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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
`
`JOINT MOTION TO TERMINATE THE INVESTIGATION AS TO
`RESPONDENT ALL PUFF STORE
`
`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 All Puff Store (“Respondent” or “All Puff”),
`
`jointly move to terminate the investigation as to All Puff.
`
`JLI and All Puff submit that the attached Consent Order Stipulation (Exhibit A) and
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`Proposed Consent Order (Exhibit B) satisfy the requirements of Rule 210.21(c) and that
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`termination is in the public interest. A copy of the parties’ confidential settlement agreement is
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`also attached as confidential Exhibit C. JLI and All Puff state that there are no other agreements,
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`written or oral, express or implied, relating to the subject matter of this Investigation.
`
`Accordingly, JLI and All Puff request that the Administrative Law Judge issue an initial
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`determination terminating this investigation with respect to Respondent All Puff on the basis of
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`the consent order pursuant to 19 C.F.R. § 210.21(c).
`
`I.
`
`FACTUAL BACKGROUND
`
`The Commission instituted this Investigation and named All Puff as a Respondent on
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`August 14, 2020, by publication in the Federal Register based on a complaint filed by JLI on
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`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, sale for
`
`
`
`1
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`

`

`
`
`
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`importation, or sale within the United States after importation of certain vaporizer cartridges and
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`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.
`
`All Puff executed a Consent Order Stipulation that meets the requirements of 19 C.F.R. §
`
`210.21(c). All Puff 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
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`importation of the Accused Products, except under consent or license by JLI. JLI and All Puff
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`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
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`mechanisms such as consent orders to conserve both public and private resources. See, e.g.,
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`Certain Height-Adjustable Desk Platforms and Components Thereof, Inv. No. 337-TA-1125,
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`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,
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`Order No. 9 at 4 (Nov. 18, 2016) (noting the “significant public interest benefits” in resolving the
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`litigation through the proposed consent order).
`
`JLI and All Puff submit that entry of the Proposed Consent Order (Exhibit B) and
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`termination of this Investigation with respect to All Puff are in the public interest. Entering the
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`Consent Order will promote administrative economy by obviating the need for a determination
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`with respect to All Puff’s activities as they concern the Accused Products. Moreover, entering
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`2
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`

`

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`
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`the attached Consent Order will not impose an undue burden on the public health and welfare,
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`competitive conditions in the U.S. economy, production of like or directly competitive articles in
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`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 All Puff are not aware of any adverse effects that their settlement
`
`agreement would have on the public interest. See Certain Lithium Silicate Materials and
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`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
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`“termination of litigation under these circumstances as an alternative method of dispute
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`resolution is generally in the public interest and will conserve public and private resources”).
`
`III. CONCLUSION
`
`For the foregoing reasons, JLI and All Puff request that the Investigation be terminated
`
`with respect to All Puff 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
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`an appearance in this case—2nd Wife Vape, Aqua Haze LLC, EZFumes, Price Point NY,
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`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
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`the Commission Investigative Staff of this Motion at least two days before filing. Respondents
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`2nd Wife Vape, Aqua Haze LLC, EZFumes, Vaperistas, LLC, Smoker’s Express, Price Point
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`NY, and eJuiceDB do not oppose this motion. The Staff indicated it will take a position on the
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`papers. JLI received no response from Respondents Wireless N Vapor Citi, LLC, Tobacco Alley
`
`of Midland, Tobacco Club & Gifts, Inc. d/b/a Carytown Tobacco, and Midwest Goods Inc.
`
`
`
`3
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`

`

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` Respectfully submitted,
`
`
`Dated: December 11, 2020
`
`
`
`
`
`
` /s/ Michael P. Harvey
`
`Michael P. Harvey
`Michael P. Harvey Co., LPA
`311 Northcliff Drive
`Rocky River, OH 44116
`Tel.: (440) 570-2812
`Email: mpharveyco@aol.com
`
`Counsel for Respondent All Puff Store
`
`
`
`
` /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
`
`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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`

