PUBLIC - EXHIBITS CONTAIN REDACTED MATERIAL
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable MaryJoan McNamara
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-1211
`
`JOINT MOTION TO TERMINATE THE INVESTIGATION AS TO
`CORK & TWIST, INC. DOING BUSINESS AS VAPE ‘N GLASS
`
`Pursuant to 19 U.S.C. § 1337(c) and 19 C.F.R. § 210.21(c)(1)(ii), Complainant Juul Labs,
`
`Inc. (“Complainant,” or “JLI”) and Respondent Cork & Twist, Inc. d/b/a Vape ‘N Glass
`
`(“Respondent” or “Vape ‘n Glass”), jointly move to terminate the investigation as to Vape ‘n
`
`Glass.
`
`JLI and Vape ‘n Glass submit that the attached Consent Order Stipulation (Exhibit A) and
`
`Proposed Consent Order (Exhibit B) satisfy the requirements of Rule 210.21(c) and that
`
`termination is in the public interest. A copy of the parties’ confidential settlement agreement is
`
`also attached as confidential Exhibit C. JLI and Vape ‘n Glass state that there are no other
`
`agreements, written or oral, express or implied, relating to the subject matter of this
`
`Investigation. Accordingly, JLI and Vape ‘n Glass request that the Administrative Law Judge
`
`issue an initial determination terminating this investigation with respect to Respondent Vape ‘n
`
`Glass on the basis of the consent order pursuant to 19 C.F.R. § 210.21(c).
`
`I.
`
`FACTUAL BACKGROUND
`
`The Commission instituted this Investigation and named Vape ‘n Glass as a Respondent
`
`on August 14, 2020, by publication in the Federal Register based on a complaint filed by JLI on
`
`July 10, 2020. See 85 FR 49679. JLI’s complaint alleged a violation of Section 337 of the Tariff
`
`1
`
`

`

`Act of 1930, as amended, by reason of the importation into the United States, sale for
`
`importation, or sale within the United States after importation of certain vaporizer cartridges and
`
`components thereof (the “Accused Products”) that infringe each of the sole claims of U.S. Patent
`
`Nos. D842,536; D858,870; D858,869; and D858,868.
`
`Vape ‘n Glass executed a Consent Order Stipulation that meets the requirements of 19
`
`C.F.R. § 210.21(c). Vape ‘n Glass agrees that upon entry of the Proposed Consent Order by the
`
`Commission, it will not sell for importation, import into the United States, or sell in the United
`
`States after importation, directly or indirectly, or aid, abet, encourage, participate in, or induce
`
`the sale or importation of the Accused Products, except under consent or license by JLI. JLI and
`
`Vape ‘n Glass executed a settlement agreement that is attached as confidential Exhibit C.
`
`II.
`
`ARGUMENT
`
`It is in the interest of the public and administrative economy to grant the present motion.
`
`Commission policy and the public interest generally favor resolving litigation through
`
`mechanisms such as consent orders to conserve both public and private resources. See, e.g.,
`
`Certain Height-Adjustable Desk Platforms and Components Thereof, Inv. No. 337-TA-1125,
`
`Order No. 13 at 4 (Sept. 24, 2018) (finding termination of respondent based on a consent order
`
`“in the public interest, which favors settlement to avoid needless litigation and to conserve public
`
`resources”); Certain Air Mattress Bed Systems and Components Thereof, Inv. No. 337-TA-999,
`
`Order No. 9 at 4 (Nov. 18, 2016) (noting the “significant public interest benefits” in resolving the
`
`litigation through the proposed consent order).
`
`JLI and Vape ‘n Glass submit that entry of the Proposed Consent Order (Exhibit B) and
`
`termination of this Investigation with respect to Vape ‘n Glass are in the public interest.
`
`Entering the Consent Order will promote administrative economy by obviating the need for a
`
`2
`
`

