins LLP, Wash-
ington, DC, argued for all defendants-appellees. Defend-
ant-appellee Philip Morris Products S.A. also represented
by GABRIEL K. BELL, DAVID ZUCKER; RICHARD GREGORY
FRENKEL, Menlo Park, CA.
ADAM BANKS, Weil, Gotshal & Manges LLP, New York,
NY, for defendant-appellee Philip Morris USA, Inc. Also
represented by ELIZABETH WEISWASSER; WILLIAM SUTTON
ANSLEY, Washington, DC; MARK PINKERT, Miami, FL.
______________________
Before TARANTO, STOLL, and CUNNINGHAM, Circuit
Judges.
STOLL, Circuit Judge.
In these combined appeals, Healthier Choices Manage-
ment Corp. challenges the district court’s (1) dismissal of
its original complaint, (2) denial of its motion for leave to
amend its complaint, and (3) grant of attorneys’ fees. For
the reasons below, we reverse the district court’s dismissal
of the original complaint and denial of leave to amend. Ac-
cordingly, we vacate the award of attorneys’ fees. We re-
mand for further proceedings consistent with this opinion.
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HEALTHIER CHOICES MANAGEMENT CORP. v. 3
PHILIP MORRIS USA, INC.
BACKGROUND
Healthier Choices Management Corp. (HCM) sued
Philip Morris USA, Inc. and Philip Morris Products S.A.
(collectively, “Philip Morris”) in the United States District
Court for the Northern District of Georgia for allegedly in-
fringing at least one claim of U.S. Patent No. 10,561,170.
The ’170 patent is directed to an electronic nicotine-deliv-
ery device.
Two independent claims of the ’170 patent are relevant
to this appeal: claim 1 and claim 5. Claim 1 provides:
1. An electronic pipe, comprising:
a battery, an electronic module, a combus-
tible material reservoir, and a heating ele-
ment fixed in the combustible material
reservoir;
combustible material loaded into the com-
bustible material reservoir;
wherein the pipe is structured to transmit
an electric current from the battery to the
heating element, the heating element initi-
ating a combustion reaction in the combus-
tible material reservoir.
’170 patent col. 9 l. 36–col. 10 l. 4 (emphasis added to dis-
puted portion).
Claim 5 provides:
5. A method of at least partially combusting a com-
bustible material for inhalation, comprising:
providing an electronic pipe comprising a
battery, an electronic module, a combus-
tible material reservoir, and a heating ele-
ment fixed in the combustible material
reservoir;
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4 HEALTHIER CHOICES MANAGEMENT CORP. v.
PHILIP MORRIS USA, INC.
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 ma-
terial reservoir, the combustion reaction at
least partially combusting the combustible
material.
Id. at col. 10 ll. 16–29 (emphasis added to disputed por-
tion).
Philip Morris manufactures an electronic nicotine-de-
livery system, called the IQOS system, that “heats tobacco-
filled sticks wrapped in paper [‘HeatSticks’] to generate a
nicotine-containing aerosol.” Healthier Choices Mgmt.
Corp. v. Philip Morris USA, Inc., No. 20-cv-4816, 2021 WL
3121487, at *1 (N.D. Ga. July 23, 2021) (Dismissal Op.).
Philip Morris markets the IQOS system as a “heat-not-
burn” system, meaning that the tobacco is heated at a low
enough temperature that the tobacco does not burn, there-
fore, in Philip Morris’s view, preventing combustion. Ap-
peal No. 22-1268 Appellees’ Br. 7; see Dismissal Op., 2021
WL 3121487, at *1.
HCM alleged in its original complaint that the IQOS
system infringes claims 1 and 5 of the ’170 patent. It as-
serted in its complaint that, notwithstanding Philip Mor-
ris’s claims that the IQOS system is combustion-less, the
IQOS system does in fact initiate a combustion reaction
that at least partially combusts the HeatStick. J.A. 1 71.
The IQOS system does so, according to the original
1 Citations to “J.A.” refer to the Joint Appendix filed
in Appeal No. 22-1268.
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HEALTHIER CHOICES MANAGEMENT CORP. v. 5
PHILIP MORRIS USA, INC.
complaint, by “transmitting an electrical current from the
battery to the heating blade in the [IQOS system which]
results in combustion of at least a portion of the
[Heat]Stick.” J.A. 70.
