STERNE KESSLER OOLDSTEIN & FOX DANIEL E. YONAN … · 10/3/2018 · U.S. International Trade...

Sterne Kessler STERNE KESSLER OOLDSTEIN & FOX

DANIEL E. YONAN

DIRECTOR (202) 772-8899 [email protected]

October 3, 2018

The Honorable Lisa R. Barton Via Hand Delivery Secretary to the Commission U.S. International Trade Commission 500 E Street S.W. Washington, DC 20436

Re: Certain Electronic Nicotine Delivery Systems and Components Thereof

Dear Secretary Barton:

Enclosed for filing on behalf of Complainant Juul Labs, Inc. ("JLI") are the following documents in support of JLI’s request that the Commission commence an investigation pursuant to Section 337 of the Tariff Act of 1930, as Amended.

Accordingly, JLI submits the following documents for filing:

1. An original and eight (8) paper copies of the verified Non-Confidential Complaint (original unbound); one (1) CD of the accompanying Non-Confidential exhibits, and one (1) CD with Confidential exhibits (Commission Rules 201.6(c), 210.4(f)(2) and 210. 8(a)(1 )(i));

2. An original and eight (8) paper copies of the Non-Confidential Public Interest Statement (original unbound); (Commission Rules 201.6(c) and 210.8(b));

3. Nineteen (19) additional paper copies of the verified Non-Confidential Complaint, the Non-Confidential Statement of Public Interest and nineteen (19) CDs of the Non-Confidential Exhibits for service upon each proposed Respondent (Commission Rules 210.8(a)(1)(iii) and 210.11 (a)(i));

4, Nineteen (19) additional copies of the Confidential Exhibits on CD for service upon each proposed Respondent once appropriate subscriptions to a protective order have been filed (Commission Rule 210.8(a)(1)(iii));

5. Three (3) additional paper copies of the verified Non-Confidential Complaint for service upon the Embassies of Uruguay, China, and France (Commission Rule 21 0.8(a)(l)(iv));

Sterne, Kesse, Godsten & Fox P,L,L,C, 1 1100 New York Avenue, NW I Weshngton, D.C. 20005

P 2023712600 1 F 2023712540 1 sternekes&ercom

The Honorable Lisa R. Barton October 3, 2018

6. One (1) certified copy of the involved United States Patent Nos.: 10,070,669 ("the ’669 patent"), 10,076,139 ("the ’139 patent"), 10,045,568 ("the ’568 patent"), and 10,058,130 ("the ’130 patent") listed as Exhibits 67, 70, 73, and 75 in the Complaint (Commission Rules 210.8(a)(1)(i) and 210.12(a)(9)(i));

7. One (1) certified copy of each of the assignments for the ’669 patent, ’139 patent, ’568 patent, and ’130 patent listed as Exhibits 68, 71, 74, and 76 in the Complaint (Commission Rules 210.8(a)(1)(i) and 210.12(a)(9)(ii));

8. One (1) certified copy of the prosecution histories of the ’669 patent, ’139 patent, ’568 patent, and ’130 patent listed as Appendices B, D, F, and H in the Complaint and three (3) additional copies on separate CDs (Commission Rule 210.12(c)(1));

9. Four (4) CDs containing each reference document identified in the prosecution histories of the ’669 patent, ’139 patent, ’568 patent, and ’130 patent listed as Appendices C, E, G, and I in the Complaint (Commission Rule 210.12(c)(2));

10. Four (4) CDs containing additional material identified and listed as Appendix A in the Complaint; and

11. A letter of certification pursuant to Commission Rules 201,6(b) and 210.5(d) requesting confidential treatment of information appearing in Confidential Exhibits 17-19, 110, 114, and 177-180 to the verified Non-Confidential Complaint.

Please contact me if you have any questions about this request, or if this request is not granted in full. Thank you for your attention to this matter.

Respectfully submitted,

STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.