`

`determination with respect to Vape ‘n Glass’s activities as they concern the Accused Products.
`
`Moreover, entering the attached Consent Order will not impose an undue burden on the public
`
`health and welfare, competitive conditions in the U.S. economy, production of like or directly
`
`competitive articles in the United States, or U.S. consumers. Commission policy and the public
`
`interest generally favor resolving litigation, which preserve resources for both the Commission
`
`and the private parties
`
`Moreover, JLI and Vape ‘n Glass are not aware of any adverse effects that their
`
`settlement agreement would have on the public interest. See Certain Lithium Silicate Materials
`
`and Products Containing the Same, Inv. No. 337-TA-911, Order No. 16 at 2 (Nov. 10, 2014)
`
`(finding that termination based on settlement would not be contrary to the public interest, and
`
`that “termination of litigation under these circumstances as an alternative method of dispute
`
`resolution is generally in the public interest and will conserve public and private resources”).
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, JLI and Vape ‘n Glass request that the Investigation be
`
`terminated with respect to Vape ‘n Glass based on consent order pursuant to Commission Rule
`
`210.21(c).
`
`GROUND RULE 2.2 CERTIFICATION
`
`Pursuant to Ground Rule 2.2, counsel for JLI informed all Respondents who have entered
`
`an appearance in this case—2nd Wife Vape, Aqua Haze LLC, EZFumes, Price Point NY,
`
`Vaperistas, LLC, Wireless N Vapor Citi, LLC, Tobacco Alley of Midland, Tobacco Club &
`
`Gifts, Inc. d/b/a Carytown Tobacco, Midwest Goods Inc., eJuiceDB, Smoker’s Express—and the
`
`Commission Investigative Staff of this Motion at least two days before filing. Respondents 2nd
`
`Wife Vape, Aqua Haze LLC, EZFumes, Tobacco Club & Gifts, Inc. d/b/a Carytown Tobacco,
`
`3
`
`

`

`eJuiceDB, Midwest Goods Inc., Tobacco Alley of Midland, and Vaperistas, LLC do not oppose
`
`this motion. The Staff indicated it will take a position on the papers. JLI received no response
`
`from Respondents Price Point NY, Wireless N Vapor Citi, LLC and Smoker’s Express.
`
`Dated: November 12, 2020
`
` Respectfully submitted,
`
` /s/ Roshani Patel
`
` /s/ S. Alex Lasher
`
`Roshani Patel, CEO/Owner
`Cork & Twist DBA Vape ‘n Glass
`283 N Barrington Rd
`Streamwood, IL 60107
`(630) 379-6385
`
`Representative for Respondent Vape ‘n Glass
`
`S. Alex Lasher
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`1300 I Street, NW, Suite 900
`Washington, D.C. 20005
`Tel.: (202) 538-8000
`Fax: (202) 538-8100
`
`Kevin P.B. Johnson
`Victoria F. Maroulis
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`555 Twin Dolphin Dr., 5th Floor
`Redwood Shores, CA 94065
`Tel.: (650) 801-5000
`Fax: (650) 801-5100
`
`Andrew M. Holmes
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel.: (415) 875-6600
`Fax: (415) 875-6700
`
`Counsel for Complainant Juul Labs, Inc.
`
`4
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable MaryJoan McNamara
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-1211
`
`REQUEST FOR CONFIDENTIAL TREATMENT OF EXHIBIT C AND LIMITED
`SERVICE THEREOF
`
`Pursuant to Ground Rule 1.6, Complainant and Respondent Vape ‘n Glass request that
`
`the parties’ settlement agreement, attached as Exhibit C to this Motion, be treated in its entirety
`
`as confidential information, and that service of the parties’ unredacted agreement be limited to
`
`Complainant, Respondent Vape ‘n Glass and the Staff.
`
`I certify that this settlement agreement should be considered confidential business
`
`information pursuant to 19 C.F.R. § 201.6(a) at least because:
`
`1.
`
`2.
`
`Substantially-identical information is not available to the public;
`
`The disclosure of this information would cause substantial competitive
`
`harm to Complainant and Vape ‘n Glass;
`
`3.
`
`The disclosure of this information would breach existing nondisclosure
`
`agreements between Complainant and Vape ‘n Glass; and,
`
`4.
`
`The disclosure of this information would likely impede the Commission's
`
`efforts and ability to obtain similar information in the future.
`
`5
`
`