Philip Morris filed a motion under Federal Rule of Civil
Procedure 12(b)(6) to dismiss the complaint for failure to
state a claim, arguing that an exhibit HCM attached to its
original complaint conclusively demonstrated that the
IQOS system does not initiate a combustion reaction as re-
quired by the asserted claims. Specifically, HCM’s com-
plaint cited to various portions of a Modified Risk Tobacco
Product Application (MRTPA) that Philip Morris submit-
ted to the Food and Drug Administration when it sought a
modified risk order to sell the IQOS system. 2
The district court agreed that the MRTPA established
that the IQOS did not initiate a combustion reaction and
thus did not infringe the asserted claims; the court accord-
ingly granted Philip Morris’s motion to dismiss. HCM then
moved for leave to file an amended complaint, attaching to
its motion the amended complaint it sought to file and an
expert declaration. The district court determined that
HCM did not plausibly allege, in either the original or the
amended complaint, that the accused IQOS system initi-
ates a combustion reaction as required by the claims and,
thus, did not state a proper claim for infringement. See
Healthier Choices Mgmt. Corp. v. Philip Morris USA, Inc.,
No. 20-cv-4816, 2021 WL 6014854, at *4 (N.D. Ga. Dec. 3,
2021). The district court denied HCM’s motion for leave to
file an amended complaint. Philip Morris then moved to
2 Also attached to the original complaint was a press
release from the FDA. See J.A. 92–96. Because the press
release primarily discusses the contents of the MRTPA, we
discuss only the MRTPA.
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6 HEALTHIER CHOICES MANAGEMENT CORP. v.
PHILIP MORRIS USA, INC.
recover its attorneys’ fees under 35 U.S.C. § 285, and the
district court granted the motion.
HCM appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
On appeal, HCM argues that (1) the district court erred
in dismissing its original complaint; (2) the district court
erred in denying HCM’s motion for leave to amend its com-
plaint; and (3) if remanded, the case should be reassigned
to a different district judge. Finally, HCM challenges the
district court’s award of attorneys’ fees to Philip Morris.
We address each argument in turn, turning first to HCM’s
challenge to the district court’s dismissal of its original
complaint.
I
“We apply regional circuit law when reviewing motions
to dismiss for failure to state a claim under Rule 12(b)(6).”
Weisner v. Google LLC, 51 F.4th 1073, 1081 (Fed. Cir.
2022). The Eleventh Circuit “review[s] the district court’s
grant of a motion to dismiss for failure to state a claim de
novo, accepting the allegations in the complaint as true and
construing them in the light most favorable to the plain-
tiff.” Hunt v. Aimco Props., L.P., 814 F.3d 1213, 1221
(11th Cir. 2016). A plaintiff has alleged a plausible com-
plaint when the court can “draw the reasonable inference
that the defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Philip Morris contends that, under Eleventh Circuit
law, the court must accept as true all statements contained
in an exhibit that was attached to and relied on by the com-
plaint absent the plaintiff’s express disavowal of any such
statements. See Appeal No. 22-1268 Appellees’ Br. 45.
Philip Morris argues that, in its complaint, HCM improp-
erly attempted to “cherry-pick[]” certain sentences from the
exhibit in support of its allegations, yet disavowed others.
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PHILIP MORRIS USA, INC.
Id. at 31–32. Furthermore, according to Philip Morris, the
original complaint does not sufficiently disavow the
MRTPA’s repeated statements that the IQOS system is a
heat-not-burn system and thus that there is no combus-
tion. Id. at 42–43; see id. at 23–24. Accordingly, Philip
Morris maintains that HCM’s allegation that the IQOS
system initiates combustion of at least a portion of the burn
stick was implausible, and the complaint was properly dis-
missed.