`

`EXHIBIT A
` Consent Order Stipulation
`
`

`

`UNITED STATES ENTERNATiONAL TRADE COMMiSSIGN
`‘WASHENGTON, BC.
`
`Before tiie Honorable MaryJoan McNamara
`Afiminiotrative Law .Eudge
`
`in the Matter of
`
`CERTAIN VAPGRIZER CARTRiDGES
`AND CONI?ONENTS THEREOF
`
`invesiiga‘tion N0. 33'1-TA—121 i
`
`CONSENT ORDER STI§’ULATION
`
`W’HEREAS, the United States international Trade Commission or; August 10, 2020 (85
`
`Fed. Reg. 49.679 (Aug. 141 2020)), instituted the: above—captioned investigation under Section
`
`33? of the Tariff Act of 19305 as amcocicd, (W 13.81:. § 1337') based upon complaint fiiod by
`
`Complainant 3qu Laba inc. (“LILY”), which aliogod unfair acts in the importation into the United
`
`States. tho salt: for importation into tho United States. and fine sate within the United States after
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`importation of certain vaporizer cartridges and components thereof, by. among others:
`
`Respondent Ali Poi‘i’Store, (“All Poti‘Stora”) iii vioiation oi’Sect‘ion 337 with respect to the soie
`
`ciaim oi" each of US. Patent No5: {3843536 {"".‘336”), 08585870 (“"870"), 138583869 (“369”),
`
`[$58368 (“868") (coiiociivoiy tho “Assorted Claimfis”);
`
`Wi-i 12513.2» 5
`
`Ali Puff Store is wiiiing to acoop: entry of the: Consent Order submitted
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`concurrentiy herewith by the International Trade Commission and agrees to aii waivers and other
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`provisions as required by i9 CPR. § 2i 0.2%.; and
`
`WHEREAS, Ali Puff Store agrocs to ail terms set forth in Eiw Consent Order.
`
`1'? ES HEREBY STii—‘ULATED by Aii Puff Store in support of the Join: Motion for an
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`Ortier Terminating the investigation as to Ali Riff Store- by Entry of a Consent Order as foiiows:
`
`

`

`i.
`
`The Commission has subjcci matter jurisdiction over this irwcgtigaticm, The
`
`Commission has in rem jurisdiction over the accused vaporizer carrridges and components
`
`thereof that. are the subiect of the complaint in this investigation. The Commission aiso has in
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`pen-(mam jm‘iaciiction over All Puff" Store for purposes ol’ this Siipoiation and the proposed
`Consent Order by virtue of Ail Puff Store having appeared in this proceeding. Nothing in this
`
`Stipulation or the propoSed Consent Order shall be construed a3 meaning that All Puff Store has
`
`submitted to the jurisdiction ot‘aoy other court.
`
`2)
`
`Ail Puff Store, ineiudiog its officers, directors, employees, agents, and any entity
`
`or individoai acting on its behaif’ and with its authority, agrees, upon entry of the Consent: Order,
`
`that it wiii not scli for importation, import into the United States or sell in the United States after
`
`importation direcriy or indirectly. or aid? aha-:19 encourage participate in, or induce the Sale for
`importatioo. importation into the United States or saie 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 iicense from ELL
`
`3.
`
`Ail Puff Store does not have any existing US. inventories of vaporizer cartridges
`
`and compooeotg thereof.
`4.
`Ail Puff Store cxpressiy waives all right to seek judicial review or otiiczwiac
`
`challenge the validity oi‘tlrc Consent Order.
`5.
`All Paff Store Wiii cooperate with and will not seek to impede by iitigation or
`
`other means the Commission's clitoris {o gather information under Subpart i or" the Commission’s
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`Rules ofPractice and Procedure, l9 CPR. Subcliaptcr C? Part 210‘
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`

`

`6.
`
`This cn'fcrccmcnt. modification and revocation of the: Consent Omicr wili
`
`lac
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`carricd out pursuant to Snbpart i oi‘iiic Commission's Rules of ifiacticc and Proccciurc. i9 CPR.
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`Subcl‘iaptcr C, Part 2 l O.
`
`7.
`
`The signing of this Stipuiaticn is for settlement purposes only and (1536:: net
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`constitute admixision by All Puff Store- that an infringement 01" the Assci‘icd Claim}; anti/Cir an.
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`unfair act has bccn committcd.
`
`8.
`
`The Consent Order shail havc the same force and effect and may be enforced,
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`modificdr or revoked in thc same manner as is provided in scctitm 337 ofthc Tariff Act of 1930
`
`and this part
`
`for ctiicr Commission actions.
`
`:mci
`
`the Commission may require periodic
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`ccmpliancc reports purguam to subpart i of this part it) be: suhmit‘tcd by All Puff Store.
`
`9.
`
`"Hie Cement Order Shall net appiy if any asserted patent claim has expired or is
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`liciri im-Falid or uncai‘brccabic by a court or ageacy of competent jurisdiction or if any articic has
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`been found or adjudicated net to infi'ingc that asserted right in a iinai decision, no Eongcr subject
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`to appeal,
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`this Conscni Order shall become nuii and void as to such expired.
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`invalid, or
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`uncnfin‘ccabic claim or as to my adjudicated article.
`
`it).
`
`Aii Puff Store wiii not seek. to challenge the: validity or enforceability of the
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`patents that form the basis for the cmriplaint in any administrative or judicial procccding to
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`cfiforcc the Conccnt Order.
`
`i
`
`i
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`.
`
`This Consent Ordcr Stipulation anti C(msciit Order are in the public interest.
`
`Li)
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`

