Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 1 of 53 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`
`FONTEM VENTURES B.V.,
`FONTEM HOLDINGS 1 B.V.,
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`Plaintiffs,
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`ECO-CIGS, INC.,
`
`
`v.
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`Defendant.
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`Civil Action No.: 1:20-cv-06050
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`Jury Trial Demanded
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`COMPLAINT
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`Plaintiffs Fontem Ventures B.V. (“Fontem Ventures”) and Fontem Holdings 1 B.V.
`
`(“Fontem Holdings”) (together, “Fontem” or “Plaintiffs”) allege the following claims against
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`Defendant Eco-Cigs, Inc. (“Eco-Cigs” or “Defendant”):
`
`THE PARTIES
`
`1.
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`Plaintiff Fontem Ventures is a company organized and existing under the laws of
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`the Netherlands, with its principal place of business at Radarweg 60, Amsterdam, 1043 NT, The
`
`Netherlands. Fontem Ventures is in the business of developing and selling innovative non-
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`tobacco products, including electronic cigarettes.
`
`2.
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`Plaintiff Fontem Holdings is a company organized and existing under the laws of
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`the Netherlands, with its principal place of business at Radarweg 60, Amsterdam, 1043 NT, The
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`Netherlands.
`
`3.
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`Upon information and belief, Defendant Eco-Cigs is an Illinois Corporation, with
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`its principal place of business located at 453 W Fullerton Ave. Elmhurst IL 60126 or 8725
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`Keystone Ave., Skokie, Illinois 60076. Upon information and belief, Eco-Cigs does business in
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`this judicial district related to the claims asserted in this Complaint.
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`4.
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`Upon information and belief, Defendant makes, sells, offers for sale in the United
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`States, and/or imports into the United States, electronic vaping devices, including electronic
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`cigarettes.
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`JURISDICTION AND VENUE
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`5.
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`This is a civil action for patent infringement arising under Title 35 of the United
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`States Code, and in particular 35 U.S.C. §§ 271, 282, 284, and 285.
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`6.
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`This Court has subject matter jurisdiction over this patent infringement action
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`under 28 U.S.C. §§ 1331 and 1338(a).
`
`7.
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`This Court has personal jurisdiction over Defendant because it is registered to do
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`business in Illinois, it solicits and conducts business in Illinois, including the provision of goods,
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`derives revenue from goods sold in Illinois and within this judicial district, and has committed
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`acts of infringement in this judicial district, including, but not limited to, offering to sell and
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`selling the accused products in this judicial district.
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`8.
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`Venue lies in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and (c), and
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`1400(b).
`
`PATENTS-IN-SUIT
`
`9.
`
`Plaintiffs bring this action against Defendant for infringement of U.S. Patent No.
`
`8,365,742 (“the ’742 Patent”) (Exhibit 1), U.S. Patent No. 8,375,957 (“the ’957 Patent”) (Exhibit
`
`2), U.S. Patent No. 8,490,628 (“the ’628 Patent”) (Exhibit 3), U.S. Patent No. 8,863,752 (“the
`
`’752 Patent”) (Exhibit 4), U.S. Patent No. 8,893,726 (“the ’726 Patent”) (Exhibit 5), U.S. Patent
`
`No. 9,320,300 (“the ’300 Patent”) (Exhibit 6), U.S. Patent No. 9,326,549 (“the ’549 Patent”)
`
`(Exhibit 7), U.S. Patent No. 9,326,550 (“the ’550 Patent”) (Exhibit 8), U.S. Patent No. 9,326,551
`
`(“the ’551 Patent”) (Exhibit 9), U.S. Patent No. 9,339,062 (“the ’062 Patent”) (Exhibit 10), U.S.