Under Eleventh Circuit law, a district court can “con-
sider exhibits attached to a complaint in ruling on a motion
to dismiss, and if the allegations of the complaint about a
particular exhibit conflict with the contents of the exhibit
itself, the exhibit controls.” Hoefling v. City of Miami, 811
F.3d 1271, 1277 (11th Cir. 2016) (emphasis added). Thus,
this occurs “when a plaintiff attaches a document to his
complaint but his allegations about what the document is
or says contradict the document itself.” Id.; see Griffin In-
dus., Inc. v. Irvin, 496 F.3d 1189, 1206 (11th Cir. 2007)
(“Where there is a conflict between allegations in a plead-
ing and exhibits thereto, it is well settled that the exhibits
control.” (quoting Simmons v. Peavy-Welsh Lumber Co.,
113 F.2d 812, 813 (5th Cir. 1940))). But this does not mean
that factual assertions made in an exhibit always control
over contrary factual assertions on the same subject made
in a complaint. “Where a . . . plaintiff attaches a . . . report
to his complaint and alleges that it is false, . . . the contents
of the report cannot be considered as true for purposes of
ruling on a motion to dismiss.” Saunders v. Duke, 766 F.3d
1262, 1270 (11th Cir. 2014). Similarly, “[w]hen a com-
plaint contains specific, well-pleaded allegations that ei-
ther do not appear in the attached exhibit or that
contradict conclusory statements in the exhibit,” courts in
the Eleventh Circuit credit the allegations in the com-
plaint. Gill ex. rel. K.C.R. v. Judd, 941 F.3d 504, 514
(11th Cir. 2019).
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8 HEALTHIER CHOICES MANAGEMENT CORP. v.
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The Eleventh Circuit has held that a conclusory, gen-
eral allegation in the complaint might not suffice in the
face of specific, material, uncontroverted facts stated in an
exhibit. For example in Griffin Industries, 496 F.3d
at 1194–95, Griffin Industries, the owner of a chicken ren-
dering plant, sued state and local agencies, accusing them
of violating its constitutional rights to equal protection by
disparate treatment. Griffin Industries alleged in its com-
plaint that the defendants had “singled [it] out” and that a
“similarly situated” entity had not been subject to similar
treatment. Id. at 1200. The Eleventh Circuit determined
this “conclusory allegation” in the complaint to be untrue
in light of the exhibits. Id. at 1205. Although the com-
plaint addressed some factors “relevant to an objectively
reasonable governmental decisionmaker,” it left some of
these factors unaddressed. Id. at 1207. One of these un-
addressed factors—accurate self-reporting—was discussed
extensively by one of the attached exhibits; it showed that
the competitor self-reported while Griffin Industries did
not. Id. at 1206–07. Because the exhibit’s specific discus-
sion of this factor negated the conclusory allegation that
Griffin Industries and its competitor were similarly situ-
ated, the Eleventh Circuit concluded that Griffin failed to
plausibly allege an Equal Protection Clause violation. Id.
at 1207.
In contrast, the Eleventh Circuit determined that the
plaintiff’s complaint adequately disavowed the contents of
an attached exhibit in Saunders, 766 F.3d at 1270. In
Saunders, the plaintiff sued law enforcement officers, al-
leging that they had used excessive force in arresting him,
and attached several police reports to his complaint. Id.
The Eleventh Circuit determined that the attached police
reports should not have been considered in ruling on a
Rule 12(b)(6) motion to dismiss. Specifically, the contents
of the reports could not be considered as true for purposes
of ruling on a motion to dismiss because the plaintiff “ex-
pressly alleged in his complaint that the police reports that
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PHILIP MORRIS USA, INC.
were submitted failed to properly and correctly document
the excessive force inflicted on him and the injuries he suf-
fered.” Id. In this case, the complaint had adequately dis-
avowed the exhibit where it alleged the exhibit to be false.
The Eleventh Circuit undertook a similar analysis in
Hoefling, 811 F.3d at 1271. In that case, the plaintiff al-
leged in his complaint that the City of Miami violated his
Fourth and Fourteenth Amendment rights when officers
seized his resident sailboat and destroyed it. In his original
complaint, the plaintiff had attached incident reports,
which were written by officers to inform the plaintiff of the
derelict state of his sailboat. Id. at 1276. In his second
amended complaint, the plaintiff alleged that the officer
gave him “an ‘incorrect opinion’ that the sailboat was der-
elict or at risk of being derelict.” Id. at 1278. The Eleventh
Circuit noted that, “[a]t the very least, the allegations in
the . . . complaint dispute [the incident] report that the sail-
boat was in a derelict state. Moreover, [the] complaint does
not admit (or give any credence to) the statement in the
[incident] report that the sailboat was found covered with
garbage.” Id. In light of the plaintiff’s disavowal of the
contents of the attached report, the Eleventh Circuit deter-
mined that the district court “should not have accepted as
true the contents of the incident reports to find, when rul-
ing on the motion to dismiss the second amended com-
plaint, that Mr. Hoefling had notice that his sailboat was
derelict or that the vessel was in fact derelict.” Id.