`

`I? 18 Si} S'i‘TPKELA'i‘ED.
`
`Date: Dace-m bar
`
`f 2030
`
`All Puff Start:
`
`

`

`EXHIBIT B
` Proposed Consent Order
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMESSION
`WASHINGTON, D.C.
`
`Before {he Honoi‘a‘hie MaryJoaii McNamara
`Administrative Law Judge
`
`in the Maiter of
`
`CERTAEN VAPOB’IZER CARTRIDGES
`AM) CBMPONENTS THERE-6F
`
`=
`
`investigation No. 3375i‘A—i2i i
`
`EROPOSED] CONSENT ORDER
`
`The United Staies internaiionai "i“mcie Commissigm on Auguet 10; 2020 (85 Fed. Reg.
`
`49.679 (Aug. 14, 2030)), instituted the abovencaptioned investigatioo under Section 337 Offline
`
`’i‘ari‘i’i’ Act of i 930“ as amended. {i9 {RSC .
`
`{3 i337) naming numerous respondents, including Ali
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`Puff Store ("Ail Puff Same“), based upon the eompiaint flied by Complainant 5'qu Labs. hie.
`
`(“iii“) {hat aiieged oofaii‘ aeis in {he importaiion into the Unified State; {he saie for impoflatioo
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`into (he United States, and the Sale within the United States afiei‘ inmoriation DfCEi‘taifi vaporizer
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`cariridges and components thereof, by. among others, Respondent All Puff Store, in vioiation of
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`Section 337 with respect to the soie eiaim of each of Uoiteci States Paieni Nos. D842,536
`
`{“536“), [3858370 (“879”,), {3858:869 (“869“), {3858,8624 (“868”) {coileei‘iveiy the “Assorted
`
`Chaim?)
`
`Aii Puff Store has execuied a Consent Order Siipuiafioo in which it agrees to the entry of
`
`this Consent Order and to aii waivers and other provisions as required by COHiEIliSSiOIl Rule of
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`Practice and Procedure .2 i.0.21(c) {19 CPR. § 2193(0)}. NJ and All Puff Siore have flied a
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`John Minion to ’i'erminate the Investigation as; to All Pufi‘Store based on a (loosen: Order.
`
`

`

`'i'l'" iS HEREBY ORDERED "l‘HA'ZE‘:
`
`1.
`
`Upon the entry of this Consent Greer, Ali Puff Store shali not. sell for importation,
`
`import into the United States. or seli in the United States after importation, directly or indirectly,
`
`or aitL 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
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`components thereofthet infringe eny of the claims oft‘ne Asserteci Ciaime, except under consent
`
`or license from EL}.
`
`2,
`
`This Consent Order shall be aopiicebie to and binding upon Ail Putt Store, their
`
`officers; directors. agents, servants, attorneys, empioyees, affiliates, and ail persons, firms, or
`
`corporations acting or claiming to net on its behalf or under its direction or authority.
`
`Aii Puff" Store sshnii be precluded from seeking judicial review or otherwise
`
`chaiienging or contesting the vaiidity oi’this Coneent Order.
`
`4.
`
`Ali Puff Store shali cooperate with and shall not seek to impede by iitigation or
`
`other means the Comiiiissioe‘s efforts to gather information under Sebpart i oi? the Commission’s
`
`Rules ol" Practice and Proeedoreg 19 GER. Part 2 i 0.
`
`5.
`
`Ali Putt Store and its offices-5;. directors. empioyees! agents, and any entity or
`
`individual acting on its behaif and with its authority shall not seek to Challenge the validity or
`
`enforceabiiity of the Asserted Ciaims in any administrative or judicial proceeding to enforce the
`
`Consent Order.
`
`6.
`
`All Port Store does not have any existing CELLS inventories; of vaporizer cartridges
`
`and components thereof.
`
`7.
`
`When an Assertcd Patent expires. this Consent Order Shali become null and. void
`
`as to such expired patent.
`
`

