`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`NJOY, INC., CB DISTRIBUTORS, INC.,
`DR DISTRIBUTORS, LLC, FIN BRANDING GROUP, LLC,
`ELECTRONIC CIGARETTES INTERNATIONAL GROUP, LTD., f/k/a VIC-
`TORY ELECTRONIC CIGARETTES CORPORATION, and, LOGIC TECH-
`NOLOGY DEVELOPMENT, LLC,
`Petitioners,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`
`___________________________________
`
`
`
`Case IPR2015-01299
`Patent 8,910,641 B2
`
`___________________________________
`
`
`
`JOINT MOTION TO TERMINATE PETITIONER CB/DR PURSUANT TO
`35 U.S.C. § 317
`
`
`
`
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners CB Dis-
`
`tributors, Inc. and DR Distributors, LLC (together, “Petitioner CB/DR”) and Patent
`
`Owner Fontem Holdings 1 B.V. (“Patent Owner”) jointly move the Patent Trial
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`and Appeal Board (“Board”) to terminate Petitioner CB/DR from IPR2015-01299.
`
`There are multiple Petitioners in IPR2015-01299. Petitioner NJOY, Inc. (“NJOY”)
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`and Patent Owner filed a similar request to terminate Petitioner NJOY from
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`IPR2015-01299, and Petitioner Logic Technology Development, LLC (“Logic”)
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`and Patent Owner also filed a similar request to terminate Petitioner Logic from
`
`IPR2015-01299.
`
`On December 2, 2015, Patent Owner and Petitioner CB/DR notified the
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`Board that they reached a settlement agreement, including a license agreement, re-
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`solving all disputes between them involving the patent-at-issue in this IPR, and fur-
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`ther requested guidance and permission to file a motion to terminate Petitioner
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`CB/DR from IPR2015-01299. On December 2, 2015, the Board authorized Patent
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`Owner and Petitioner CB/DR to file a joint motion to terminate and a joint request
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`to treat the settlement agreement as business confidential.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy (in-
`
`cluding counterparts) of the confidential settlement agreement and license agree-
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`ment is filed herewith. Because the settlement agreement and license agreement
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`are confidential, Patent Owner and Petitioner CB/DR respectfully request that it be
`
`1
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`treated as business confidential information and kept separate from the underlying
`
`patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Patent
`
`Owner and Petitioner CB/DR request that the settlement and license agreement be
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`accessible to the “Board Only” because Petitioners NJOY, FIN Branding Group,
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`LLC, Electronic Cigarettes International Group, LTD., f/k/a Victory Electronic
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`Cigarettes Corporation (“FIN/ECIG”), and Logic should not have access to the set-
`
`tlement and license agreement.
`
`As stated in 35 U.S.C. § 317(a), because Petitioner CB/DR and Patent Own-
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`er are jointly requesting this termination, no estoppel under 35 U.S.C. § 315(e)
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`shall attach to Petitioner CB/DR.
`
`I.
`
`TERMINATION OF PETITIONER CB/DR FROM THE INTER
`PARTES REVIEW PROCEEDING IS APPROPRIATE
`
`The statutory provision on a settlement relating to Inter Partes Reviews pro-
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`vides that an Inter Partes Review “shall be terminated with respect to any petition-
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`er upon the joint request of the petitioner and the patent owner, unless the Office
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`has decided the merits of the proceeding before the request for termination is
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`filed.” 35 U.S.C. § 317.
`
`Because the Board has not decided the merits of the Inter Partes Review
`
`Proceeding, Section 317 provides that the Inter Partes Review Proceeding should
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`be terminated with respect to Petitioner CB/DR.
`
`2
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`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`II. MATTERS RELATED TO THE INTER PARTES REVIEW
`
`The patent-at-issue in the IPR2015-01299 is the subject of several federal
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`district court litigations, including one matter that involves Patent Owner and Peti-
`
`tioner CB/DR. There are no other petitions for IPR or IPR of the patent-at-issue.
