UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`
`
`In the Matter of
`
`
`
`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`
`
`Investigation No. 337-TA-1211
`
`
`CEASE AND DESIST ORDER
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`
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`IT IS HEREBY ORDERED THAT RESPONDENT Modern Age Tobacco of
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`Gainesville, Florida cease and desist from conducting any of the following activities in the
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`United States: importing, selling, offering for sale, marketing, advertising, distributing,
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`transferring (except for exportation), soliciting United States agents or distributors, and aiding or
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`abetting other entities in the importation, sale for importation, sale after importation, transfer
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`(except for exportation), or distribution of certain vaporizer cartridges and components thereof
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`(as defined in Definition (G) below) that infringe the sole claims of U.S. Design Patent Nos.
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`D842,536; D858,870; D858,869; and D858,868 (“Asserted Patents”), respectively, in violation
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`of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
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`I.
`Definitions
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`As used in this order:
`
`(A)
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`(B)
`
`(C)
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`“Commission” shall mean the United States International Trade Commission.
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`“Complainant” shall mean Juul Labs, Inc. of San Francisco, California.
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`“Respondent” shall mean Modern Age Tobacco of Gainesville, Florida.
`
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`Washington, D.C.
`
`
`
`In the Matter of
`
`
`
`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`
`
`Investigation No. 337-TA-1211
`
`
`CEASE AND DESIST ORDER
`
`
`
`IT IS HEREBY ORDERED THAT RESPONDENT Modern Age Tobacco of
`
`Gainesville, Florida cease and desist from conducting any of the following activities in the
`
`United States: importing, selling, offering for sale, marketing, advertising, distributing,
`
`transferring (except for exportation), soliciting United States agents or distributors, and aiding or
`
`abetting other entities in the importation, sale for importation, sale after importation, transfer
`
`(except for exportation), or distribution of certain vaporizer cartridges and components thereof
`
`(as defined in Definition (G) below) that infringe the sole claims of U.S. Design Patent Nos.
`
`D842,536; D858,870; D858,869; and D858,868 (“Asserted Patents”), respectively, in violation
`
`of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
`
`I.
`Definitions
`
`As used in this order:
`
`(A)
`
`(B)
`
`(C)
`
`“Commission” shall mean the United States International Trade Commission.
`
`“Complainant” shall mean Juul Labs, Inc. of San Francisco, California.
`
`“Respondent” shall mean Modern Age Tobacco of Gainesville, Florida.
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`2
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`(D)
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`“Person” shall mean an individual, or any non-governmental partnership, firm,
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`association, corporation, or other legal or business entity other than Respondent or
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`its majority-owned or controlled subsidiaries, successors, or assigns.
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`(E)
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`“United States” shall mean the fifty States, the District of Columbia, and
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`Puerto Rico.
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`(F)
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`The terms “import” and “importation” refer to importation for entry for
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`consumption under the Customs laws of the United States.
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`(G)
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`The term “covered products” shall mean vaporizer cartridges and components
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`thereof that infringe the sole claims of U.S. Design Patent Nos. D842,536;
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`D858,870; D858,869; and D858,868, respectively. The vaporizer cartridges and
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`components thereof subject to this order are as follows: vaporizer cartridges and
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`components thereof containing a space to hold a vaporizable liquid substance that
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`can be vaporized after the cartridge is inserted into a vaporizer device. Covered
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`products shall not include articles for which a provision of law or license avoids
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`liability for infringement.
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`II.
`Applicability
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`The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
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`principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
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`by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
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`and to each of them, insofar as they are engaging in conduct prohibited by section III, infra, for,
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`with, or otherwise on behalf of, Respondent.
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`3
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`III.
`Conduct Prohibited
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`The following conduct of Respondent in the United States is prohibited by this Order.
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`For the remaining terms of the Asserted Patents, Respondent shall not:
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`(A)
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`import or sell for importation into the United States covered products;
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`(B) market, distribute, sell, offer to sell, or otherwise transfer (except for exportation)
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`(C)
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`(D)
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`(E)
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`in the United States imported covered products;
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`advertise imported covered products;
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`solicit U.S. agents or distributors for imported covered products; or
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`aid or abet other entities in the importation, sale for importation, sale after
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`importation, transfer, or distribution of covered products.
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`IV.
`Conduct Permitted
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`Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
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`by the terms of this Order shall be permitted if:
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`(A)
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`in a written instrument, the owner of the Asserted Patents licenses or authorizes
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`such specific conduct; or
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`(B)
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`such specific conduct is related to the importation or sale of covered products by
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`or for the United States.
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`V.
`Reporting
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`For purposes of this requirement, the reporting periods shall commence on January 1 of
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`each year and shall end on the subsequent December 31. The first report required under this
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`section shall cover the period from the date of issuance of this order through December 31, 2022.
