quinn emanuel trial lawyers | washington, dc
`1300 I Street NW, Suite 900, Washington, District of Columbia 20005-3314 | TEL (202) 538-8000 FAX (202) 538-8100
`
`WRITER'S DIRECT DIAL NO.
`(202) 538-8104
`
`WRITER'S EMAIL ADDRESS
`alexlasher@quinnemanuel.com
`
`November 19, 2020
`
`The Honorable MaryJoan McNamara
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
`
`Re: Certain Vaporizer Cartridges and Components Thereof, Inv. No. 337-TA-1211
`
`Dear Hon. Judge McNamara:
`
`Please find attached Complainant Juul Labs, Inc. and Respondent Aqua Haze LLC’s
`public version of the parties’ joint motion to terminate the investigation. In the Office of Unfair
`Import Investigations’ (“OUII”) Response to the parties’ joint motion to terminate, OUII
`indicated that it supports the motion “provided that the parties file a revised public version of
`their settlement agreement with redactions limited only to information that is properly
`confidential business information (“CBI”) under Commission Rule 201.6(a).” (Commission
`Investigative Staff's Response to Joint Motion to Terminate the Inv. as to Aqua Haze LLC). JLI
`has conferred with OUII, and OUII does not object to the scope of the proposed redactions.
`
`Respectfully submitted,
`
`/s/ S. Alex lasher
`S. Alex lasher
`
`Counsel for Complainant Juul Labs, Inc.
`
`cc: Enclosures
`
`quinn emanuel urquhart & sullivan, llp
`
`LOS ANGELES | NEW YORK | SAN FRANCISCO | SILICON VALLEY | CHICAGO | WASHINGTON, DC | HOUSTON | SEATTLE | BOSTON | SALT LAKE C ITY
`
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`
`

`

`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
`AQUA HAZE LLC
`
`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 Aqua Haze LLC (“Respondent” or “Aqua Haze
`
`LLC”), jointly move to terminate the investigation as to Aqua Haze LLC.
`
`JLI and Aqua Haze LLC 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 Aqua Haze LLC state that there are no other
`
`agreements, written or oral, express or implied, relating to the subject matter of this
`
`Investigation. Accordingly, JLI and Aqua Haze LLC request that the Administrative Law Judge
`
`issue an initial determination terminating this investigation with respect to Respondent Aqua
`
`Haze LLC 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 Aqua Haze LLC 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 Act of 1930, as amended, by reason of the importation into the United States,
`
`1
`
`

`

`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.
`
`Aqua Haze LLC executed a Consent Order Stipulation that meets the requirements of 19
`
`C.F.R. § 210.21(c). Aqua Haze LLC 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 Aqua Haze LLC 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 Aqua Haze LLC submit that entry of the Proposed Consent Order (Exhibit B)
`
`and termination of this Investigation with respect to Aqua Haze LLC are in the public interest.
`
`Entering the Consent Order will promote administrative economy by obviating the need for a
`
`2
`
`

`

`determination with respect to Aqua Haze LLC’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 Aqua Haze LLC 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 Aqua Haze LLC request that the Investigation be
`
`terminated with respect to Aqua Haze LLC 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, Vaperistas, LLC, eJuiceDB, and Tobacco Club & Gifts,
`
`3
`
`

`

`Inc. d/b/a Carytown Tobacco 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, Tobacco Alley of Midland, Midwest Goods Inc., and Smoker’s Express.
`
`Dated: November 12, 2020
`
` Respectfully submitted,
`
` /s/ Michael F. Reeder II
`
` /s/ S. Alex Lasher
`
`Michael F. Reeder II
`Cadwell Clonts & Reeder LLP
`One Riverway, Suite 1700
`Houston, Texas 77056
`(713) 360-1560
`mreeder@cadwellclontsreeder.com
`
`Counsel for Respondent Aqua Haze LLC
`
`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
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`