`
`Patent No. 9,364,027 (“the ’027 Patent”) (Exhibit 11), U.S. Patent No. 9,370,205 (“the ’205
`
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`Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 3 of 53 PageID #:3
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`Patent”) (Exhibit 12), U.S. Patent No. 9,456,632 (“the ’632 Patent”) (Exhibit 13), U.S. Patent
`
`No. 9,717,278 (“the ’278 Patent”) (Exhibit 14), U.S. Patent No. 10,143,238 (“the ’238 Patent”)
`
`(Exhibit 15), U.S. Patent No. 10,178,881 (“the ’881 Patent”) (Exhibit 16), U.S. Patent No.
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`10,238,144 (“the ’144 Patent”) (Exhibit 17), U.S. Patent No. 10,327,478 (“the ’478 Patent”)
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`(Exhibit 18), and U.S. Patent No. 10,349,682 (“the ’682 Patent”) (Exhibit 19) (collectively, the
`
`“Patents-in-Suit”).
`
`10.
`
`The nineteen (19) Patents-in-Suit relate to electronic vaping devices that create
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`inhalable vapor without tar to provide the habitual actions of smoking missing in nicotine
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`substitutes like the patch and gum.
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`DEFENDANT’S KNOWLEDGE OF THE PATENTS-IN-SUIT
`
`11.
`
`Plaintiffs previously filed patent infringement actions based upon many of the
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`Patents-in-Suit against many other companies including some of the largest companies in the
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`vaping industry in the following consolidated District Court cases: Fontem Ventures B.V. et al. v.
`
`NJOY, Inc. et al., Case No. 2:14-cv-01645 (C.D. Cal.) (lead case), Fontem Ventures B.V. v. Nu
`
`Mark LLC, Case No. 1:16-cv-01261 (M.D.N.C) (lead case), and Fontem Ventures B.V. v. R.J.
`
`Reynolds Vapor Co., Case No. 1:16-cv-01255 (M.D.N.C) (lead case) (together, “Plaintiffs’ prior
`
`patent infringement actions”). Plaintiffs’ prior patent infringement actions were well publicized
`
`in the vaping industry and involved products similar to Defendant’s products. Upon information
`
`and belief, Defendant had prior knowledge of Plaintiffs’ previous patent infringement actions or
`
`had been willfully blind thereto, prior knowledge of the patents asserted in those actions or had
`
`been willfully blind thereto, and prior knowledge of Plaintiffs’' rights in the asserted patents or
`
`had been willfully blind thereto.
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`12.
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`Upon information and belief, Defendant has monitored Plaintiffs’ patents and
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`related patent applications because of Plaintiffs’ prior patent infringement actions, and thus had
`
`prior knowledge of the patents that were not asserted in the prior patent infringement actions,
`
`including Plaintiffs’ rights in those patents, or had been willfully blind thereto.
`
`13.
`
`On September 25, 2020, October 2, 2020, and October 6, 2020, counsel for
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`Fontem sent a cease and desist letter to the Defendant (“the Demand Letter”, attached as Exhibit
`
`A) demanding that Defendant immediately cease and desist from selling its ECO-CIGS
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`electronic cigarette devices—including Rechargeable and Sapphyre products—because each
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`such product infringes at least one or more of the Patents-in-Suit. The Demand Letter identifies
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`the Patents-in-Suit and states that a claim chart demonstrating how the ECO-CIGS electronic
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`cigarette devices infringe a representative claim from each of the Patents-in-Suit is attached
`
`thereto. Representative claim charts are attached as exhibits as indicated in each of Counts I–
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`XIX below.
`
`14.
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`To date, neither Fontem nor its counsel have received any response from
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`Defendant to the Demand Letter.
`
`15.
`
`Upon information and belief, Defendant continues to sell the ECO-CIGS
`
`electronic cigarette devices despite having actual notice that those devices infringe the Patents-
`
`in-Suit upon receipt of the Demand Letter.
`
`COUNT I
`Patent Infringement of U.S. Patent No. 8,365,742
`
`16.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs Error!
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`Reference source not found.–15 above.
`
`17.
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`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’742 Patent (Exhibit 1). Fontem Holdings has granted Fontem Ventures an exclusive
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`license to the ’742 Patent, including the right to sublicense the ’742 Patent. The ’742 Patent was
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`duly and legally issued by the USPTO on February 5, 2013, and is valid, subsisting, and in full
`
`force and effect.