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`This reporting requirement shall continue in force until such time as Respondent has truthfully
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`
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`reported, in two consecutive timely filed reports, that it has no inventory (whether held in
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`4
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`warehouses or at customer sites) of covered products in the United States.
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`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
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`the Commission: (a) the quantity in units and the value in dollars of covered products that it has
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`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
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`and (b) the quantity in units and value in dollars of reported covered products that remain in
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`inventory in the United States at the end of the reporting period.
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`When filing written submissions, Respondent must file the original document
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`electronically on or before the deadlines stated above. Submissions should refer to the
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`investigation number (“Inv. No. 337-TA-1211”) in a prominent place on the cover pages and/or
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`the first page. See Handbook for Electronic Filing Procedures,
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`http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
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`Persons with questions regarding filing should contact the Secretary (202-205-2000). If
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`Respondent desires to submit a document to the Commission in confidence, it must file the
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`original and a public version of the original with the Office of the Secretary and must serve a
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`copy of the confidential version on Complainant’s counsel.1
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`Any failure to make the required report or the filing of any false or inaccurate report shall
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`constitute a violation of this Order, and the submission of a false or inaccurate report may be
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`referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
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`1 Complainants must file a letter with the Secretary identifying the attorney to receive
`reports and bond information associated with this Order. The designated attorney must be on the
`protective order entered in the investigation.
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`5
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`VI.
`Record-Keeping and Inspection
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`(A)
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`For the purpose of securing compliance with this Order, Respondent shall retain
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`any and all records relating to the sale, marketing, or distribution in the United
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`States of covered products, made and received in the usual and ordinary course of
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`business, whether in detail or in summary form, for a period of three (3) years
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`from the close of the fiscal year to which they pertain.
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`(B)
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`For the purposes of determining or securing compliance with this Order and for
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`no other purpose, subject to any privilege recognized by the federal courts of the
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`United States, and upon reasonable written notice by the Commission or its staff,
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`duly authorized representatives of the Commission shall be permitted access and
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`the right to inspect and copy, in Respondent’s principal offices during office
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`hours, and in the presence of counsel or other representatives if Respondent so
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`chooses, all books, ledgers, accounts, correspondence, memoranda, and other
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`records and documents, in detail and in summary form, that must be retained
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`under subparagraph VI(A) of this Order.
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`VII.
`Service of Cease and Desist Order
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`The Secretary shall serve copies of this Order upon each party of record in this
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`investigation that has retained counsel or otherwise provided a point of contact for electronic
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`service and upon CBP. While temporary remote operating procedures are in place in response to
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`COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
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`or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
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`Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
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`
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`orders that the Complainant complete service of this Order for any party without a method of
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`6
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`electronic service noted on the attached Certificate of Service and shall file proof of service on
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`the Electronic Document Information System (EDIS).
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`Respondent is ordered and directed to:
`
`(A)
`
`Serve, within fifteen (15) days after the effective date of this Order, a copy of this
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`Order upon each of its respective officers, directors, managing agents, agents, and
`
`employees who have any responsibility for the importation, marketing,
`
`distribution, transfer, or sale of imported covered products in the United States;
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`(B)
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`Serve, within fifteen (15) days after the succession of any persons referred to in
`
`subparagraph VII(A) of this order, a copy of the Order upon each successor; and
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`(C) Maintain such records as will show the name, title, and address of each person
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`upon whom the Order has been served, as described in subparagraphs VII(A) and
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`VII(B) of this order, together with the date on which service was made.
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`The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
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`the expiration of the Asserted Patents.
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`VIII.
`Confidentiality
`
`Any request for confidential treatment of information obtained by the Commission
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`pursuant to section VI of this order should be made in accordance with section 201.6 of the
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`Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
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`confidential treatment is sought, Respondent must provide a public version of such report with
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`confidential information redacted.
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`7
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`IX.
`Enforcement
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`Violation of this order may result in any of the actions specified in section 210.75 of the
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`Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
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`civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
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`any other action that the Commission deems appropriate. In determining whether Respondent is
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`in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
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`provide adequate or timely information.
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`X.
`Modification
`
`The Commission may amend this order on its own motion or in accordance with the
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`procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
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`(19 C.F.R. § 210.76).
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`XI.
`Bonding
`
`The conduct prohibited by section III of this order may be continued during the sixty (60)
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`day period in which this Order is under review by the United States Trade Representative, as
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`delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
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`of a bond in the amount of one hundred percent (100%) of their entered value. This bond
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`provision does not apply to conduct that is otherwise permitted by section IV of this Order.
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`Covered products imported on or after the date of issuance of this Order are subject to the entry
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`bond as set forth in the exclusion order issued by the Commission, and are not subject to this
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`bond provision.