`

`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 Aqua Haze LLC 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 Aqua Haze LLC 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 Aqua Haze LLC;
`
`3.
`
`The disclosure of this information would breach existing nondisclosure
`
`agreements between Complainant and Aqua Haze LLC; 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, 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
`
`CONSENT ORDER STIPULATION
`
`
`
`
`WHEREAS, the United States International Trade Commission on August 10, 2020 (85
`
`Fed. Reg. 49,679 (Aug. 14, 2020)), 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 Aqua Haze LLC, (“Aqua Haze LLC”), in violation of Section 337 with respect to
`
`the sole claim of each of U.S. Patent Nos. D842,536 (“’536”), D858,870 (“’870”), D858,869
`
`(“’869”), D858,868 (“’868”) (collectively the “Asserted Claims”);
`
`
`
`WHEREAS, Aqua Haze LLC 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 C.F.R. § 210.21; and
`
`
`
`
`
`WHEREAS, Aqua Haze LLC agrees to all terms set forth in the Consent Order.
`
`
`
`

`

`IT IS HEREBY STIPULATED by Aqua Haze LLC in support of the Joint Motion for an
`
`Order Terminating the Investigation as to Aqua Haze LLC by Entry of a Consent Order as
`
`follows:
`
`1.
`
`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 Aqua Haze LLC for purposes of this Stipulation and the proposed
`
`Consent Order by virtue of Aqua Haze LLC having appeared in this proceeding. Nothing in this
`
`Stipulation or the proposed Consent Order shall be construed as meaning that Aqua Haze LLC
`
`has submitted to the jurisdiction of any other court.
`
`2.
`
`Aqua Haze LLC, 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.
`
`Aqua Haze LLC does not have any existing U.S. inventories of vaporizer
`
`cartridges and components thereof.
`
`4.
`
`Aqua Haze LLC expressly waives all right to seek judicial review or otherwise
`
`challenge the validity of the Consent Order.
`
`2
`
`

`

`
`
`5.
`
`Aqua Haze LLC 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 Aqua Haze LLC 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 Aqua Haze LLC.
`
`
`
`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.
`
`Aqua Haze LLC 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.
`
`3
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`

`

`IT IS SO STIPULATED.
`
`Date:
`
`\\ ' GL‘ ’10
`
`Aqua Haze LLC
`
`\l& \évmm PmMAN
`By:
`Its: MQRQ%'an3 3A¢.V\ba\f
`
`

`

`EXHIBIT B
` Proposed Consent Order
`
`

`

`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
`
`[PROPOSED] CONSENT ORDER
`
`The United States International Trade Commission on August 10, 2020 (85 Fed. Reg.
`
`
`
`49,679 (Aug. 14, 2020)), 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
`
`Aqua Haze LLC (“Aqua Haze LLC”), 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 Aqua Haze
`
`LLC, 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”).
`
`
`
`Aqua Haze LLC 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 Aqua Haze LLC have filed a
`
`Joint Motion to Terminate the Investigation as to Aqua Haze LLC based on a Consent Order.
`
`
`
`1
`
`

`

`
`
`
`
`IT IS HEREBY ORDERED THAT:
`
`1.
`
`Upon the entry of this Consent Order, Aqua Haze LLC 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 infringe 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 Aqua Haze LLC,
`
`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.
`
`Aqua Haze LLC shall be precluded from seeking judicial review or otherwise
`
`challenging or contesting the validity of this Consent Order.
`
`
`
`4.
`
`Aqua Haze LLC 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.
`
`Aqua Haze LLC 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.
`
`Aqua Haze LLC 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.
`
`
`
`2
`
`

`

`
`
`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 Aqua Haze LLC for purposes of this Stipulation and the proposed
`
`Consent Order by virtue of Aqua Haze LLC having appeared in this proceeding. Nothing in this
`
`Stipulation or the proposed Consent Order shall be construed as meaning that Aqua Haze LLC
`
`has submitted to the jurisdiction of any other court.
`
`
`
`10.
`
`This investigation is hereby terminated with respect to Aqua Haze LLC, 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
`
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`___________________________
`
`Lisa A. Barton
`
`Secretary to the Commission
`
`Issued: ___________, 2020
`
`
`
`3
`
`