-- Daniel E. Yonn)

DEY/dof

Enclosures

Sterne, Kesser, GoWsteh & Fox P.L.L.C. I 1100 New York Avenue, NW I Washington, D.C. 20005

P 202371.2600 1 F 2023712540 1 sternekessercorn

@ Sterne Kessler STERNE KESSLER GOLDSTEN & FOX

DANIEL E. YONAN D[RECTOR (202) 772-8899 [email protected]

-

October 3, 2018

The Honorable Lisa R. Barton Via Hand Delivery Secretary to the Commission

U.S. International Trade Commission

500 E Street S.W.

Washington, DC 20436

Re: Certain Electronic Nicotine Delivery Systems and Components Thereof

Dear Secretary Barton:

Sterne, Kessler, Goldstein & Fox P.L.L.C. represents Complainant Juul Labs, Inc. ("JLI )

in its action pursuant to Section 337 of the Tariff Act of 1930, as amended.

Pursuant to Commission Rules 201.6(b) and 210.5(d), JLI respectfully requests confidential treatment of Confidential Exhibits 17-19, 110, 114, and 177-180 to the Complaint.

The information for which confidential treatment is sought is propriety and not otherwise

publicly available. Specifically, Confidential Exhibits 17-19, 110, 114, and 177-180 contain proprietary commercial information regarding the electronic nicotine delivery systems at issue,

JLI’s patented technology and its infringement in the import trade by the proposed Respondents, as well as JLI’s investments and employment activities made in furtherance of its domestic

industry under 19 U.S.C. 1337(a)(3).

The Commission has routinely held that this type of information qualifies as confidential business information pursuant to Rule 201.6(a) because:

(A) It is not publicly available;

(B) Unauthorized disclosure of such information could cause substantial harm

to the competitive position of JLI; and

(C) The disclosure of such information could impair the Commission’s ability

to obtain information necessary to perform its statutory function.

Sterne Kessler, Goldstein & Fox P.L.L,C 1100 New York Avenue, NW I Washington, D.C. 20005

P 202.371 2600 1 F 2023712540 1 sternekes&er.com

The Honorable Lisa R. Barton October 3, 2018 Page 2

Please contact me if you have any questions about this request, or if this request is not granted in full. Thank you for your attention to this matter.

STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.

I /

Daniel E. Yonan,)

DEY/dof

Sterne, Kesser, Godsten & Fox P,L,L,C, 1 1100 New York Avenue, NW I Washngton, DC, 20005

202.371.2600 1 F 202371.2540 1 sternekessercom

UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.

In the Matter of

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS AND COMPONENTS THEREOF

Investigation No. 337-TA - ____

VERIFIED COMPLAINT UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED

Complainant Juul Labs, Inc. 560 20th Street San Francisco, CA 94107 (415) 829-2336

Proposed Respondents J Well France S.A.S. 50 rue de Miromesnil 75008 Paris, France 33 (0) 1 44 65 38 70 Bo Vaping 591 Stewart Avenue Garden City, NY 11530 MMS Distribution LLC 195 Lake Louise Marie Road Rock Hill, NY 12775 (516) 806-4900 The Electric Tobacconist, LLC 3235 Prairie Avenue Boulder, CO 80301 (646) 853-0368 Eonsmoke, LLC 1500 Main Ave, 2nd Floor Clifton, NJ 07011 (862) 225-9100 ZLab S.A. Ave. Golero, 911 Office 27 Punta del Este – Maldonado – Uruguay 20100

Counsel for Complainant Daniel E. Yonan Michael E. Joffre Nirav N. Desai Paul A. Ainsworth Uma N. Everett STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 (202) 371-2600

Ziip Lab Co., Limited E district 4F, 5 building, Wen Ge Industrial Zone, Heshuikou Gongming St., Guangming New District Shenzhen City, Guangdong Province China 518106 (86) 755-21385136 Shenzhen Yibo Technology Co., Ltd. 1F-4F, 3rd Building, Laowei, Tiantou Community Pingshan Sub-District, Pingshan New District Shenzhen City, Guangdong Province China 518118 (86) 755 86001023 XFire, Inc. 820 Summer Park Dr., Suite 700 Stafford, TX 77477 ALD Group Limited No. 2, 3rd Industrial Road Baoan District Shenzhen City, Guangdong Province China 518108 (86) 755-29271296 Flair Vapor LLC 2500 Hamilton Blvd., Suite B South Plainfield, NJ 07080 Shenzhen Joecig Technology Co., Ltd. 1F-5F, Building 17, Quarter G ShaJing Rd., Gonghe 3rd Industry District Baoan District Shenzhen City, Guangdong Province China 518104 (86) 755 27460719 x606 Myle Vape Inc. 8085 Chevy Chase Street Jamaica, NY 11432