In Gill, the Eleventh Circuit considered how specific a
complaint’s allegation must be for the district court to ac-
cept the allegation over statements in the attached exhibits
for purposes of a motion to dismiss. 941 F.3d at 515.
There, the plaintiff, a student, sued a deputy who entered
her home and arrested her without a warrant, arguing
among other things that the deputy did not have probable
cause to make the arrest. On the day the deputy arrested
the plaintiff, he filled out an arrest affidavit explaining how
he reached the conclusion that there was probable cause to
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arrest the plaintiff for the crime of aggravated stalking of
a classmate. The affidavit included summaries of inter-
views the deputy conducted with that classmate and other
students, some of which included statements that the
plaintiff had bullied that classmate. The plaintiff attached
the arrest affidavit to her complaint and referred to it sev-
eral times in the complaint. Id. at 512. The Eleventh Cir-
cuit compared the allegations in the complaint with their
counterparts in the arrest affidavit, finding some of the al-
legations “specific enough” to “prevent th[e counterpart]
statement in the affidavit from being considered” for the
motion to dismiss. Id. at 515. For instance, the complaint’s
allegation that “the description of the fight was deliber-
ately false and misleading” was too general or conclusory
because “it [did] not say what part of the description was
false and misleading and in what way.” Id. On the other
hand, the complaint’s statement that the plaintiff “never
confessed to bullying” the classmate was “specific enough
. . . to disregard all of the statements about bullying that
[the] affidavit says came from [the plaintiff]’s confession.”
Id.
Eleventh Circuit law is thus clear: if a plaintiff’s com-
plaint contains only a conclusory allegation that is directly
contradicted by more concrete statements in an attach-
ment to the complaint, the statements in the attachment
will control. See, e.g., Griffin Indus., 496 F.3d at 1205. In
contrast—as in Saunders, Hoefling, and Gill—a plaintiff
can sufficiently disavow statements in attachments to a
complaint where the complaint makes a specific contention
contradicting those statements. In no case, however, has
the Eleventh Circuit required that a plaintiff seeking to
disavow statements in an attachment to its complaint re-
cite certain magic words to do so. See, e.g., Gill, 941 F.3d
at 515 (determining that, under the totality of the circum-
stances, a certain allegation was “specific enough” to disre-
gard the contents of the attachment).
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PHILIP MORRIS USA, INC.
We decline to depart from the Eleventh Circuit’s prec-
edent, which we are bound to apply. In this case, HCM’s
original and amended complaints recite sufficient allega-
tions to raise a facially plausible case of patent infringe-
ment. The allegations in HCM’s original complaint
specifically rejected the notion that the IQOS system does
not initiate a combustion reaction:
[O]n information and belief, while Defendants as-
sert that the Accused Infringing Product does not
cause combustion of the IQOS® Tobacco Sticks, De-
fendants’ own testing concludes that 97%, not
100%, of the harmful chemicals associated with
combustion are eliminated by the Accused Infring-
ing Product, and the presence of 3% of the two im-
portant combustion markers nitrogen oxides and
carbon monoxide indicates that at least some com-
bustion occurs when the Accused Infringing Prod-
uct is operated as designed and intended by
Defendants.
J.A. 71.
Here, the original complaint explains in detail why it
disagrees with Philip Morris’s characterization in the
MRTPA of its IQOS system as combustion-less. The com-
plaint plausibly alleges that Philip Morris’s own testing
concludes that the “presence of 3% of the two important
combustion markers . . . indicates that at least some com-
bustion occurs.” Id.
These allegations are neither general nor conclusory.
Instead, we determine that these allegations are specific
enough, under Eleventh Circuit law, to disavow the
MRTPA’s statements that the IQOS system does not initi-
ate a combustion reaction. The allegations made in HCM’s
complaint are like those made in the complaints considered
in Saunders, Hoefling, and Gill. The original complaint di-
rectly acknowledges the MRTPA’s statement of “no com-
bustion” but gives a plausible theory for why the IQOS
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12 HEALTHIER CHOICES MANAGEMENT CORP. v.
PHILIP MORRIS USA, INC.
system might nonetheless initiate combustion of at least a
portion of the HeatStick.