`

`
`
`EXHIBIT C
` Settlement Agreement
`
`

`

`PUBLIC - CONTAINS REDACTED MATERIAL
`
`CONFIDENTIAL SETTLEMENT AGREEMENT
`
`THIS SETTLEMENT AGREEMENT (the “Agreement”) is made this 8th day of
`September, 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 Aqua Haze LLC, a
`privately-held corporation with its principal place of business at 12801 N Stemmons Fwy, Suite
`809, Farmers Branch, TX 75234. JLI and Aqua Haze LLC 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 charnomile)) entering the United States that infringe JLI’s US. 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 US. 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 US. 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 Aqua Haze LLC 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 Aqua Haze LLC as a Defendant in a district court complaint,
`Juul Labs, Inc. v. Aqua Haze LLC, No. 3-20-cv-01827 (N .D. Tex.) (“the JLI District Court
`Case”) alleging infringement of the same Asserted Patents;
`
`

`

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`WHEREAS, Aqua Haze LLC has agreed to stipulate that products it has imported into
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`the United States, sold after importation in the United States, and/or manufactured or sold for
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`importation into the United States infringe the sole claim in each of the Asserted Patents;
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`WHEREAS, Aqua Haze LLC has agreed to settle the 1211 Investigation and the JLI
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`District Court Case and, in so doing, Aqua Haze LLC admits that the sole claim of each of the
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`Asserted Patents is valid and that the Juul-compatible cartridges that Aqua Haze LLC has
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`imported into the United States, sold after importation in the United States, and/or manufactured
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`or sold for importation into the United States infringe the sole claim in each of the Asserted
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`Patents; and Aqua Haze LLC desires to work with JLI in an effort to resolve both the 1211
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`Investigation and the JLI District Court Case, and prevent products that infringe JLI’s patents
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`from being sold by or through Aqua Haze LLC;
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`NOW, THEREFORE, in consideration of the premises and the mutual covenants
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`hereinafter contained and for other good and valuable consideration, the receipt and sufficiency
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`of which are hereby acknowledged, the Parties agree as follows:
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`Section 1.
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`Definitions
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`The terms set forth below shall have the following meanings in the Agreement:
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`1.1
`“Asserted Patents” means JLI’s US. Patent Nos. D842,536; D858,870;
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`D85 8,869; and D85 8,868, including but not limited to continuations, continuations—in-part, and
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`divisionals of those patent and patent applications that derive therefrom regardless of when filed,
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`to the extent they read on Infringing Juul-compatible Cartridges.
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`1.2
`“Infringing Juul-compatible Cartridges” means any electronic nicotine delivery
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`system (“ENDS”) cartridge, or non-ENDS cartridge (including but not limited to
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`cannabidiol (“CBD”) products, cartridges that do not contain any content when imported
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`(“empty pods”), or other filled non-nicotine product (such as caffeine, taurine, melatonin and
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`chamomile))—including any and all components thereof—that infringes the Asserted Patents
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`and is compatible with or works with the JUUL System. For the avoidance of doubt, for the
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`purposes of this Agreement, Infringing Juul-compatible Cartridges include, but are not limited
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`to, any products or any components thereof that infringe any of the claims of Asserted Patents
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`and includes, but is not limited to, the articles listed in Appendix 1.
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`1.3
`“Aqua Haze LLC Website” means Aqua Haze LLC’s websites, namely, any
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`websites, social media accounts, or e-commerce accounts owned or controlled by Aqua Haze
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`LLC now or in the future.
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`1.4
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`“Third Party” or “Third Parties” means any person other than JLI or Aqua Haze
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`LLC.
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`1.5
`“Confidential Business Information” means any documents and things produced