Vapor Hub International, Inc. 1871 Tapo Street Simi Valley, CA 93063 (805) 309-0530 Limitless Mod Co. 4590 Ish Drive, Suite 100 Simi Valley, CA 93063 (805) 309-0530 Infinite-N Technology Limited 4F, iTone Digital Park Xin Fa San Road Sha Jing Shenzhen City, Guangdong Province China 518200 (86) 755 27538750 x808 King Distribution LLC 281 Route 46 West Elmwood Park, NJ 07407 Keep Vapor Electronic Tech. Co., Ltd. Block D, XinLong Techno Park ShaJing Town, Bao An District Shenzhen, China (86) 137 51267275

i

TABLE OF CONTENTS

EXHIBIT LIST .............................................................................................................................. iv

I. INTRODUCTION .............................................................................................................. 1

II. THE PARTIES .................................................................................................................... 9

A. The Complainant ..................................................................................................... 9

B. Respondents ...........................................................................................................11

1. Bo Group ................................................................................................... 12

2. Eonsmoke Group ...................................................................................... 14

3. Ziip Group ................................................................................................. 15

4. XFire Group .............................................................................................. 16

5. Flair Group ................................................................................................ 17

6. Myle Group ............................................................................................... 18

7. Pulse Group ............................................................................................... 18

8. 3X Group .................................................................................................. 19

III. THE ASSERTED PATENTS ............................................................................................ 20

A. The ’669 Patent ..................................................................................................... 21

B. The ’139 Patent ..................................................................................................... 22

C. The ’568 Patent ..................................................................................................... 23

D. The ’130 Patent ..................................................................................................... 23

IV. NON-TECHNICAL DESCRIPTION OF THE ASSERTED PATENTS .......................... 24

A. The ’669 Patent ..................................................................................................... 26

B. The ’139 Patent ..................................................................................................... 27

C. The ’568 Patent ..................................................................................................... 28

D. The ’130 Patent ..................................................................................................... 29

V. THE ACCUSED PRODUCTS ......................................................................................... 29

ii

A. Bo Group ............................................................................................................... 30

B. Eonsmoke Group .................................................................................................. 31

C. Ziip Group ............................................................................................................. 32

D. XFire Group .......................................................................................................... 32

E. Flair Group ............................................................................................................ 33

F. Myle Group ........................................................................................................... 33

G. Pulse Group ........................................................................................................... 34

H. 3X Group .............................................................................................................. 35

VI. RESPONDENTS’ UNLAWFUL AND UNFAIR ACTS .................................................. 35

A. Importation and Sale ............................................................................................. 35

1. Bo Group ................................................................................................... 35

2. Eonsmoke Group ...................................................................................... 37

3. Ziip Group ................................................................................................. 41

4. XFire Group .............................................................................................. 45

5. Flair Group ................................................................................................ 46

6. Myle Group ............................................................................................... 48

7. Pulse Group ............................................................................................... 49

8. 3X Group .................................................................................................. 50

B. Infringement .......................................................................................................... 51

1. Bo Group ................................................................................................... 53

2. Eonsmoke Group ...................................................................................... 55

3. Ziip Group ................................................................................................. 59

4. XFire Group .............................................................................................. 61

5. Flair Group ................................................................................................ 64

6. Myle Group ............................................................................................... 66

iii

7. Pulse Group ............................................................................................... 68

8. 3X Group .................................................................................................. 71

VII. PHYSICAL SAMPLE ...................................................................................................... 73

VIII. HARMONIZED TARIFF SCHEDULE ........................................................................... 74

IX. THE DOMESTIC INDUSTRY ........................................................................................ 74

X. RELATED LITIGATION ................................................................................................. 76

A. Domestic Litigation .............................................................................................. 76

B. Foreign Litigation ................................................................................................. 78

XI. RELIEF REQUESTED ..................................................................................................... 78

iv

EXHIBIT LIST

Exhibit No. Description

Exhibit 1 SSA Article - Global Statistics on Addictive Behaviours

Exhibit 2 CDC - Quitting Smoking

Exhibit 3 FDA - 2018 Strategic Policy Roadmap

Exhibit 4 CDC - Fast Facts Smoking & Tobacco

Exhibit 5 Am. Cancer Society Position Statement on E-Cigarettes

Exhibit 6 WHO Tobacco Fact Sheet

Exhibit 7 Levy - Potential Deaths Averted in USA by Replacing Cigarettes with E-Cigarettes