`
`The settlement agreement and license agreement have resolved all disputes involv-
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`ing the patent-at-issue between the Patent Owner and Petitioner CB/DR.
`
`A. Case No. 2:14-CV-01645 (C.D. Cal.) Relates to the Inter Partes
`Review
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`Patent Owner filed a patent infringement suit against Petitioner CB/DR in
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`the United States District Court for the Central District of California, captioned
`
`Fontem Ventures B.V. et al. v. CB Distributors, Inc. et al., Case No. 2:14-cv-
`
`09266. Patent Owner accused Petitioner CB/DR of infringing the patent-at-issue
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`in the Inter Partes Review Proceeding in addition to one other patent. This litiga-
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`tion was consolidated with several related cases asserting seven additional patents
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`against Petitioner CB/DR. As a result, a total of nine patents have been asserted
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`against Petitioner CB/DR in the consolidated action (Case No. 2-14-cv-01645).
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`Those litigations are covered by the settlement agreement and license agreement.
`
`Patent Owner also filed patent infringement suits against other entities as-
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`serting the patent-at-issue in the United State District Court for the Central District
`
`of California, captioned Fontem Ventures BV et al. v. LOEC, Inc. et al., Case No.
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`2-14-cv-09265; Fontem Ventures BV et al. v. NJOY, Inc. et al., Case No. 2-14-cv-
`
`3
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`09263; Fontem Ventures BV et al. v. Ballantyne Brands, LLC, Case No. 2-14-cv-
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`09269; Fontem Ventures BV et al. v. Logic Technology Development LLC, Case
`
`No. 2-14-cv-09271; Fontem Ventures BV et al. v. Spark Industries, LLC, Case No.
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`2-14-cv-09270; Fontem Ventures BV et al. v. Vapor Corp., Case No. 2-14-cv-
`
`09267; Fontem Ventures BV et al. v. VMR Products, LLC, Case No. 2-14-cv-
`
`09273; Fontem Ventures BV et al. v. FIN Branding Group, LLC et al., Case No. 2-
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`14-cv-09268.
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`B. Board Proceedings
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`As mentioned above, there are no other petitions for Inter Partes Review of
`
`the patent-at-issue.
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`III. CONCLUSION
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`Patent Owner and Petitioner CB/DR respectfully request that the Board
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`grant Patent Owner and Petitioner CB/DR’s joint motion to terminate Petitioner
`
`CB/DR from IPR2015-01299 and grant the accompanying request to treat the set-
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`tlement agreement and license agreement between Patent Owner and Petitioner
`
`CB/DR as business confidential information.
`
`Patent Owner and Petitioner CB/DR are available at the Board’s conven-
`
`ience to discuss these related matters in more detail or answer any additional ques-
`
`tions raised by this joint motion.
`
`4
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`
`
`
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`
`
`
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`December 3, 2015
`
`By: /James H. Morris/
`James H. Morris (Lead Counsel)
`Reg. No. 34,681
`WOLF, GREENFIELD & SACKS,
`P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`P: 617-646-8000 / F: 617-646-8646
`JMorris-PTAB@wolfgreenfield.com
`
`Lead Counsel for Petitioners
`
`
`5
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`Respectfully submitted,
`
`
`By: /Michael J. Wise/ _______
`Michael J. Wise (Lead Counsel)
`Reg. No. 34,047
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the following document has
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`
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`been served in its entirety by filing the JOINT MOTION TO TERMINATE PETI-
`
`TIONER CB/DR PURSUANT TO 35 U.S.C. § 317 through the Patent Review
`
`Processing System, as well as by causing the aforementioned document to be elec-
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`tronically mailed, pursuant to the parties’ agreement, to the following attorneys of
`
`record for the Petitioners listed below:
`
`James H. Morris (Lead Counsel)
`Edmund J. Walsh (Backup Counsel)
`WOLF, GREENFIELD & SACKS, P.C.
`JMorris-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`
`
`Dated:
`
`
`
`
`
`December 3, 2015
`
`
`
`
`
`
`
`/Amy Candeloro/
`Paralegal
`PERKINS COIE LLP