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`by Aqua Haze LLC in the 1211 Investigation and deemed produced in the JL1 District Court
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`Case, and designated as confidential by Aqua Haze LLC, subject to the parties agreements
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`regarding use as set forth in Appendix 3.
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`Section 2.
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`Termination of the Investigation and the JLI District Court Case
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`Dismissal of the 1211 Investigation, Prerequisites. Upon Aqua Haze LLC’s:
`2.1
`(1) filing with the ITC the Stipulation Regarding Infringement, Domestic Industry, and Public
`Interest described in Section 3.2 and Appendix 2; and (2) completion and full compliance with
`the Agreed Discovery Obligations set forth in Section 3.3 and Appendix 3 of this Agreement—
`i. e. , upon either (a) J Li’s communication of its decision not to depose Aqua Haze LLC or (b) the
`adjournment of JLI’s deposition of Aqua Haze LLC, as provided for in Appendix 3)—within
`five (5) days the Parties will jointly file in the 1211 Investigation a motion to terminate the 1211
`Investigation, which shall include the Proposed Consent Order and Consent Order Stipulation as
`set forth in Section 3.4 of this Agreement and Appendices 4 and 5, respectively. The Parties
`agree, subject to Respondent’s full compliance with these prerequisites, to reasonably cooperate
`if needed in filing all papers necessary to resolve the 121 1 Investigation with respect to Aqua
`Haze LLC.
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`Dismissal of the JLI District Court Case, Prerequisites. Upon Aqua Haze
`2.2
`LLC’s satisfaction of all of the prerequisites set forth in Section 2.1; and subsequent to the filing
`in the 1211 Investigation of the Parties’ joint motion to terminate pursuant to Consent Order;
`within three (3) business days of the termination of the 1211 Investigation; the Parties shall
`prepare and file a stipulation and joint motion for an order of dismissal with retained jurisdiction,
`or its procedural equivalent, in the JLI District Court Case with respect to Aqua Haze LLC based
`on this Agreement. The Parties agree that the district court presiding over the JLI District Court
`Case. the United States District Court for the Northern District of Texas will retain jurisdiction to
`enforce this Agreement. The Parties agree, subject to Respondent’s compliance with the
`prerequisites of Section 2.1 and this paragraph, to reasonably cooperate if needed in filing all
`papers necessary to resolve the JLI District Court Case with respect to Aqua Haze LLC.
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`2.3
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`Section 3.
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`Consideration and Obligations
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`No Knowing Infringement of JLI Patents. Aqua Haze LLC (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 (1) and (2) above) under consent or license from JLI, its successors, or assignccs, 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:
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`3.1.1. Cease and Desist Marketing, Distribution, and Infringing Juul-
`compatible Cartridges. Aqua Haze LLC agrees to immediately cease and desist marketing.
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`distributing, and selling any Infringing Juul-compatible Cartridges into the United States,
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`including by removing listings of any Infringing Juul-compatible Cartridges from the Aqua Haze
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`LLC Website targeted at sale into the United States, until such time as provided by Section 3.1.
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`3.1.2. Cessation of Sales. Aqua Haze LLC attests that as of the Effective Date
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`(a) it no longer has any Infringing Juul-compatible Cartridges in its possession, custody, and
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`control in the United States, (b) it has ceased and desisted from manufacturing for importation,
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`marketing, distributing, and selling for importation, or selling after importation in the US. of any
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`infringing Juul-compatible Cartridges, and (c) no Infringing Juul-compatible Cartridges remain
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`listed on the Aqua Haze LLC Website for sale into the United States or are otherwise available
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`for sale or distribution by Aqua Haze LLC in the US.
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`3.1.3. No Aid to Others. Aqua Haze LLC will not aid others, including any co-
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`Respondents in the 1211 Investigation or any party named as a defendant by JLI in any district
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`court actions for infringement of the Asserted Patents, now or in the future, in any action against
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`3.2
`Stipulation Regarding Infringement, Domestic Industry, and Public Interest.
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`Within three (3) business days after the Effective Date, Aqua Haze LLC shall stipulate that the
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