Under the Federal Rules of Civil Procedure, the district
court must construe the complaint in a light most favorable
to the plaintiff and accept as true all facts which the plain-
tiff alleges. Fed. R. Civ. Pro. 12(b)(6); see also Gill, 941
F.3d at 511. In this case, HCM’s original complaint con-
tained specific allegations that the IQOS system initiated
a combustion reaction. See J.A. 70–71. In our view, these
specific, targeted allegations are sufficient to disavow the
contradictory statements in the attached MRTPA in which
Philip Morris self-reported that its products do not com-
bust. We thus hold that, in its original complaint, HCM
stated a valid claim for patent infringement under Elev-
enth Circuit law notwithstanding attachment of the
MRTPA exhibit.
II
We now turn to HCM’s amended complaint, which pre-
sents an even stronger case in favor of HCM.
We apply regional circuit law when reviewing a district
court’s decision regarding motions for leave to file an
amended complaint. Unigene Lab’ys, Inc. v. Apotex, Inc.,
655 F.3d 1352, 1359 (Fed. Cir. 2011). The Eleventh Circuit
reviews such decisions for an abuse of discretion. Williams
v. Bd. of Regents of Univ. Sys. of Ga., 477 F.3d 1282, 1291
(11th Cir. 2007). A district court abuses its discretion
when it bases its decision on an “erroneous view of the law
or on a clearly erroneous assessment of the evidence.”
Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S.
559, 563 n.2 (2014).
Under Eleventh Circuit law, an amended complaint su-
persedes the previous complaint. Fritz v. Standard Sec.
Life Ins. Co. of N.Y., 676 F.2d 1356, 1358 (11th Cir. 1982).
Therefore, a district court, in considering an amended com-
plaint, should not consider the now “abandoned” original
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complaint and its attachments. See TVPX ARS, Inc.
v. Genworth Life & Annuity Ins. Co., 959 F.3d 1318, 1327
(11th Cir. 2020).
In the Eleventh Circuit, however, district courts may
consider a document outside the pleadings and treat it as
part of the pleadings for purposes of Rule 12(b)(6) if the
document is “(1) central to the plaintiff’s claim; and (2) un-
disputed.” Horsley v. Feldt, 304 F.3d 1125, 1134 (11th Cir.
2002); see Brooks v. Blue Cross & Blue Shield of Fla., Inc.,
116 F.3d 1364, 1369 (11th Cir. 1997). A document is “cen-
tral” to a claim when its contents are at “the very heart” of
the dispute. Day v. Taylor, 400 F.3d 1272, 1276 (11th Cir.
2005). For example, a contract is central to a contract dis-
pute and a patent is central to a patent infringement case.
A document is “undisputed” if its authenticity is not chal-
lenged. Horsley, 304 F.3d at 1134.
In its proposed amended complaint, HCM did not at-
tach the MRTPA and removed any citations to the MRTPA
that were in its original complaint. At the same time, HCM
continued to assert that “combustion occurs in the IQOS®
system.” J.A. 675. HCM’s proposed amended complaint
includes allegations, more explicit than those in its original
complaint, regarding how the IQOS system initiates com-
bustion of at least a portion of the HeatStick. Specifically,
HCM’s proposed amended complaint includes the following
allegations:
47. A combustion reaction is a chemical reaction
that requires fuel, oxygen and an ignition source.
On information and belief, the HeatStick provides
fuel, air provides oxygen, and the IQOS® system
provides a heating blade, which is the heating ele-
ment and ignition source.
48. On information and belief, the IQOS® system
generates combustion markers, including carbon
monoxide and carbon dioxide, in sufficient
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14 HEALTHIER CHOICES MANAGEMENT CORP. v.
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quantities to indicate that combustion occurs in the
IQOS® system.
49. On information and belief, the heating element
initiates a combustion reaction in the combustible
material reservoir by heating the heating blade,
which in turn heats the HeatStick to temperatures
at or below 350ºC. On information and belief, at
temperatures at or below 350ºC, the IQOS® system
initiates a combustion reaction in the chamber of
the system. Specifically,
a. A combustible material is loaded into the
combustible material chamber;
b. The heating blade pierces the HeatStick
and initiates a combustion reaction in the
HeatStick;
c. A thermogravimetric analysis-differen-
tial scanning calorimetry (“TGA-DSC”)
analysis of a HeatStick evidences an exo-
thermic reaction between 250ºC and 340ºC
and therefore, a combustion reaction; and
d. The concentrations of CO and CO2 that
are produced by the HeatStick, after the
heating blade pierces and heats the
HeatStick, evidence a combustion reaction.