`
`18.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’742 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’742 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`19.
`
`Examples of products that directly infringe the ’742 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’742 Patent is attached as Exhibit 1A.
`
`20.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’742 Patent because Plaintiffs have marked the packaging of their products embodying the ’742
`
`Patent in accordance with 35 U.S.C. § 287.
`
`21.
`
`Upon information and belief, Defendant had prior knowledge of the ’742 Patent,
`
`and of Plaintiffs’ rights therein, or had been willfully blind thereto, based upon the Plaintiffs’
`
`prior patent infringement actions brought against other companies in the vaping industry.
`
`Defendant also had actual knowledge of the ’742 Patent, and of Plaintiffs’ rights therein, upon
`
`receipt of the Demand Letter.
`
`22.
`
`Having prior knowledge of the ’742 Patent, Defendant has also contributed to the
`
`infringement of the ’742 Patent in violation of 35 U.S.C. § 271(c) by, itself and/or through its
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`agents, contributing to the direct infringement of the ’742 Patent by its customers by unlawfully
`
`and wrongfully making, using, importing, offering to sell, and/or selling components of the
`
`accused ECO-CIGS Products having no substantially non-infringing use, which, when used by
`
`its customers, result in direct infringement of the ’742 Patent, within, from and/or into the United
`
`States without permission or license from Plaintiffs, and will continue to do so unless enjoined
`
`by this Court.
`
`23.
`
`Examples of ECO-CIGS Product components that have no substantial non-
`
`infringing uses and that contribute to the direct infringement of the ’742 Patent include, but are
`
`not limited to, (1) ECO-CIGS Cartridges, (2) ECO-CIGS Rechargeable Batteries, (3) ECO-CIGS
`
`Chargers, (4) Sapphyre Vapes Tanks, (5) Sapphyre Vapes NicMix, and (6) Sapphyre Vapes
`
`Flavor Drops, none of which are staple articles or commodities of commerce suitable for
`
`substantial non-infringing use.
`
`24.
`
`As a direct and proximate result of the foregoing acts of Defendant, Plaintiffs
`
`have suffered, and are entitled to, monetary damages in an amount not yet determined, which
`
`include but are not limited to, lost profits on the infringing sales Plaintiffs may have made and
`
`reasonable royalties on sales not made. Plaintiffs are also entitled to their costs of suit and
`
`interest.
`
`25.
`
`Defendant’s continuing infringement has inflicted and, unless restrained by this
`
`Court, will continue to inflict irreparable harm upon Plaintiffs, such as reduction of Plaintiffs’
`
`proper market share and deprivation of Plaintiffs’ rights to exclude others. Plaintiffs have no
`
`adequate remedy at law. Plaintiffs are entitled to injunctive relief enjoining Defendant from
`
`engaging in further acts of infringement.
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`26.
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`In view of Defendant’s knowledge of the ’742 Patent, Defendant has proceeded to
`
`infringe the ’742 Patent despite a high probability that its actions constituted infringement of a
`
`valid patent. Thus, Defendant’s infringement of the ’742 Patent is willful and deliberate. That
`
`egregious infringement behavior entitles Plaintiffs to increased damages under 35 U.S.C. § 284,
`
`and to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT II
`Patent Infringement of U.S. Patent No. 8,375,957
`
`27.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs 1–15
`
`above.
`
`28.
`
`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’957 Patent (Exhibit 2). Fontem Holdings has granted Fontem Ventures an exclusive
`
`license to the ’957 Patent, including the right to sublicense the ’957 Patent. The ’957 Patent was
`
`duly and legally issued by the USPTO on February 19, 2013, and is valid, subsisting, and in full
`
`force and effect.
`
`29.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’957 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’957 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`30.
`
`Examples of products that directly infringe the ’957 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’957 Patent is attached as Exhibit 2A.