`

`Indeed, settlement agreements are routinely treated as confidential business information
`
`pursuant to 19 C.F.R. § 201.6(a), and service is frequently limited only to the signatories of the
`
`agreement and the Staff. See, e.g., Certain Power Covered Plates, Inv. No. 337-TA-1124, Order
`
`No. 36 at 5 (April 11, 2019) (granting the parties’ request to limit service of an unredacted
`
`settlement agreement to the signatories and the Staff); Certain Machine Vision Software,
`
`Machine Vision Systems, and Products Containing the Same, Inv. No. 337-TA-680, Order No.
`
`17 (Initial Determination) (October 26, 2009) (holding that counsel for non-settling respondents
`
`were not entitled to receive unredacted financial terms of settlement).
`
`Please do not hesitate to contact me with any questions about this request.
`
` /s/ S. Alex Lasher
`
`S. Alex Lasher
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`1300 I Street, NW, Suite 900
`Washington, D.C. 20005
`Tel.: (202) 538-8000
`Fax: (202) 538-8100
`
`6
`
`

`

`EXHIBIT A
` Consent Order Stipulation
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC.
`
`Before the Honorable MaryJoan McNamara
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN VAPORIZER CARTRIDGES
`
`AND COMPONENTS THEREOF
`
`
`
`Investigation No. 337-TA- 121 1
`
`CONSENT ORDER STIPULATION
`
`WHEREAS, the United States International Trade Commission on August 10, 2020 ([insert
`
`fed. Reg. cite]), instituted the above-captioned investigation under Section 337 of the Tariff Act
`
`of 1930, as amended, (19 U.S.C. § 1337) based upon complaint filed by Complainant Juul Labs,
`
`Inc. (“JLI”), which alleged unfair acts in the importation into the United States, the sale for
`
`importation into the United States, and the sale within the United States after importation of
`
`certain vaporizer cartridges and components thereof, by, among others, Respondent Vape ‘n
`
`Glass, (“Vape ‘n Glass”), in violation of Section 337 with respect to the sole claim of each of
`
`US. Patent Nos. D842,536 (“’536”), D858,870 (“’870”), D858,869 (“’869”), D858,868 (“’868”)
`
`(collectively the “Asserted Claims”);
`
`WHEREAS, Vape ‘n Glass is willing to accept entry of the Consent Order submitted
`
`concurrently herewith by the International Trade Commission and agrees to all waivers and other
`
`provisions as required by 19 CPR. § 210.21; and
`
`WHEREAS, Vape ‘n Glass agrees to all terms set forth in the Consent Order.
`
`IT IS HEREBY STIPULATED by Vape ‘n Glass in support of the Joint Motion for an
`
`Order Terminating the Investigation as to Vape ‘n Glass by Entry of a Consent Order as follows:
`
`

`

`l.
`
`The Commission has subject matter jurisdiction over this investigation. The
`
`Commission has in rem jurisdiction over the accused vaporizer cartridges and components
`
`thereof that are the subject of the complaint in this investigation. The Commission also has in
`
`personam jurisdiction over Vape ‘n Glass for purposes of this Stipulation and the proposed
`
`Consent Order by virtue of Vape ‘n Glass having appeared in this proceeding. Nothing in this
`
`Stipulation or the proposed Consent Order shall be construed as meaning that Vape ‘n Glass has
`
`submitted to the jurisdiction of any other court.
`
`2.
`
`Vape ‘11 Glass, including its officers, directors, employees, agents, and any entity
`
`or individual acting on its behalf and with its authority, agrees, upon entry of the Consent Order,
`
`that it will not sell for importation, import into the United States or sell in the United States after
`
`importation, directly or indirectly, or aid, abet, encourage, participate in, or induce the sale for
`
`importation, importation into the United States or sale in the United States after importation of
`
`vaporizer cartridges and components thereof that infringe any of the claims of the Asserted
`
`Claims, except under consent or license from JLI.
`
`3.
`
`Vape ‘n Glass does not have any existing U.S. inventories of vaporizer cartridges
`
`and components thereof
`
`4.
`
`Vape ‘n Glass expressly waives all right to seek judicial review or otherwise
`
`challenge the validity of the Consent Order.
`
`5.
`
`Vape ‘n Glass will cooperate with and will not seek to impede by litigation or
`
`other means the Commission's efforts to gather information under Subpart I of the Commission's
`
`Rules of Practice and Procedure, 19 C.F.R. Subchapter C, Part 210.
`
`