J.A. 675–76 (citations omitted).
HCM attached the declaration of Dr. Michael Deible,
its technical expert, to its proposed amended complaint in
further support of these allegations. Dr. Deible opined the
following, each of which, taken as true, supports HCM’s al-
legations that the IQOS system initiates a combustion re-
action: (1) that his testing data shows that combustion of
the HeatStick occurs “beginning at a temperature of about
250 ºC and at a temperature of about 400 ºC,” as shown by
weight loss in the HeatStick, J.A. 705–06; (2) that
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combustion of a HeatStick produces CO and CO2, J.A. 708;
and (3) that the HeatSticks are blackened and charred af-
ter normal use, with portions of the HeatStick “exhibit[ing]
ash, indicative of combustion,” J.A. 708–09.
Before the district court, Philip Morris contended that
the MRTPA was so central to the proposed amended com-
plaint that it should have been treated as if attached to
that complaint. Appeal No. 22-1268 Appellees’ Br. 35–42
(citing Horsley, 304 F.3d at 1134). Even assuming, as
Philip Morris contends and the district court found, 3 that
the MRTPA is “central” to HCM’s patent infringement al-
legations—and thus that it should have been treated as if
attached to the amended complaint 4—we conclude that the
allegations in the proposed amended complaint and at-
tached expert report are specific enough under Eleventh
Circuit law to disavow the MRTPA’s statements regarding
no combustion and raise a plausible allegation of patent in-
fringement. The Eleventh Circuit “do[es] not permit a dis-
trict court to consider, on a motion to dismiss, exhibits
attached to an earlier complaint that a plaintiff has ex-
pressly disavowed or rejected as untrue in a subsequent
3 Horsley, a case cited by both Philip Morris and the
district court, is distinguishable. Horsley was a defamation
suit where the district court considered statements made
in a newspaper article and in a transcript of a television
broadcast. 304 F.3d at 1128, 1133–34. Although the Elev-
enth Circuit in Horsley articulated what is required for a
district court to consider documents outside the pleadings
for a motion to dismiss (i.e., centrality and authenticity),
Horsley did not concern whether the plaintiff disavowed
the contents of such documents.
4 To be clear, we are not convinced that the one-sided
MRTPA document that Philip Morris submitted to the
FDA is “central” to the patent infringement dispute here.
We simply assume so for purposes of resolving this appeal.
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16 HEALTHIER CHOICES MANAGEMENT CORP. v.
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amended complaint.” Hoefling, 811 F.3d at 1277; see id.
at 1277–78 (holding that “when a plaintiff amends its orig-
inal complaint to make clear ‘it had rejected’ a certain con-
tract provision, it will not be bound by the terms of the
contract simply because it had attached the contract to the
original complaint” (quoting Dresdner Bank AG v. M/V
Olympia Voyager, 463 F.3d 1210, 1215 (11th Cir. 2006))).
As we explained above, HCM’s amended complaint
need not recite particular magic words to disavow state-
ments made in the MRTPA. By including specific allega-
tions that contradict that document and expressly
removing all citations to that document, HCM’s amended
complaint “expressly disavow[s] or reject[s] as untrue”
Philip Morris’s claim that the IQOS system does not com-
bust. Id. at 1277. In other words, even if the MRTPA was
“central” to HCM’s allegations, HCM can—and did—ex-
pressly disavow or reject as untrue the relevant portions of
the MRTPA.
We also note that the statements in the MRTPA cannot
be used to arrive at a definitive determination on infringe-
ment because the patent might require a different meaning
of “combustion” than the MRTPA. The MRTPA—rather
narrowly—defines a “combustion process” as “burning and
the formation of smoke with solid particles and high levels
of [harmful and potentially harmful constituents].”
J.A. 165; see J.A. 136. HCM contends, however, that the
proper construction of “combustion” in the ’170 patent re-
quires only “a chemical reaction that requires fuel, oxygen
and an ignition source.” J.A. 675 (defining “combustion re-
action”). The district court did not conduct a Markman
hearing or seek briefing on the meaning of this key claim
term, or engage in claim construction, to resolve the facial
conflict between these two constructions. It is possible
that, after conducting a Markman hearing and receiving
briefing on the issue, the district court will construe this
phrase and thereafter resolve the infringement issue on
summary judgment. But it would be premature for the
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PHILIP MORRIS USA, INC.
district court to do so based solely on the complaint at the
Rule 12(b)(6) stage.