`
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`31.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’957 Patent because Plaintiffs have marked the packaging of their products embodying the ’957
`
`Patent in accordance with 35 U.S.C. § 287.
`
`32.
`
`Upon information and belief, Defendant had prior knowledge of the ’957 Patent,
`
`and of Plaintiffs’ rights therein, or had been willfully blind thereto, based upon the Plaintiffs’
`
`prior patent infringement actions brought against other companies in the vaping industry.
`
`Defendant also had actual knowledge of the ’957 Patent, and of Plaintiffs’ rights therein, upon
`
`receipt of the Demand Letter.
`
`33.
`
`Having prior knowledge of the ’957 Patent, Defendant has also contributed to the
`
`infringement of the ’957 Patent in violation of 35 U.S.C. § 271(c) by, itself and/or through its
`
`agents, contributing to the direct infringement of the ’957 Patent by its customers by unlawfully
`
`and wrongfully making, using, importing, offering to sell, and/or selling components of the
`
`accused ECO-CIGS Products having no substantially non-infringing use, which, when used by
`
`its customers, result in direct infringement of the ’957 Patent, within, from and/or into the United
`
`States without permission or license from Plaintiffs, and will continue to do so unless enjoined
`
`by this Court.
`
`34.
`
`Examples of ECO-CIGS Product components that have no substantial non-
`
`infringing uses and that contribute to the direct infringement of the ’957 Patent include, but are
`
`not limited to, (1) ECO-CIGS Cartridges, (2) ECO-CIGS Rechargeable Batteries, (3) ECO-CIGS
`
`Chargers, (4) Sapphyre Vapes Tanks, (5) Sapphyre Vapes NicMix, and (6) Sapphyre Vapes
`
`Flavor Drops, none of which are staple articles or commodities of commerce suitable for
`
`substantial non-infringing use.
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`35.
`
`As a direct and proximate result of the foregoing acts of Defendant, Plaintiffs
`
`have suffered, and are entitled to, monetary damages in an amount not yet determined, which
`
`include but are not limited to, lost profits on the infringing sales Plaintiffs may have made and
`
`reasonable royalties on sales not made. Plaintiffs are also entitled to their costs of suit and
`
`interest.
`
`36.
`
`Defendant’s continuing infringement has inflicted and, unless restrained by this
`
`Court, will continue to inflict irreparable harm upon Plaintiffs, such as reduction of Plaintiffs’
`
`proper market share and deprivation of Plaintiffs’ rights to exclude others. Plaintiffs have no
`
`adequate remedy at law. Plaintiffs are entitled to injunctive relief enjoining Defendant from
`
`engaging in further acts of infringement.
`
`37.
`
`In view of Defendant’s knowledge of the ’957 Patent, Defendant has proceeded to
`
`infringe the ’957 Patent despite a high probability that its actions constituted infringement of a
`
`valid patent. Thus, Defendant’s infringement of the ’957 Patent is willful and deliberate. That
`
`egregious infringement behavior entitles Plaintiffs to increased damages under 35 U.S.C. § 284,
`
`and to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT III
`Patent Infringement of U.S. Patent No. 8,490,628
`
`38.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs 1–15
`
`above.
`
`39.
`
`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’628 Patent (Exhibit 3). Fontem Holdings has granted Fontem Ventures an exclusive
`
`license to the ’628 Patent, including the right to sublicense the ’628 Patent. The ’628 Patent was
`
`duly and legally issued by the USPTO on July 23, 2013, and is valid, subsisting, and in full force
`
`and effect.
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`40.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’628 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’628 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`41.
`
`Examples of products that directly infringe the ’628 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’628 Patent is attached as Exhibit 3A.
`
`42.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’628 Patent because Plaintiffs have marked the packaging of their products embodying the ’628
`
`Patent in accordance with 35 U.S.C. § 287.
`
`43.
`
`Upon information and belief, Defendant had prior knowledge of the ’628 Patent,
`
`and of Plaintiffs’ rights therein, or had been willfully blind thereto, based upon the Plaintiffs’
`
`prior patent infringement actions brought against other companies in the vaping industry.
