UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
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`CERTAIN FLOCKED SWABS, PRODUCTS
`CONTAINIG FLOCKED SWABS, AND
`METHODS OF USING SAME
`
` Inv. No. 337-TA-1279
`
`ORDER NO. 46:
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`INITIAL DETERMINATION TERMINATING INVESTIGATION
`AS TO STATLAB
`
`(May 3, 2022)
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`On March 29, 2022, Complainants Copan Italia S.p.A. and Copan Industries, Inc.
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`(collectively, “Copan”) and Respondent SLMP, LLC dba StatLab Medical Products (“StatLab”)
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`filed a joint motion (1279-043; EDIS Doc. ID 766873) to terminate the investigation as to
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`StatLab based on settlement (“Mot.”)). On April 8, 2022, the Office of Unfair Import
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`Investigation (“Staff”) filed (EDIS Doc. ID 767767) a response supporting the motion (“Staff
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`Resp.”). No other party filed a response to the motion. See Mot. at 1-2; 19 C.F.R. § 210.15(c)
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`(If a party does not respond to a motion within 10 days, the party “may be deemed to have
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`consented to the granting of the relief asked for in the motion.”).
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`Under Commission Rule 210.21(a)(2), “[a]ny party may move at any time to terminate an
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`investigation in whole or in part as to any or all respondents on the basis of a settlement . . . .”
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`19 C.F.R. § 210.21(a)(2). In order to terminate the investigation on the basis of a settlement
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`agreement, the moving party or parties must file a motion to terminate with “copies of the
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`licensing or other settlement agreements, any supplemental agreements, any documents
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`referenced in the motion or attached agreements, and a statement that there are no other
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`PUBLIC VERSION
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`agreements, written or oral, express or implied between the parties concerning the subject matter
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`of the investigation.” Commission Rule 210.21(b)(1) (19 C.F.R. § 210.21(b)(1)).
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`Copan and StatLab’s motion complies with Commission Rule 210.21. In particular, the
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`confidential settlement agreement is attached to the motion to terminate as Exhibit B. The public
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`version of the settlement agreement is attached to the motion to terminate as Exhibit A.1 Copan
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`and StatLab “represent that there are no other agreements between them, whether written or oral,
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`express or implied, relating to the subject matter of this Investigation.” Mot. at 2.
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`When considering a motion to terminate based upon a settlement agreement, the
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`Commission Rules require the Administrative Law Judge to “consider and make appropriate
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`findings in the initial determination regarding the effect of the proposed settlement on the public
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`health and welfare, competitive conditions in the U.S. economy, the production of like or directly
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`competitive articles in the United States, and U.S. consumers.” 19 C.F.R. § 210.50(b)(2). Copan
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`and StatLab submit that “termination of this Investigation as to StatLab at this stage of the
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`proceedings poses no threat to the public interest” and “will not have any adverse impact on the
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`public health and welfare and/or competitive conditions in the United States.” Mot. at 2-3. Staff
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`states that it “is not aware of any evidence that termination will prejudice or adversely impact the
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`public interest.” Staff Resp. at 2. The movants and Staff further note that the public interest
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`generally favors resolving litigation through settlement so as to conserve both public and private
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`resources. Motion at 2; Staff Response at 2. The undersigned finds that termination of this
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`investigation does not impose any undue burdens on the public health and welfare, competitive
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`1 The settlement agreement is attached as Attachment 1 hereto.
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`PUBLIC VERSION
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`conditions in the United States economy, production of like or directly competitive articles in the
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`United States, or United States consumers.
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`Accordingly, it is the Initial Determination of the undersigned that Copan’s unopposed
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`motion to terminate this investigation as to StatLab (1279-043) is hereby GRANTED.
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`Respondent SLMP, LLC dba StatLab Medical Products is hereby terminated from this
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`Investigation.
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`This Initial Determination, along with supporting documentation, is hereby certified to
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`the Commission. Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
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`determination of the Commission unless a party files a petition for review of the Initial
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`Determination pursuant to 19 C.F.R. § 210.43(a), or the Commission, pursuant to 19 C.F.R. §
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`210.44, orders, on its own motion, a review of the Initial Determination or certain issues, herein.
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`SO ORDERED.
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`Monica Bhattacharyya
`Administrative Law Judge
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`PUBLIC VERSION
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`PUBLIC
`PUBLIC
`ATTACHMENT 1
`ATTACHMENT 1
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`