In view of the specific infringement allegations which
disavow any contradictory statements in the MRTPA, we
determine that HCM’s amended complaint, like its original
complaint, stated a valid claim for patent infringement not-
withstanding consideration of the MRTPA exhibit. Be-
cause we reverse the district court’s dismissal of HCM’s
complaint, we also vacate the court’s award of attorneys’
fees. See Chang v. JPMorgan Chase Bank, N.A., 845 F.3d
1087, 1099 (11th Cir. 2017) (vacating district court’s award
of attorneys’ fees after reversing judgment); Cellspin Soft,
Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019) (va-
cating district court’s award of attorneys’ fees under
35 U.S.C. § 285 after vacating district court’s dismissal of
complaints).
III
Finally, we consider HCM’s request for reassignment
to a different district court judge on remand. Because re-
assignment is not an issue unique to patent law, we follow
regional circuit law. Eolas Techs., Inc. v. Microsoft Corp.,
457 F.3d 1279, 1282 (Fed. Cir. 2006). The Eleventh Circuit
considers three factors when deciding whether to reassign
a case on remand: “(1) whether the original judge would
have difficulty putting his previous views and findings
aside; (2) whether reassignment is appropriate to preserve
the appearance of justice; [and] (3) whether reassignment
would entail waste and duplication out of proportion to the
gains realized from reassignment.” Chudasama v. Mazda
Motor Corp., 123 F.3d 1353, 1373 (11th Cir. 1997).
HCM alleges that reassignment is warranted. HCM
contends that the first two factors—whether the district
judge would have difficulty putting aside his previous
views and whether the appearance of justice would be pre-
served—are satisfied because the district judge deemed
HCM’s claims “baseless” and reflected a “studied
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18 HEALTHIER CHOICES MANAGEMENT CORP. v.
PHILIP MORRIS USA, INC.
ignorance,” found the case to be exceptional, and awarded
fees to Philip Morris. Appeal No. 22-1563 Appellant’s
Br. 24–27 (citing Healthier Choices Mgmt. Corp. v. Philip
Morris USA, Inc., No. 20-cv-4816, 2022 WL 870206, at *2–3
(N.D. Ga. Feb. 22, 2022)). HCM also argues there would be
no waste or duplication because the case only reached the
pleadings stage and discovery was stayed. Id. at 27–28.
Philip Morris responds that none of the factors weigh
in favor of reassignment and thus HCM has not demon-
strated that reassignment is warranted. Appeal
No. 22-1563 Appellees’ Br. 29–36. Philip Morris contends
that the district judge’s strongly worded opinions ruling
against HCM do not show that the district judge would
have difficulty putting aside his previous views or that the
appearance of justice would not be preserved. Id. at 30–35.
Regarding waste and duplication, Philip Morris argues
that the district judge spent nearly a year and a half be-
coming familiar with the case and technology and resolved
ten different motions. Id. at 35–36.
We agree with Philip Morris. As the Eleventh Circuit
has held, “the fact that the district judge ruled against the
appellants previously is of little impact; otherwise, every
reversed case would have to be reassigned on remand.”
Stargel v. SunTrust Banks, Inc., 791 F.3d 1309, 1312
(11th Cir. 2015). Similarly, the Eleventh Circuit has made
clear that a district court’s award of attorneys’ fees does not
support reassignment. AcryliCon USA, LLC v. Silikal
GMBH & Co., 46 F.4th 1317, 1331 (11th Cir. 2022). That
the district judge had previously ruled adversely against
HCM does not warrant the “severe remedy” of reassign-
ment here. Comparelli v. Republica Bolivariana De Vene-
zuela, 891 F.3d 1311, 1328 (11th Cir. 2018). Accordingly,
we deny HCM’s request for reassignment on remand.
CONCLUSION
For the above reasons, we reverse the district court’s
dismissal of HCM’s original complaint and its denial of
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PHILIP MORRIS USA, INC.
HCM’s motion for leave to amend its complaint. Accord-
ingly, we vacate the award of attorneys’ fees. We remand
the case to the district court for further proceedings con-
sistent with this opinion.
REVERSED AND REMANDED
COSTS
No costs.