`
`Defendant also had actual knowledge of the ’628 Patent, and of Plaintiffs’ rights therein, upon
`
`receipt of the Demand Letter.
`
`44.
`
`Having prior knowledge of the ’628 Patent, Defendant has also contributed to the
`
`infringement of the ’628 Patent in violation of 35 U.S.C. § 271(c) by, itself and/or through its
`
`agents, contributing to the direct infringement of the ’628 Patent by its customers by unlawfully
`
`and wrongfully making, using, importing, offering to sell, and/or selling components of the
`
`accused ECO-CIGS Products having no substantially non-infringing use, which, when used by
`
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`its customers, result in direct infringement of the ’628 Patent, within, from and/or into the United
`
`States without permission or license from Plaintiffs, and will continue to do so unless enjoined
`
`by this Court.
`
`45.
`
`Examples of ECO-CIGS Product components that have no substantial non-
`
`infringing uses and that contribute to the direct infringement of the ’628 Patent include, but are
`
`not limited to, (1) ECO-CIGS Cartridges, (2) ECO-CIGS Rechargeable Batteries, (3) ECO-CIGS
`
`Chargers, (4) Sapphyre Vapes Tanks, (5) Sapphyre Vapes NicMix, and (6) Sapphyre Vapes
`
`Flavor Drops, none of which are staple articles or commodities of commerce suitable for
`
`substantial non-infringing use.
`
`46.
`
`As a direct and proximate result of the foregoing acts of Defendant, Plaintiffs
`
`have suffered, and are entitled to, monetary damages in an amount not yet determined, which
`
`include but are not limited to, lost profits on the infringing sales Plaintiffs may have made and
`
`reasonable royalties on sales not made. Plaintiffs are also entitled to their costs of suit and
`
`interest.
`
`47.
`
`Defendant’s continuing infringement has inflicted and, unless restrained by this
`
`Court, will continue to inflict irreparable harm upon Plaintiffs, such as reduction of Plaintiffs’
`
`proper market share and deprivation of Plaintiffs’ rights to exclude others. Plaintiffs have no
`
`adequate remedy at law. Plaintiffs are entitled to injunctive relief enjoining Defendant from
`
`engaging in further acts of infringement.
`
`48.
`
`In view of Defendant’s knowledge of the ’628 Patent, Defendant has proceeded to
`
`infringe the ’628 Patent despite a high probability that its actions constituted infringement of a
`
`valid patent. Thus, Defendant’s infringement of the ’628 Patent is willful and deliberate. That
`
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`egregious infringement behavior entitles Plaintiffs to increased damages under 35 U.S.C. § 284,
`
`and to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT IV
`Patent Infringement of U.S. Patent No. 8,863,752
`
`49.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs 1–15
`
`above.
`
`50.
`
`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’752 Patent (Exhibit 4). Fontem Holdings has granted Fontem Ventures an exclusive
`
`license to the ’752 Patent, including the right to sublicense the ’752 Patent. The ’752 Patent was
`
`duly and legally issued by the USPTO on October 21, 2014, and is valid, subsisting, and in full
`
`force and effect.
`
`51.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’752 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’752 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`52.
`
`Examples of products that directly infringe the ’752 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’752 Patent is attached as Exhibit 4A.
`
`53.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’752 Patent because Plaintiffs have marked the packaging of their products embodying the ’752
`
`Patent in accordance with 35 U.S.C. § 287.
`
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`54.
`
`Upon information and belief, Defendant had prior knowledge of the ’752 Patent,
`
`and of Plaintiffs’ rights therein, or had been willfully blind thereto, based upon the Plaintiffs’
`
`prior patent infringement actions brought against other companies in the vaping industry.
`
`Defendant also had actual knowledge of the ’752 Patent, and of Plaintiffs’ rights therein, upon
`
`receipt of the Demand Letter.
`
`55.