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`SETTLEMENT AGREEMENT
`
`This Settlement and Agreement (“Agreement”) is made as of latest date in the signature
`blocks below (“Effective Date”) between Copan Italia S.p.A. and its Affiliates (collectively,
`“Copan”), on the one hand, and Slmp, LLC dba StatLab Medical Products (“StatLab”), on the
`other hand. As used in this Agreement, “Party” refers to either Copan or StatLab, and “Parties”
`refers to Copan and StatLab collectively.
`
`WHEREAS, Copan filed a complaint entitled Certain Flocked Swabs, Products
`Containing Flocked Swabs, and Methods of Using Same, in the United States International Trade
`Commission on July 9, 2021, seeking to institute an investigation, which named StatLab as a
`Respondent;
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`WHEREAS, on August 27, 2021, the International Trade Commission instituted
`Investigation No. 337-TA-1279, naming StatLab as a Respondent (“ITC Proceeding”);
`
`WHEREAS, the ITC Proceedings concern and address the importation into the United
`States and sale after importation into the United States of flocked swab(s) and/or any product(s)
`that contain at least one imported flocked swab as packaged for commercial sale;
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`WHEREAS, Copan’s complaint alleges that the flocked swabs infringe one or more claims
`of United States Patent Nos. 9,011,358; 9,173,779; and 10,327,741 (“Asserted Claims”);
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`WHEREAS, Copan and StatLab now desire to settle and resolve the dispute between them
`concerning the ITC Proceeding on the terms and conditions set forth in this Agreement; and
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`WHEREAS, Copan and StatLab desire and agree to expand their commercial relationship;
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`NOW, THEREFORE, in consideration of the above premises and the mutual agreements
`and other good and valuable consideration, the receipt and sufficiency of which are acknowledged
`by the Parties, the Parties intending to be legally bound, agrees as follows:
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`1.0
`
`DEFINITIONS
`
`“Affiliates” means, with respect to a person, corporation, or other entity, any other
`1.1
`person, corporation or entity that directly or indirectly controls, or is controlled by, or is under
`common control with such corporation or entity. For the purposes of this definition, “control”
`means the ownership, directly or indirectly, of fifty percent (50%) or more of the voting equity of
`such entity, but such person, corporation, or entity shall be an Affiliate only for so long as such
`control exists.
`
`“Accused Product” means (i) any flocked swab that is imported into the United
`1.2
`States, and/or (ii) any product that, as packaged for commercial sale in the United States, contains
`at least one flocked swab that was not manufactured in the United States.
`
`1
`
`