`

`8.
`
`"fli‘izis Consent Order shali booomo null and void as to any claim of any intciiectuai
`
`pi‘opertjy' right that is hcid invaiid or unonfiircoabio by a court or agency ofcompetentjurisdiction
`
`or as to any articio that has been found or adjudicated not to infringe the asserted right in a finai
`
`decision, no longer subject to appeai.
`
`9.
`
`The Connnission has subéect iiififlfli’ jurisdiction over this investigation. The
`
`Commission has in rem jurisdiction over the accused vaporizer cartridges; and ccnnponents
`
`thereof that are: the subject of the complaint in this investigation. The Commission 3150 has in
`
`permnam jurisdiction over Ail Puff Stow for pnrposos of this Stipuiation and the proposed
`
`Consent Order by virtue of All Puff Snore having appeared in this proceeding. Nothing in this
`
`Stipuiation or the: ptoposod Consent Order shalt be construed as moaning that AH 3.31151? Store: has
`
`S'Ltimiitted to tiiojurisdiotion of any other court.
`
`i8.
`
`This investigation is hereby terminated with respect to Ali Puff Store, provided,
`
`however‘ that enforcement, modification, or revocation oftho Consent Order shall be carriod out
`
`pursuant to Submit i oi’iho Commission‘s Roles ofPraotice and Procedure, 19 CPR. part 2H3.
`
`By Ordor oftho Commission
`
`L183 A. Benton
`
`Secretary to the Commission
`
`Issue-d: w
`
`_t 2020
`
`[45
`
`

`

`
`
`EXHIBIT C
` Settlement Agreement
`
`

`

`PUBLIC - CONTAINS REDACTED MATERIAL
`
`CONFIDENTIAL SETTLEMENT AGREEMENT
`
`THIS SE’l"l‘l..-EMENT AGREEMENT (the ".hgreerrrent") is made this 2"" day of
`December, 2020 (the “Effective Date“). between 1qu Labs, Inc. (“1L1"). a privately-held
`corporation organized and existing under the laws of the state of Delaware, with its principal
`place ol'business at 560 20th Street, San Francisco. California 94107. and All Puff Store. a
`privately—held corporation with its principal place ofbusiness at 680] Engle Rd.. Suite E,
`Middleburg Heights, OH 44l30. 1L] and All Puff Store are individually referred to herein as a
`“Party,” and collectively as the “Parties.”
`
`WHEREAS, there are numerous sources for electronic nicotine delivery system
`("EN DS") cartridges and non-EN DS cartridges (including but not limited to cannabidiol
`(“CED“) 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 Jl..l"s US. Patent Nos. D842.536; D858,870; D858.869;
`and D85 8,868 (“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
`ofdilfcrent 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 .luul-compatible cartridges are typically
`manufactured, marketed, sold and imported into the US. in violation of applicable regulations;
`
`Wl-lEREAS. in response to the rampant infringement ofJLl’s intellectual property rights.
`JIJ has been and remains engaged in diligent efforts to use the enforcement ofits 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 l0. 2020, J'H filed a Complaint (the “12l l Complaint”) at the
`United States lntemational Trade Commission ("ITC") requesting that the [TC investigate J Li’s
`allegations ofpatent infringement ofJLl‘s US. Patent Nos. D842,536; D858,870; D858,869; and
`D858.868 (“the Assorted Patents“) as a violation of Section 337 ofthe Tariff Act of 1930, as
`amended. by All PtrffStore and other entities, via the manufacturing. importing, distributing,
`selling in the United States, andi'or otherwise dealing in certain vaporizer cartridges and
`components thereof. On August l0. 2020. the lTC instituted the requested investigation. which
`was then styled as [n lhc Mailer 0f(.'erluin Vaporizer- Cartridges ana’ Components Thereof
`investigation No. 337-TA-l21 l (the "12! l investigation"):
`
`W HEREAS. JLl named All Puff Store as a Defendant in a district court complaint, Juul
`Labs, Inc. v. All PrgflS‘tore, No. l120—cv-0l 538 (ND. OH) ("the JLI District Court Case")
`alleging infringement of the same Assened Patents:
`
`WHERE-AS. All Puff Store has agreed to stipulate that products it has imported into the
`United States, sold after importation in the United States, or sold for importation into the United
`States infringe the sole claim in each of the Asserted Patents;
`
`