`
`Having prior knowledge of the ’752 Patent, Defendant has also contributed to the
`
`infringement of the ’752 Patent in violation of 35 U.S.C. § 271(c) by, itself and/or through its
`
`agents, contributing to the direct infringement of the ’752 Patent by its customers by unlawfully
`
`and wrongfully making, using, importing, offering to sell, and/or selling components of the
`
`accused ECO-CIGS Products having no substantially non-infringing use, which, when used by
`
`its customers, result in direct infringement of the ’752 Patent, within, from and/or into the United
`
`States without permission or license from Plaintiffs, and will continue to do so unless enjoined
`
`by this Court.
`
`56.
`
`Examples of ECO-CIGS Product components that have no substantial non-
`
`infringing uses and that contribute to the direct infringement of the ’752 Patent include, but are
`
`not limited to, (1) ECO-CIGS Cartridges, (2) ECO-CIGS Rechargeable Batteries, (3) ECO-CIGS
`
`Chargers, (4) Sapphyre Vapes Tanks, (5) Sapphyre Vapes NicMix, and (6) Sapphyre Vapes
`
`Flavor Drops, none of which are staple articles or commodities of commerce suitable for
`
`substantial non-infringing use.
`
`57.
`
`As a direct and proximate result of the foregoing acts of Defendant, Plaintiffs
`
`have suffered, and are entitled to, monetary damages in an amount not yet determined, which
`
`include but are not limited to, lost profits on the infringing sales Plaintiffs may have made and
`
`
`
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`Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 14 of 53 PageID #:14
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`reasonable royalties on sales not made. Plaintiffs are also entitled to their costs of suit and
`
`interest.
`
`58.
`
`Defendant’s continuing infringement has inflicted and, unless restrained by this
`
`Court, will continue to inflict irreparable harm upon Plaintiffs, such as reduction of Plaintiffs’
`
`proper market share and deprivation of Plaintiffs’ rights to exclude others. Plaintiffs have no
`
`adequate remedy at law. Plaintiffs are entitled to injunctive relief enjoining Defendant from
`
`engaging in further acts of infringement.
`
`59.
`
`In view of Defendant’s knowledge of the ’752 Patent, Defendant has proceeded to
`
`infringe the ’752 Patent despite a high probability that its actions constituted infringement of a
`
`valid patent. Thus, Defendant’s infringement of the ’752 Patent is willful and deliberate. That
`
`egregious infringement behavior entitles Plaintiffs to increased damages under 35 U.S.C. § 284,
`
`and to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT V
`Patent Infringement of U.S. Patent No. 8,893,726
`
`60.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs 1–15
`
`above.
`
`61.
`
`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’726 Patent (Exhibit 5). Fontem Holdings has granted Fontem Ventures an exclusive
`
`license to the ’726 Patent, including the right to sublicense the ’726 Patent. The ’726 Patent was
`
`duly and legally issued by the USPTO on November 25, 2014, and is valid, subsisting, and in
`
`full force and effect.
`
`62.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’726 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`
`
`
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`Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 15 of 53 PageID #:15
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’726 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`63.
`
`Examples of products that directly infringe the ’726 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’726 Patent is attached as Exhibit 5A.
`
`64.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’726 Patent because Plaintiffs have marked the packaging of their products embodying the ’726
`
`Patent in accordance with 35 U.S.C. § 287.
`
`65.
`
`Upon information and belief, Defendant had prior knowledge of the ’726 Patent,
`
`and of Plaintiffs’ rights therein, or had been willfully blind thereto, based upon the Plaintiffs’
`
`prior patent infringement actions brought against other companies in the vaping industry.
`
`Defendant also had actual knowledge of the ’726 Patent, and of Plaintiffs’ rights therein, upon
`
`receipt of the Demand Letter.
`
`66.
`
`Having prior knowledge of the ’726 Patent, Defendant has also contributed to the
`
`infringement of the ’726 Patent in violation of 35 U.S.C. § 271(c) by, itself and/or through its
`
`agents, contributing to the direct infringement of the ’726 Patent by its customers by unlawfully
`
`and wrongfully making, using, importing, offering to sell, and/or selling components of the
`
`accused ECO-CIGS Products having no substantially non-infringing use, which, when used by
`
`its customers, result in direct infringement of the ’726 Patent, within, from and/or into the United
`
`States without permission or license from Plaintiffs, and will continue to do so unless enjoined
`
`by this Court.