`

`6.
`
`The enforcement, modification and revocation of the Consent Order will be
`
`carried out pursuant to Subpart I of the Commission‘s Rules of Practice and Procedure, 19 C.F.R.
`
`Subchapter C, Part 210.
`
`7.
`
`The signing of this Stipulation is for settlement purposes only and does not
`
`constitute admission by Vape ‘n Glass that an infringement of the Asserted Claims and/or an
`
`unfair act has been committed.
`
`8.
`
`The Consent Order shall have the same force and effect and may be enforced,
`
`modified, or revoked in the same manner as is provided in section 337 of the Tariff Act of 1930
`
`and this part for other Commission actions, and the Commission may require periodic
`
`compliance reports pursuant to subpart I of this part to be submitted by Vape ‘n Glass.
`
`9.
`
`The Consent Order shall not apply if any asserted patent claim has expired or is
`
`held invalid or unenforceable by a court or agency of competent jurisdiction or if any article has
`
`been found or adjudicated not to infringe the asserted right in a final decision, no longer subject
`
`to appeal,
`
`this Consent Order shall become null and void as to such expired,
`
`invalid, or
`
`unenforceable claim or as to any adjudicated article.
`
`10.
`
`Vape ‘n Glass will not seek to challenge the validity or enforceability of the
`
`patents that form the basis for the complaint in any administrative or judicial proceeding to
`
`enforce the Consent Order.
`
`11.
`
`This Consent Order Stipulation and Consent Order are in the public interest.
`
`IT IS SO STIPULATED.
`
`10/30/2020
`Date: 10/30/2020
`
`Vape ‘n Glass
`283 N. Barrington Road
`
`

`

`Streamwood, Illinois 60107
`Tel: (630) 379-6385
`vape ljoint@gmail.com
`
`By: _Roshani Patel
`Its: _Owner
`
`

`

`EXHIBIT B
` Proposed Consent Order
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC.
`
`Before the Honorable MaryJoan McNamara
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN VAPORIZER CARTRIDGES
`
`AND COMPONENTS THEREOF
`
`
`
`Investigation No. 337-TA- 121 1
`
`IPROPOSEDI CONSENT ORDER
`
`The United States International Trade Commission on August 10, 2020 ([insert fed. Reg.
`
`cite]), instituted the above-captioned investigation under Section 337 of the Tariff Act of 1930,
`
`as amended, (19 U.S.C. § 1337) naming numerous respondents, including Vape ‘n Glass (“Vape
`
`‘n Glass”), based upon the complaint filed by Complainant Juul Labs, Inc. (“JLI”) that alleged
`
`unfair acts in the importation into the United States, the sale for importation into the United
`
`States, and the sale within the United States after importation of certain vaporizer cartridges and
`
`components thereof, by, among others, Respondent Vape ‘n Glass, in violation of Section 337
`
`with respect to the sole claim of each of United States Patent Nos. D842,536 (“’536”), D858,870
`
`(“’870”), D858,869 (“’869”), D858,868 (“’868”) (collectively the “Asserted Claims”).
`
`Vape ‘n Glass has executed a Consent Order Stipulation in which it agrees to the entry of
`
`this Consent Order and to all waivers and other provisions as required by Commission Rule of
`
`Practice and Procedure 210.21(c) (19 C.F.R. § 210.21(c)).
`
`JLI and Vape ‘11 Glass have filed a
`
`Joint Motion to Terminate the Investigation as to Vape ‘n Glass based on a Consent Order.
`
`IT IS HEREBY ORDERED THAT:
`
`1.
`
`Upon the entry of this Consent Order, Vape ‘n Glass shall not sell for importation,
`
`import into the United States, or sell in the United States after importation, directly or indirectly,
`
`