Exhibit 8 CMS - Historical Statistics

Exhibit 9 CDC - Economic Trends in Tobacco

Exhibit 10 Chaiton - Estimating the Number of Quit Attempts It Takes to Quit Smoking Successfully in a Longitudinal Cohort of Smokers

Exhibit 11 NASPH - Consequences of E-Cigarettes

Exhibit 12 Policy Study - Expected Savings to Medicaid from Substituting Electronic for Tobacco Cigarettes

Exhibit 13 Gottlieb - A Nicotine-Focused Framework for Public Health

Exhibit 14 CNBC Article – Juul’s e-cigarette sales have surged over the past year

Exhibit 15 Bloomberg Article - E-Cigarette Maker Juul Labs Is Raising $1.2 Billion

Exhibit 16 Bloomberg Article - Imperial Takes on Juul as Big Tobacco Faces Upstart Rival

Confidential Exhibit 17 Declaration of Tim Danaher

Confidential Exhibit 18 Nielsen 4-Week Sell-Through Report

Confidential Exhibit 19 IRI 4-Week Sell-Through Report

v


Exhibit 20 Letter to the FDA - Claim of Other Illegal Products

Exhibit 21 Copy of J Well's Original Corporate By-Laws Update

Exhibit 22 Copy of English Translation of J Well’s Corporate By-Laws Update

Exhibit 23 J Well’s Company Profile

Exhibit 24 Tobacco Business Magazine - Bringing Up Bo

Exhibit 25 Web Printout of J Well’s Website (Bo One)

Exhibit 26 Web Printout of J Well’s Website (Bo+)

Exhibit 27 Web Printout of J Well’s Website (Bo One from China)

Exhibit 28 Web Printout of J Well’s Website (Bo+ from China)

Exhibit 29 Web Printout of Bo Vaping Address

Exhibit 30 Web Printout of Bo Vaping Shop Selling Bo One and Bo+

Exhibit 31 Web Printout of Bo Vaping Shop Selling Bo One, Bo+, and Bo Caps

Exhibit 32 MMS Distribution LLC Company Report

Exhibit 33 Article – MMS Is Exclusive Distributor of Bo Products

Exhibit 34 Web Printout of MMS Distribution, Bo’s Exclusive Distributor

Exhibit 35 The Electric Tobacconist, LLC Corporate Entity Information

Exhibit 36 Electric Tobacconist’s Company Profile

Exhibit 37 Web Printout of Electric Tobacconist, Bo One and Bo+ Devices and Pods Distributor

Exhibit 38 Eonsmoke, LLC Company Report

Exhibit 39 Web Printout of Eonsmoke Shop Selling Eonsmoke Devices and Pods

Exhibit 40 Web Printout of Eonsmoke Shop Selling Eonsmoke v2.0 Devices and Pods

Exhibit 41 Web Printout of Electric Tobacconist, Eonsmoke Pods Distributor

Exhibit 42 Web Printout of Electric Tobacconist, 4X Pods Distributor

vi


Exhibit 43 Web Printout of ZLab Website

Exhibit 44 Web Printout of Ziip Lab Contact

Exhibit 45 Web Printout of ZLab Contact

Exhibit 46 Web Printout of Shenzhen Yibo Website

Exhibit 47 Web Printout of Yibo Contact Noting Ziip’s Factory

Exhibit 48 Web Printout of Electric Tobacconist, Ziip Pods Distributor

Exhibit 49 XFire Inc Company Report

Exhibit 50 Web Printout of ALD Contact

Exhibit 51 ALD Company Report

Exhibit 52 Flair Vapor LLC Company Report

Exhibit 53 Web Printout of Joecig Contact

Exhibit 54 Wingle (Public) Report on Nicotine Salts E-Liquid Overview

Exhibit 55 Web Printout of Joecig Eavalon

Exhibit 56 Myle Vape Inc. Company Report

Exhibit 57 Web Printout of Electric Tobacconist, Myle Devices and Pods Distributor