`

`investigation and the My!
`WHEREAS, All Pull" Store has agreed to settle the. l2l l
`District Court Case and, in so doing, All Pul’i’Store admits that the sole claim o‘feach ofthe
`Assorted Patents is valid and that the Joni—compatible cartridges that All Puff Store has imported
`into the United States. sold after importation in the United States, andr’or manufactured or sold
`for importation into the United States infringe the sole claim in each ofthe Assorted Patents; and
`All Puff Store desires to work with it} in an effort to resolve both the l2E l investigation and the
`ital District Court Case, and prevent products that infringe Jl...l"s patents from being sold by or
`throngh All Putt Store;
`
`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 I.
`
`Befinitions
`
`The terms set forth below shall have the following meanings in the Agreement:
`
`“Asserted Patents“ means JLl’s US. Patent Nos. D841536; D858.870;
`l.l
`US$369; and D85 8.868, including but not limited to continuations, contineationsuin-part, and
`divisionals of those patent and patent applications that derive therefrom regardless of when filed.
`to the extent they read on Infringing hull—compatible Cartridges.
`
`“infringing Junlucompatiblc Cartridges" means any electronic nicotine delivery
`l2
`system (“ENDS“) cartridge. or non—ENDS cartridge (including but not limited to
`cannahidioi (“CED”) products. cartridges that do not contain any content when imported
`(“empty pods"), or other filled non~nicotine product (such as caffeine. taurine. melatonin and
`enamomile_))—einciacling any and all components thereol3——t'hat infringes the Asserted Patents
`and is compatible with or works with the JUUL System. For the avoidance of doubt. for the
`purposes ofthis Agreement. infringing Just-compatible Cartridges include, but are not limited
`to. any products or any components thereof that infringe any oi'the claims ofAsserted Patents
`and includes but is not limited to; the articles listed in Appendix E.
`
`“All Putil‘Store Website” means All PtaffStore’s websites, namely. any websites,
`i .3
`social media accounts._ or e~comrnerce accounts owned or controlled by All Put‘fStore now or in
`the future.
`
`Store.
`
`L4
`
`“"i'hird Party" or “Third Parties” means any person other than lLl or All Full
`
`“Confidential Business Information” means any documents and things produced
`l5
`by All PuttStore in the ill 1 investigation and deemed produced in the Lil District Court Case,
`and designated as confidential by All Puff‘Storc, subject to the parties agreements regarding use
`as set forth in Appendix 3.
`
`Section 2.
`
`Termination of the Investivation and the JLI Bistrict Court CaseW
`
`Dismissal of the 1211 Investigation, Prerequisites. Upon All PuffStore’s: (l)
`2.1
`filing with the ETC the Stipulation Regarding infringement. Domestic industry. and 'lhrhlic
`
`