`

`or aid, abet, encourage, participate in, or induce the sale for importation, importation into the
`
`United States or sale in the United States after importation of certain vaporizer cartridges and
`
`components thereof that infiinge any of the claims of the Asserted Claims, except under consent
`
`or license from JLI.
`
`2.
`
`This Consent Order shall be applicable to and binding upon Vape ‘n Glass, their
`
`officers, directors, agents, servants, attorneys, employees, affiliates, and all persons, firms, or
`
`corporations acting or claiming to act on its behalf or under its direction or authority.
`
`3.
`
`Vape ‘n Glass shall be precluded from seeking judicial review or otherwise
`
`challenging or contesting the validity of this Consent Order.
`
`4.
`
`Vape ‘n Glass shall cooperate with and shall not seek to impede by litigation or
`
`other means the Commission's efforts to gather information under Subpart I of the Commission’s
`
`Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`5.
`
`Vape ‘11 Glass and its officers, directors, employees, agents, and any entity or
`
`individual acting on its behalf and with its authority shall not seek to challenge the validity or
`
`enforceability of the Asserted Claims in any administrative or judicial proceeding to enforce the
`
`Consent Order.
`
`6.
`
`Vape ‘n Glass does not have any existing U.S. inventories of vaporizer cartridges
`
`and components thereof.
`
`7.
`
`When an Asserted Patent expires, this Consent Order shall become null and void
`
`as to such expired patent.
`
`8.
`
`This Consent Order shall become null and void as to any claim of any intellectual
`
`property right that is held invalid or unenforceable by a court or agency of competent jurisdiction
`
`

`

`or as to any article that has been found or adjudicated not to infringe the asserted right in a final
`
`decision, no longer subject to appeal.
`
`9.
`
`The Commission has subject matter jurisdiction over this investigation. The
`
`Commission has in rem jurisdiction over the accused vaporizer cartridges and components
`
`thereof that are the subject of the complaint in this investigation. The Commission also has in
`
`personam jurisdiction over Vape ‘n Glass for purposes of this Stipulation and the proposed
`
`Consent Order by virtue of Vape ‘n Glass having appeared in this proceeding. Nothing in this
`
`Stipulation or the proposed Consent Order shall be construed as meaning that Vape ‘n Glass has
`
`submitted to the jurisdiction of any other court.
`
`10.
`
`This investigation is hereby terminated with respect to Vape ‘n Glass, provided,
`
`however, that enforcement, modification, or revocation of the Consent Order shall be carried out
`
`pursuant to Subpart I of the Commission's Rules of Practice and Procedure, 19 C.F.R. part 210.
`
`By Order of the Commission
`
`Issued:
`
`, 2020
`
`Lisa A. Barton
`
`Secretary to the Commission
`
`