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`The bond is to be posted in accordance with the procedures established by the
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`Commission for the posting of bonds by complainants in connection with the issuance of
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`
`
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`temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
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`8
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`documentation are to be provided to and approved by the Commission prior to the
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`commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
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`Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
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`parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
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`Complainant’s counsel.2
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`The bond is to be forfeited in the event that the United States Trade Representative
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`approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
`
`of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
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`determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
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`products subject to this bond and provides certification to that effect that is satisfactory to the
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`Commission.
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`This bond is to be released in the event (i) the United States Trade Representative
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`disapproves this Order and no subsequent order is issued by the Commission and approved (or
`
`not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
`
`the Federal Circuit, in a final judgment, reverses any Commission final determination and order
`
`as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
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`bond and provides certification to that effect that is satisfactory to the Commission, upon service
`
`on Respondent of an order issued by the Commission based upon application therefor made by
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`Respondent to the Commission.
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`2 See Footnote 1.
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`
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`By order of the Commission.
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`9
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`Issued: February 14, 2022
`
`
`
`
`Lisa R. Barton
`Secretary to the Commission
`
`
`
`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`
`
`Inv. No. 337-TA-1211
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has been
`served upon the Commission Investigative Attorney, Claire Comfort, Esq., via EDIS, and the
`following parties as indicated, on February 14, 2022.
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`On Behalf of Complainant Juul Labs, Inc.:
`
`S. Alex Lasher, Esq.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`1300 I Street, NW, Suite 900
`Washington, DC 20005
`
`
`On Behalf of Respondents Shenzhen Apoc Technology Co.,
`Limited, Shenzhen Bauway Technology Ltd., and Shenzhen
`Ocity Times Technology Co., Ltd.:
`
`P. Andrew Riley, Esq.
`MEI & MARK
`818 18th Street, NW, Suite 410
`Washington, DC 20035
`Email: ariley@meimark.com
`
`On Behalf of Respondents Tobacco Alley of Midland:
`
`Nathan C. Brunette, Esq.
`STOEL RIVES LLP
`760 SW Ninth Avenue, Suite 3000
`Portland, OR 97205
`Email: nathan.brunette@stoel.com
`
`Respondents:
`
`101 Smoke Shop, Inc.
`3266 Cahuenga Boulevard West,
`
`
`
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`
`
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification
`of Availability for Download
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification
`of Availability for Download
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification
`of Availability for Download
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`☐ Via Hand Delivery
`☐ Via Express Delivery
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`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`Certificate of Service – Page 2
`Los Angeles, CA 90068
`
`Inv. No. 337-TA-1211
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`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`Guangdong Cellular Workshop Electronic Technology Co., Ltd. ☐ Via Hand Delivery
`
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`Shenzhen Azure Tech USA LLC f/k/a DS
`Vaping P.R.C.
`10th Fl. ChongQing Rd., Fuyong, Shenzhen, Guangdong,
`China, 518100
`
`
`Access Vapor LLC
`6550 International Drive
`Suite 103
`Orlando, FL 32819
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`Cali Pods
`PO Box 41387
`Houston, TX 77241
`
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`DripTip Vapes LLC
`151 N. Nob Hill Road
`#115
`Plantation, FL 33325
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`Eon Pods LLC
`155 Washington Street
`Jersey City, NJ 07302
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`Evergreen Smokeshop
`3221 Foothill Boulevard
`Oakland, CA 94601
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`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`Certificate of Service – Page 3
`888 BBK Avenue, Jiangbei Village
`Wusha Community, Changan Town, Dongguan City
`Guangdong PR China
`
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`Jem Pods, U.S.A.
`8411 Lake Drive
`Snellville, GA 30039
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`Modern Age Tobacco
`1122 W. University Avenue
`Gainesville, FL 32601
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`Mr. Fog
`605 Country Club Drive
`Bensenville, Il 60106
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`Puff E-Cig
`3 Mountain Drive
`Imlay City, MI 48444
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`Shenzhen Yark Technology Co., Ltd.
`3 Floor of No.14 SongShang West Road
`BoGang Community Xinsha Road Of Shajing
`District Bao’an, Shenzhen
`China 518125
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`Sky Distribution LLC
`P.O. Box 1325
`Addison, IL 60101
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`Inv. No. 337-TA-1211
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`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`Inv. No. 337-TA-1211
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by Complainants
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`CERTAIN VAPORIZER CARTRIDGES
`AND COMPONENTS THEREOF
`Certificate of Service – Page 4
`The Kind Group LLC
`1808 Brielle Avenue
`Ocean, NJ 07712
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`Valgous
`411 Country Club Drive
`Bensenville, IL 60106
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`Vapers&Papers, LLC
`714 Stanley Street
`Schenectady, NY 12307
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`eLiquid Stop
`101 N Verdugo Road
`#11701
`Glendale, CA 91226
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