`

`interest described in Section 3.3 and Appendix 2; and t2) completion and tall compliance with
`the Agreed t,)iscoter§ Obligations set forth in Section 3.3 and ..-‘\ppcnt.lix 3 of this Agrccntcntw-v-
`216.. upon either (a) .lLl‘s communication ol'its decision not to dcposc All Puii‘Storc or (b) the
`adjournment ot'Qll .l's deposition oi/\ll l’ui’l’Store. as provided tor in .-“tppendix 3)~wwithin live
`(5) days the Parties will jointly tile in the l2l l lnvestigation a motion to terminate the l2l l
`Investigation. which shall include the Proposed Consent Order and Consent Order Stipulation as
`set forth in Section 3.4- ol‘this Agreement and Appendices 4 and 5, respectively. the ’arties
`agree, subject to Respondent‘s full compliance with these prerequisites. to reasonably cooperate
`il‘nccdetl in filing all papers necessary to rcsoive the 121 l
`lntcs‘tigation with respect to All Putt
`Store.
`
`Dismissal of the JLI District Court Case5 Prerequisites. Upon All l’ut‘t‘ Store’s
`22
`satisfaction ol‘ali otthe prerequisites set forth in Section 2.1: and subsequent to the liling, in the
`lli l investigation of the Partics‘ joint motion to terminate pursuant to Consent Order; within
`three (3) business days ot‘the termination otthe IZl | Investigation: the Parties shall prepare and
`file a stipulation and joint motion for an order of dismissal with retained jurisdiction. or its
`proccdurai et'ntivalcnt. in the ill District Court (' arse ”with respect to All Puff Store based on this
`.--\:_>rccnicnt.
`the Parties agree that the district court presiding otcr the NJ District Court Case.
`the lfnitcd States District Court for the Northern District ot‘t')hio will retain jurisdiction to
`enl'orce this .'\greemont. 'l'he Parties agree. subject to Respondent‘s compliance with the
`prerequisites oi" Section 2.1 and this paragraph. to reasonably cooperate il‘ needed in filing all
`papers necessary to resolve the ill District Court Case with respect to All Put‘t‘Store.
`
`
`
`Section 3.
`
`Consideration and Oblitvations
`
`No Knowing Infringement oi'JLl Patents. All Putt-Store (I) will not knowingly
`3.|
`manufacture tor importation. market. distribute. scll tor iinportt‘ttion. import. or sell after
`importation into the Lnited State-5 any Infringing .luul-compatiblc Cartridge. directly or
`indirectl}. and (2) Vt ill not knowingly aid. ahct. encourage. participate in. or induce the
`manufacntre for importation. marketing. distribution. sale for importation. importation. or sell
`ai‘tcr importation into the United Slates an)- lnii‘inging .luni—compatible Cartridge eVecpt (as
`applied to t
`l
`i
`' nd (2) ahotc) under consent or license t'rorn .lLl. its successors. or assignees. or to
`the. extent permitted by the Agreement or by law. or until the expiration, invz lidation. or
`ttnenlorccuhiiit} oi'all oi the Assorted Patents. Such el'lorts shall include:
`
`. l. Cease and Desist Marketing, Distribution, and Infringing Junt-
`3. l
`compatible Cartridges. All l’ut‘l‘Storc agrees to immediately cease and desist marketing.
`distributing. and selling any infringing .luul—cornpatihle Cartridges into the L’nited States.
`including by removing listings ol‘any lnli‘inging Joni—compatible Cartridges from the All Putt"
`Store Website targeted at sale into the lfnited States. until such time as provided by Sectitm 3. l.
`
`J
`
`

`

`3.1.2. Cessation of Sales. Ail Pitff Store attests that as of the Effective Date (a)
`it no longer has any infringing Joul~compatible Cartridges in its possession. custody, and control
`in the United States. (o) it has ceased and desisted from manufactt‘rring for importation.
`marketing, distributing, and selling for importatiom or seliing after importation in the US. ofan'y
`infringing inni—conrpatible Cartridges, and (e) no infringing Joel-compatible Cartridges remain
`listed on the Alt Puff Store Website for sale into the United States or are otherwise available for
`
`sale or distribution by All .P'oii‘t‘Store in the til-S.
`
`3.1.3. No Aid to Others. Ail Puff Store wiil not aid others, including any co-
`Rcspontlcnts in the IZl l investigation or any party named as a defendant by IL} in any district
`court actions for infringement of the Assorted Patents. now or in the future, in any action against
`JLl.
`
`Stipulation Regarding Infringement, Domestic Industry, and Public Interest.
`3.2
`Within three (:3) business days after the Effective .Dete, All .Pu ff Store shalt stipulate that the
`Intringing Soul—compatible Cartridges Ali Puff Store manufactured, sold. imported, or distributed
`infringe the Asserted Patents; that Eli’s EUULpods fali within the. scope of the sole claim in catch
`ofthe Assorted Patents; and that any remedy issued by the Commission in the 1211 investigation
`wouid not harm the pubiic health and v.-*cifarea competitive conditions in the US. economy, the
`production oi’tike 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 htterest attached hereto as Appendix 2. The Parties shalt prepare,
`and reasonably cooperate it‘needed in tiiing, all papers necessary to effect said Stipulation,
`incitiding the Stipulation Regarding Importation, infringement. Domestic industry, and, Public
`interest attached hereto as Appendix '2. To the extent that the discovery meteriais produced by
`Ail Puff Store pursuant to Section 3.3.2 and Appendix 3 to this Agreement reveal additional
`infringing Joni—compatible Cartridges. Respondent shali stipolate that any such additional
`infringing Jnnl-cornpntible Cartridges infringe the Asserted Patents. and the Parties sheil prepare.
`and reasonably cooperate i'fneeded in iiiing. all papers necessary to effect a supplemental
`Stipulation to this effect.
`
`3.3
`
`All Pufi'Storc‘s Compliance with Discovery Obligations.
`
`3,3.l. Continued Access to Confidentiai Bcsiness Information. All Puff Store
`
`will ailow Eli’s outside counsel. .ll..i’s legal department. and those acting on direction from the
`legal department. to view and act on all material, including Ail Puff Store’s CB}, that has ioeen
`prodoced in the 12? l
`investigation or the EU District Court Case-37 including all additions!
`information as provided below, as provided for in Appendix 3 to this Agreement.
`
`3.3.2. Agreed Discovery Obligations. Ail Puff Store agrees to provide .l Ll with
`discovery materials and verified responses in accordance with the Agreed Discovery Obligations
`set forth in Appendix 3. All Puff Store acknowledges that any failure to comply with the Agreed
`Discovery Ohiigetions set forth in Appendix 3 constitutes a material breach of the terms oftitis
`Agreement. All Puff Store agrees to complete its production ot‘discoverv material and foliy
`comply with the Agreed Discovery Obligations within thirty (30) days of the Etieetive Date.
`
`