`

`EXHIBIT C
`
`Settlement Agreement
`
`

`

`PUBLIC - CONTAINS REDACTED MATERIAL
`
`
`
`CONFIDENTIAL SETTLEMENT AGREEMENT
`
`is made this 31st day of THIS SETTLEMENT AGREEMENT (the "Agreement")
`
`
`
`
`
`
`
`August, 2020 (the "Effective Date"), between Juul Labs, Inc. ("JLI"), a privately-held
`
`
`
`
`corporation organized and existing under the laws of the state of Delaware, with its principal
`
`
`
`
`
`
`place of business at 560 20th Street, San Francisco, California 94107, and Vape 'n Glass, a
`
`
`
`
`
`privately-held corporation with its principal place of business at 283 N. Barrington Road,
`
`
`
`
`
`Streamwood, Illinois 60107. JLI and Vape 'n Glass are individually referred to herein as a
`
`
`"Party," and collectively as the "Parties."
`
`WHEREAS, there are numerous sources for electronic nicotine delivery system
`
`
`
`
`
`
`
`
`
`
`
`("ENDS") cartridges and non-ENDS cartridges (including but not limited to
`
`
`
`
`
`
`cannabidiol ("CBD") products, cartridges that do not contain any content when imported
`
`
`
`
`
`
`
`("empty pods"), or others filled with non-nicotine products (such as caffeine, taurine, melatonin
`
`
`
`
`
`
`and chamomile)) entering the United States that infringe JLI's U.S. Patent Nos. D842,536;
`
`
`
`
`
`
`
`D858,870; D858,869; and D858,868 ("the Asserted Patents"), and it is extremely difficult to
`
`
`
`
`
`
`
`
`identify the actual sources of such unauthorized infringing products because infringing entities
`
`
`
`
`
`have shown and are expected to continue to show, for example but without limitation, the ability
`
`
`
`
`
`
`to utilize a number of different companies, business names, and addresses for purposes of
`
`
`
`
`concealing their sales and importation of infringing products, and/or employ complex business
`
`
`
`
`
`
`
`arrangements, conduct business under multiple names, and/or form intricate arrays of
`
`
`confusingly similar affiliates;
`
`WHEREAS, unauthorized infringing Juul-compatible cartridges are typically
`
`
`
`
`
`
`
`
`
`manufactured, marketed, sold and imported into the U.S. in violation of applicable regulations;
`
`WHEREAS, in response to the rampant infringement of JLI's intellectual property rights,
`
`
`
`
`
`
`
`
`
`
`
`JLI has been and remains engaged in diligent efforts to use the enforcement of its intellectual
`
`
`
`
`
`
`property rights when possible to disrupt and stop distribution of such infringing products,
`
`
`
`
`
`although the difficulties described above often make JLI's efforts challenging and expensive;
`
`WHEREAS, on July 10, 2020, JLI filed a Complaint (the "1211 Complaint") at the
`
`
`
`
`
`
`
`
`United States International Trade Commission ("ITC") requesting that the ITC investigate JLI's
`
`
`
`
`
`
`
`allegations of patent infringement of JLI's U.S. Patent Nos. D842,536; D858,870; D858,869; and
`
`
`
`
`
`D858,868 ("the Asserted Patents") as a violation of Section 337 of the Tariff Act of 1930, as
`
`
`amended, by Vape 'n Glass and other entities, via the manufacturing, importing, distributing,
`
`
`
`
`
`
`
`
`
`selling in the United States, and/or otherwise dealing in certain vaporizer cartridges and
`
`
`
`
`
`components thereof. On August 10, 2020, the ITC instituted the requested investigation, which
`
`
`
`
`
`was then styled as In the Matter of Certain Vaporizer Cartridges and Components Thereof
`
`
`Investigation No. 337-TA-1211 (the "1211 Investigation");
`
`WHEREAS, JLI named Vape 'n Glass as a Defendant in a district court complaint, Juul
`
`
`
`
`
`
`
`Labs, Inc. v. Vape 'n Glass, No. 1-20-cv-04091 (N.D. Ill.) ("the JLI District Court Case")
`
`
`
`alleging infringement of the same Asserted Patents;
`
`1
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`WHEREAS, Vape ‘11 Glass has agreed to stipulate that products it has imported into the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`United States, sold after importation in the United States, and/or manufactured or sold for
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`importation into the United States infringe the sole claim in each of the Asserted Patents;