`
`
`
`
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`Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 16 of 53 PageID #:16
`
`67.
`
`Examples of ECO-CIGS Product components that have no substantial non-
`
`infringing uses and that contribute to the direct infringement of the ’726 Patent include, but are
`
`not limited to, (1) ECO-CIGS Cartridges, (2) ECO-CIGS Rechargeable Batteries, (3) ECO-CIGS
`
`Chargers, (4) Sapphyre Vapes Tanks, (5) Sapphyre Vapes NicMix, and (6) Sapphyre Vapes
`
`Flavor Drops, none of which are staple articles or commodities of commerce suitable for
`
`substantial non-infringing use.
`
`68.
`
`As a direct and proximate result of the foregoing acts of Defendant, Plaintiffs
`
`have suffered, and are entitled to, monetary damages in an amount not yet determined, which
`
`include but are not limited to, lost profits on the infringing sales Plaintiffs may have made and
`
`reasonable royalties on sales not made. Plaintiffs are also entitled to their costs of suit and
`
`interest.
`
`69.
`
`Defendant’s continuing infringement has inflicted and, unless restrained by this
`
`Court, will continue to inflict irreparable harm upon Plaintiffs, such as reduction of Plaintiffs’
`
`proper market share and deprivation of Plaintiffs’ rights to exclude others. Plaintiffs have no
`
`adequate remedy at law. Plaintiffs are entitled to injunctive relief enjoining Defendant from
`
`engaging in further acts of infringement.
`
`70.
`
`In view of Defendant’s knowledge of the ’726 Patent, Defendant has proceeded to
`
`infringe the ’726 Patent despite a high probability that its actions constituted infringement of a
`
`valid patent. Thus, Defendant’s infringement of the ’726 Patent is willful and deliberate. That
`
`egregious infringement behavior entitles Plaintiffs to increased damages under 35 U.S.C. § 284,
`
`and to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`
`
`
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`
`
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`

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`Case: 1:20-cv-06050 Document #: 1 Filed: 10/09/20 Page 17 of 53 PageID #:17
`
`COUNT VI
`Patent Infringement of U.S. Patent No. 9,320,300
`
`71.
`
`Plaintiffs incorporate by reference the allegations contained in paragraphs 1–15
`
`above.
`
`72.
`
`Plaintiff Fontem Holdings is the owner of the entire right, title, and interest in and
`
`to the ’300 Patent (Exhibit 6). Fontem Holdings has granted Fontem Ventures an exclusive
`
`license to the ’300 Patent, including the right to sublicense the ’300 Patent. The ’300 Patent was
`
`duly and legally issued by the USPTO on April 26, 2016, and is valid, subsisting, and in full
`
`force and effect.
`
`73.
`
`Defendant has directly infringed, literally and/or under the doctrine of
`
`equivalents, one or more claims of the ’300 Patent in violation of 35 U.S.C. § 271(a) by, itself
`
`and/or through its agents, unlawfully and wrongfully making, using, importing, offering to sell,
`
`and/or selling electronic cigarette products embodying one or more of the inventions claimed in
`
`the ’300 Patent, within, from and/or into the United States without permission or license from
`
`Plaintiffs, and will continue to do so unless enjoined by this Court.
`
`74.
`
`Examples of products that directly infringe the ’300 Patent include, but are not
`
`limited to, ECO-CIGS Rechargeable products and Sapphyre products (collectively, “the ECO-
`
`CIGS Products”). A representative claim chart demonstrating how the ECO-CIGS Products
`
`infringe a representative claim of the ’300 Patent is attached as Exhibit 6A.
`
`75.
`
`At all relevant times, Defendant and the public in general have had notice of the
`
`’300 Patent because Plaintiffs have marked