`

`Eonsent Grde'h lipon All Pu FF Store s completion and Full compliance with the
`3.4
`Agreed Discovei} Obligations set forth'iii Section3 3 and Appendix 3 ofthis Agreement
`Respondent shalt sign the Consent Order Stipulation as described3119 CPR 2i {121(c)(3) and
`Appendix 5, and agree to the Proposed Consent Order as described in Appendix 4.
`
`Street Contacts. Within two (2) weeks ofthe Effective Date, Ali PeffStore and
`3.5
`lid wili assign and identi i}; a direct contact having sufficient authority for the purpose of
`corrnrttinicstin0 with the other Part} to coordinate on All Pn'Ft‘ Store 5 compliance with the
`Agreed Discoveiy Obligations, as weeil as EL} 3 intellectuai property protection measures,
`including those octailed in Sections 3.1 and 3.2, to effectuate the obligations under this
`Agreement and to create a communication path for escaiation of related issues. Such direct
`contacts will communicate by email. tcicphonc or in person as necessary to discuss the current
`state oti'scch issues and the effectiveness ofthe measures and obligations set forth under this
`Agreement.
`
`{'Ewnership of Assorted i’atents; Agreement Not to Challenge Validity. All
`3.6
`Pui‘f'Store hereby acknowledges, agrees, and assents to 1L! ‘3 exclusive ownership of the
`Assetted Patents .All Puff Store:represents warrants and covenants to NJ that it shall never
`directly or indi1ectly 121% so, assist a ihiidi’ arty in asserting, cause to be raised take any action, or
`assert:any claim oi. an} kind :eiating to the exclusive rights of. 3H and its affiliatesto ané to the
`Assertcd Patents, or the validity of the Assorted Patents.
`
`3.6.l. Release for Patent .lnf'qringcment Upon AlllPeFiS‘torc s compliance
`with the Agreed Discovew Obligations. J Ll and its parent entities, seccessms, eredeccssors.
`suhsidiaries, and respective members, partners, shareholders, officers, directors, and employees.
`will release All. Puff Store, its successors, heirs. members, partners, shareholders, assigns,
`officers, directors, servants, and empioyees, as to all claims for patent infringement of the
`Asselted Patents based on All Puff Store’s activities that were known or reasonably could have
`been known prior to the date of this Agreement and could have been raised through the date or"
`the Agreement. For the avoidance ofdoubt, this section does not include any ciairns based on
`future events. in the event that All Puff Store materiaily breaches this Agreement. including not
`limited to by failing to comply with the Agreed Discovery Obligations, this Section shall no
`longer apply.
`
`Right to Enforce This Agreement. Not‘vxr'ithstanding Section 3 or any other
`3.7
`provision ot'this Agreement, the Parties shall have the right to enforce this Agreement, including
`the right to seek specific performance of" the terms and conditions of this Agreement.
`
`Section 4.
`
`Re ziresentations Warranties and Disclaimers
`
`Authority to Sign. Each Party represents and warrants to the other Party as of the
`1H
`Eil‘cctive Date that it has the foil right and power to enter into this Agreement, and the person
`