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`WHEREAS, Vape ‘11 Glass has agreed to settle the 1211 Investigation and the JLI
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`District Court Case and, in so doing, Vape ‘n Glass admits that the sole claim of each of the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Asserted Patents is valid and that the Juul-compatible cartridges that Vape ‘n Glass has imported
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`into the United States, sold after importation in the United States, and/or manufactured or sold
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`for importation into the United States infringe the sole claim in each of the Asserted Patents; and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Vape ‘n Glass desires to work with JLI in an effort to resolve both the 1211 Investigation and the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JLI District Court Case, and prevent products that infringe JLI’s patents from being sold by or
`
`
`
`
`through Vape ‘11 Glass;
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOW, THEREFORE, in consideration of the premises and the mutual covenants
`
`
`
`
`
`
`
`
`
`
`
`
`hereinafter contained and for other good and valuable consideration, the receipt and sufficiency
`
`
`
`
`
`
`
`
`
`
`of which are hereby acknowledged, the Parties agree as follows:
`
`
`
`
`
`Section 1.
`
`Definitions
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The terms set forth below shall have the following meanings in the Agreement:
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.1
`“Asserted Patents” means JLI’s US. Patent Nos. D842,536; D858,870;
`
`
`
`
`
`
`
`
`
`
`
`D858,869; and D85 8,868, including but not limited to continuations, continuations-in-part, and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`divisionals of those patent and patent applications that derive therefrom regardless of when filed,
`
`
`
`
`
`
`
`
`
`to the extent they read on Infringing Juul-compatible Cartridges.
`
`
`
`
`
`
`
`
`
`1.2
`“Infringing Juul-compatible Cartridges” means any electronic nicotine delivery
`
`
`
`
`
`
`
`
`
`
`
`system (“ENDS”) cartridge, or non-ENDS cartridge (including but not limited to
`
`
`
`
`
`
`
`
`
`
`
`
`cannabidiol (“CBD”) products, cartridges that do not contain any content when imported
`
`
`
`
`
`
`
`
`
`
`
`
`
`(“empty pods”), or other filled non-nicotine product (such as caffeine, taurine, melatonin and
`
`
`
`
`
`
`
`
`
`
`chamomile))—including any and all components thereof—that infringes the Asserted Patents
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`and is compatible with or works with the JUUL System. For the avoidance of doubt, for the
`
`
`
`
`
`
`
`
`
`
`
`
`purposes of this Agreement, Infringing Juul-compatible Cartridges include, but are not limited
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`to, any products or any components thereof that infringe any of the claims of Asserted Patents
`
`
`
`
`
`
`
`
`
`
`
`
`
`and includes, but is not limited to, the articles listed in Appendix 1.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.3
`“Vape ‘n Glass Website” means Vape ‘n Glass’s websites, namely, any websites,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`social media accounts, or e-commerce accounts owned or controlled by Vape ‘n Glass now or in
`
`
`the future.
`
`1.4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“Third Party” or “Third Parties” means any person other than JLI or Vape ‘11
`
`
`
`Glass.
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.5
`“Confidential Business Information” means any documents and things produced
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`by Vape ‘11 Glass in the 1211 Investigation and deemed produced in the JLI District Court Case,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`and designated as confidential by Vape ‘n Glass, subject to the parties agreements regarding use
`
`
`
`
`
`
`as set forth in Appendix 3.
`
`
`
`
`
`
`