`

`“Domestically Manufactured Products” means any flocked swab manufactured in
`1.3
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`the United States, and/or any product that, as packaged for commercial sale in the United States,
`contains only flocked swab(s) that were manufactured in the United States.
`
`
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`2.0
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`SALE AND DISTRIBUTION OF PRODUCT
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`No Sale or Distribution of Accused Products. StatLab agrees that as of the Effective
`2.1
`Date, StatLab will cease to market, advertise, offer for sale, and/or distribute Accused Products,
`unless authorized by Copan to do so; except that StatLab shall be entitled to exhaust StatLab’s
`existing inventory of Accused Products by no later than the conclusion of two (2) months from the
`Effective Date of this Agreement. The existing inventory shall be the inventory of Accused
`Products in StatLab’s possession and/or control as of the Effective Date. StatLab agrees and
`acknowledges that a breach of Section 2.1 shall constitute a material breach of the agreement.
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`2.2 Copan Product Presence on StatLab Website Catalog. No later than fourteen (14)
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`days after the Effective Date, for each Accused Product that StatLab ceases to offer for sale in
`accordance with Section 2.1, StatLab agrees (a) to provide on its website a link to a comparable
`Copan product and (b) to cease providing on its website any non-Copan imported flocked swabs.
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`Supply Exclusivity. Subject to the terms of Section 2.6 below, StatLab agrees to
`2.3
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`source its flocked swabs and kits containing flocked swabs exclusively from Copan.
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`Sale and Distribution of Domestically Manufactured Products. Copan agrees not
`2.4
`to seek to enjoin any third party from which StatLab procures or sources Domestically
`Manufactured Products. Copan further agrees that it shall not seek damages directly from StatLab,
`or its Affiliates, related to, or resulting from, a claim of patent infringement concerning a
`Domestically Manufactured Product. For clarity, this section applies exclusively to StatLab and
`its Affiliates, and shall not be construed as providing any benefits or rights to any other third-party
`from which StatLab procures or sources Domestically Manufactured Products, nor shall it be
`construed to exhaust or extinguish any available damages arising out of, or resulting from, any
`such third-party’s infringement of a patent owned or assigned to Copan.
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`Sales and Inventory Disclosure; Requirements Forecasting. No later than seven (7)
`2.5
`days after the Effective Date:
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`2.5.1
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`2.5.2
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`
`
`
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`Limited Supply Protection Exception to Exclusivity. If StatLab issues a purchase
`2.6
`order for flocked swabs or products containing flocked swabs to Copan, which provides, among
`
`2
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`

`

`other things, a commercially reasonable lead time for Copan to fulfill the order as requested in the
`purchase order, and
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`3.0
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`RELEASE
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`Copan Release of StatLab. Copan, and its Affiliates, releases, acquit and forever
`3.1
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`discharge StatLab, together with StatLab’s Affiliates, predecessors, successors, agents, attorneys,
`insurers, servants , employees, officers, and directors, and purchasing customers from any and all
`actions, causes of action, claims or demands, liabilities, losses, damages, attorneys’ fees, court
`costs, or other form of claim or compensation concerning or arising from
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`4.0
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`TERMINATION FROM ITC PROCEEDING
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`Copan agrees to move to terminate all allegations and claims asserted against
`4.1
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`StatLab in the ITC Proceeding as soon as is reasonably practicable following the Execution Date
`of this Agreement.
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`5.0
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`TERM AND TERMINATION
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`This Agreement shall not be binding on the Parties until it has been signed below
`5.1
`by both Parties, at which time it shall be deemed effective as of the Effective Date. The Agreement
`shall remain in full force and effect until April 1, 2024. At that time, the releases of Section 3.1
`shall remain in effect in perpetuity.
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`Other than as set forth Section 5.1, the Agreement may only be terminated by
`5.2
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`mutual written agreement of the Parties.
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`6.0
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`ASSIGNABILITY
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`Neither Party may grant or assign any rights or delegate any duties under this
`6.1
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`Agreement to any third-party without the prior written consent of the other, and any attempted
`assignment without such consent shall be null and void.
`
`3
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`