`

`Section 2.
`
`Termination of the Investigation and the JL1 District Court Case
`
`
`
`Section 3.
`
`Consideration and Obligations
`
`No Knowing Infringement of JLI Patents Vape ‘11 Glass (1) will not
`3.1
`knowingly manufacture for importation, market, distribute, sell for importation, import, or sell
`after importation into the United States any Infringing Juul—compatible Cartridge, directly or
`indirectly. and (2) will not knowingly aid, abet, encourage, participate in, or induce the
`manufacture for importation, marketing, distribution, sale for importation, importation, or sell
`after importation into the United States any Infringing Juul-compatible Cartridge except (as
`applied to (l) and (2) above) under consent or license from JLI, its successors, or assignees, or to
`the extent permitted by the Agreement or by law, or until the expiration, invalidation, or
`unenforceability of all of the Asserted Patents. Such efforts shall include:
`
`3.1.1. Cease and Desist Marketing, Distribution, and Infringing Juul—
`compatible Cartridges. Vape ‘11 Glass agrees to immediately cease and desist marketing,
`
`

`

`distributing, and selling any Infringing Juul-compatible Cartridges into the United States,
`including by removing listings of any Infringing Juul-compatible Cartridges from the Vape ‘n
`Glass Website targeted at sale into the United States, until such time as provided by Section 3.1.
`
`3.1.2. Cessation of Sales. Vape ‘11 Glass attests that as of the Effective Date (a)
`it no longer has any Infringing Juul-compatible Cartridges in its possession, custody, and control
`in the United States, (b) it has ceased and desisted from manufacturing for importation,
`marketing, distributing, and selling for importation, or selling after importation in the US of any
`infringing Juul-compatible Cartridges, and (c) no Infringing Juul-compatible Cartridges remain
`listed on the Vape ‘n Glass Website for sale into the United States or are otherwise available for
`sale or distribution by Vape ‘n Glass in the US.
`
`3.1.3. No Aid to Others. Vape ‘n Glass will not aid others, including any co-
`Respondents in the 1211 Investigation or any party named as a defendant by JLI in any district
`court actions for infringement of the Asserted Patents, now or in the future, in any action against
`JL1.
`
`Stipulation Regarding lnfringement, Domestic Industry, and Public Interest.
`3.2
`Within three (3) business days after the Effective Date, Vape ‘11 Glass shall stipulate that the
`Infringing .qul-compatible Cartridges Vape ‘11 Glass manufactured, sold, imported, or distributed
`infringe the Asserted Patents; that JLI’s JUULpods fall within the scope of the sole claim in each
`of the Asserted Patents; and that any remedy issued by the Commission in the 1211 Investigation
`would not harm the public health and welfare, competitive conditions in the US. economy, the
`production of like or directly competitive articles in the US, or US. consumers, or otherwise be
`against the public interest, as reflected in the Stipulation Regarding Importation, Infringement,
`Domestic Industry, and Public Interest attached hereto as Appendix 2. The Parties shall prepare,
`and reasonably cooperate if needed in filing, all papers necessary to effect said Stipulation,
`including the Stipulation Regarding Importation, Infringement, Domestic Industry, and Public
`Interest attached hereto as Appendix 2. To the extent that the discovery materials produced by
`Vape ‘n Glass pursuant to Section 3.3.2 and Appendix 3 to this Agreement reveal additional
`Infringing Juul-compatible Cartridges, Respondent shall stipulate that any such additional
`Infringing Juul—compatible Cartridges infringe the Asserted Patents, and the Parties shall prepare,
`and reasonably cooperate if needed in filing, all papers necessary to effect a supplemental
`Stipulation to this effect.
`
`3.3
`
`Vape ‘n Glass’s Compliance with Discovery Obligations.
`
`3.3.1.
`
`
`
`3.3.2. Agreed Discovery Obligations. Vape ‘11 Glass agrees to provide ILI with
`discovery materials and verified responses in accordance with the Agreed Discovery Obligations
`set forth in Appendix 3. Vape ‘11 Glass acknowledges that any failure to comply with the Agreed
`Discovery Obligations set forth in Appendix 3 constitutes a material breach of the terms of this
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Agreement. Vape ‘11 Glass agrees to complete its production of discovery material and fully
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`comply with the Agreed Discovery Obligations within thirty (30) days of the Effective Date.
`
`
`
`
`
`
`
`
`
`
`
`
`
`3.4
`Consent Order. Upon Vape ‘n Glass’s completion and full compliance with the
`
`
`
`
`
`
`
`
`
`
`
`
`Agreed Discovery Obligations set forth in Section 3.3 and Appendix 3 of this Agreement,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respondent shall sign the Consent Order Stipulation as described in 19 CFR 210.21(c)(3) and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix 5, and agree to the Proposed Consent Order as described in Appendix 4.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3.5
`Direct Contacts. Within two (2) weeks of the Effective Date, Vape ‘11 Glass and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JLI will assign and identify a direct contact having sufficient authority for the purpose of
`
`
`
`
`
`
`
`
`
`
`
`
`
`communicating with the other Party to coordinate on Vape ‘n Glass’s compliance with the
`
`
`
`
`
`
`
`
`
`
`
`Agreed Discovery Obligations, as well as JLI’s intellectual property protection measures,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`including those detailed in Sections 3.1 and 3.2, to effectuate the obligations under this
`
`
`
`
`
`
`
`
`
`
`
`
`
`Agreement and to create a communication path for escalation of related issues. Such direct
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`contacts will communicate by email, telephone or in person as necessary to discuss the current
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`state of such issues and the effectiveness of the measures and obligations set forth under this
`
`Agreement.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3.6
`Ownership of Asserted Patents; Agreement Not to Challenge Validity. Vape
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`‘n Glass hereby acknowledges, agrees, and assents to JLI’s exclusive ownership of the Asserted
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patents. Vape ‘n Glass represents, warrants, and covenants to JLI that it shall never directly or
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`indirectly raise, assist a Third Party in asserting, cause to be raised, take any action, or assert any
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`claim of any kind relating to the exclusive rights of JLI and its affiliates in and to the Asserted
`
`
`
`
`
`
`
`
`Patents, or the validity of the Asserted Patents.
`
`
`
`
`
`
`
`
`
`
`
`
`3.6.1. Release for Patent Infringement. Upon Vape ‘n Glass’s compliance
`
`
`
`
`
`
`
`
`
`
`
`
`with the Agreed Discovery Obli