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`7.0
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`CONFIDENTIALITY
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`Except to the extent required by any applicable (i) securities regulation, (ii)
`7.1
`accounting rule, or (iii) ITC rule in connection with the motion to terminate required by section
`4.1, the Parties agree that the terms and provisions of this Agreement shall be kept confidential,
`and shall not be disclosed in any manner. The Parties agree, however, that if asked by a third-
`party about StatLab and the ITC Proceedings, the Parties may respond that the Parties have
`resolved the dispute between them and have agreed on an expanded commercial relationship going
`forward; and that StatLab has agreed to cease importing, distributing, an/or offering for sale the
`Accused Products within the United States. Each Party shall also have the right, at its sole
`discretion, to issue a press release, subject to the terms and restrictions of this section.
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`If either Party receives a subpoena or discovery order from a court or agency of
`7.2
`competent jurisdiction, compliance with which would require the production of this Agreement,
`the receiving Party shall give the other Party to this Agreement at least five (5) business days
`advance notice of its intent to comply with the subpoena or discovery order, so that the non-
`receiving Party may take whatever steps it deems necessary to protect the confidentiality of this
`Agreement.
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`8.0
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`NOTICE
`
`All notices required or permitted to be given in accordance with this Agreement
`8.1
`shall be in writing and shall be deemed delivered (i) upon receipt if delivered by hand, (ii) the next
`business day after being sent by prepaid, nationally-recognized , overnight air courier or service,
`(iii) five (5) business days after being sent by registered or certified mail, return receipt requested
`and postage prepaid, or (iv) upon transmittal when transmitted by electronic mail with
`confirmation of receipt.
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`8.2
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`All notices shall be addressed as follows:
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`8.2.2 For StatLab:
`
`
`
`Adam Swain
`ALSTON & BIRD LLP
`950 F Street NW
`Washington, DC 20004
`Telephone: (202) 239-3622
`Facsimile: (202) 654-4842
`
`8.2.2 For Copan:
`
`4
`
`Todd Baldanzi
`SLMP, LLC
`2090 Commerce Dr.
`McKinney, TX 75069
`Telephone: 972-436-1010
`
`

`

`James M. Wodarski
`Mintz Levin
`One Financial Center
`Boston, MA 02111
`617.348.1855
`(jwodarski@mintz.com)
`
`Lorenzo Fumagalli, General Counsel
`Copan Group
`Via Francesco Perotti, 10, 25125
`Brescia, BS, Italia
`+39 030 2687203
`(Lorenzo.Fumagalli@copangroup.com)
`
`
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`9.0 MISCELLANEOUS
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`Counterparts. The Agreement may be executed in several counterparts, each of
`9.1
`which is deemed to be an original but all of which constitute one and the same instrument.
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`Representation by Counsel. Each Party and its counsel have reviewed and
`9.2
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`approved the Agreement, and accordingly any presumption or rule of construction permitting
`ambiguities to be resolved against the drafting party shall not be employed in the interpretation or
`application of the Agreement.
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`Headings. The headings inserted into this Agreement are for reference only and
`9.3
`
`are not intended to form any part of the operative portion of the Agreement, and they shall not be
`employed in the interpretation or application of the Agreement.
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`Choice of Law. The Agreement shall be construed, and the relationship of the
`9.4
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`Parties determined, in accordance with the laws of the State of New York, notwithstanding any
`choice-of-law principle that might dictate the use of a different governing law.
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`Agreement to Arbitrate. The Parties agree that any and all disputes arising out of,
`9.5
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`or resulting from, or related to, this Agreement, shall be resolved through arbitration before a single
`arbitrator, under the auspices of the American Arbitration Association, and in accordance with the
`AAA Commercial Arbitration Rules. The location of the arbitration hearing shall be Boston,
`Massachusetts. For clarity, the Parties understand and agree that this arbitration provision shall be
`given its broadest possible interpretation and scope. The prevailing Party in any arbitration
`proceeding shall be entitled to an award of its attorneys’ fees and costs associated with the
`arbitration.
`
`5
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`

`

`PUBLIC VERSION
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`IN WITNESS WHEREOF,this Agreement has been duly executed by the Parties to be
`effective as of the Effective Date.
`
`Slmp, LLC
`CopanItalia, S.p.A.
`dba StatLab Medical Products
`DocuSigned by:
`
`By:LealBaldi__ By: | Loren Fumagalli
`
`Name: Todd Baldanzi
`Name: Lorenzo Fumagal14
`Its: Chief Financial Officer
`Its:
`General Counsel
`
`Dated: Mar 25, 2022
`
`Dated: 3/28/2022 | 3:49:01 PM EDT
`
`