Exhibit 58 Vapor Hub International Inc. Company Report

Exhibit 59 Web Printout of Vapor Hub’s Shop Selling Pulse Devices and Pods

Exhibit 60 Limitless Mod Co. Company Report

Exhibit 61 Limitless Mod Co., LLC. Notation in Terms & Conditions

Exhibit 62 Web Printout of Limitless Products for Sale and Instructions for Use

Exhibit 63 Web Printout of Limitless Products for Sale

Exhibit 64 Web Printout of INTL Contact

Exhibit 65 Web Printout of Electric Tobacconist, Pulse Devices and Pods Distributor

vii


Exhibit 66 King Distribution Certificate of Formation

Exhibit 67 Certified Copy of U.S. Pat. No. 10,070,669 (“the ’669 Patent”)

Exhibit 68 Certified Copy of the Assignment Record for the ’669 Patent

Exhibit 69 Listing of all foreign patents and patent applications corresponding to the ’669 Patent









Exhibit 78 Photo of Bo One Device and Pod

Exhibit 79 Photo of Bo+ Device and Pod

Exhibit 80 Photo of Bo One Device and Pod Coupled

Exhibit 81 Photo of Bo One Device and Pod Separated

Exhibit 82 Photo of Eonsmoke Device and Pod

Exhibit 83 Photo of Eonsmoke v2.0 Device and Pod

Exhibit 84 Photo of 4X Pod

Exhibit 85 Photo of Eonsmoke Device and Pod Coupled

Exhibit 86 Photo of Eonsmoke Device and Pod Separated

Exhibit 87 Photo of Ziip Device and Pod

viii


Exhibit 88 Photo of Ziip Device and Pod Coupled

Exhibit 89 Photo of Ziip Device and Pod Separated

Exhibit 90 Photo of Plus Pod

Exhibit 91 Photo of Plus Pod Without Cap

Exhibit 92 Photo of XFire Device and Pod

Exhibit 93 Photo of XFire Device and Pod Coupled

Exhibit 94 Photo of XFire Device and Pod Separated

Exhibit 95 Photo of Flair Xtreme Device and Pod

Exhibit 96 Photo of Flair Xtreme Device and Pod Coupled

Exhibit 97 Photo of Flair Xtreme Device and Pod Separated

Exhibit 98 Photo of Myle Device and Pod

Exhibit 99 Photo of Myle Device and Pod Coupled

Exhibit 100 Photo of Myle Device and Pod Separated

Exhibit 101 Photo of Pulse Device and Pod

Exhibit 102 Photo of Pulse Device and Pod Coupled

Exhibit 103 Photo of Pulse Device and Pod Separated

Exhibit 104 Photo of 3X Pod

Exhibit 105 Photo of 3X Pod with Cap

Exhibit 106 Photo of 3X Pod without Cap

Exhibit 107 Photo of 3X Pod without Cap, Angled View

Exhibit 108 Declaration of Alexandra Lazea

Exhibit 109 Web Printout of Vaping Daily – Eonsmoke Review

Confidential Exhibit 110 Investigator Report Regarding 4X Pods

ix


Exhibit 111 Web Printout of Ziip’s Products for Sale

Exhibit 112 Web Printout of Plus Pods’ Products for Sale

Exhibit 113 Web Printout of Plus Pods’ Juul Compatible Pods and Charger for Sale

Confidential Exhibit 114 Investigator Report Regarding Plus Pods

Exhibit 115 Photo of Plus Pods Packaging

Exhibit 116 Photo of Ziip Pods Blister Pack Front

Exhibit 117 Photo of Ziip Pods Blister Pack Back

Exhibit 118 Photo of Plus Pods Blister Pack Back

Exhibit 119 Web Printout of Vapor Hub Introducing Limitless Products

Exhibit 120 Web Printout of Vapor Hub’s SEC Form 10-Q

Exhibit 121 Representative Claim Chart Showing Infringement of the ’669 Patent by Bo One




Exhibit 125 Representative Claim Chart Showing Infringement of the ’568 Patent by Bo+

Exhibit 126 Representative Claim Chart Showing Infringement of the ’130 Patent by Bo+

Exhibit 127 Web Printout of Instructions on how to use Bo One and Bo+ Devices and Pods

Exhibit 128 Photo of Contents of Bo One Packaging

Exhibit 129 Web Printout of Bo Vaping’s Bo One Products for Sale

Exhibit 130 Web Printout of Bo Vaping’s Bo+ Products for Sale

Exhibit 131 Representative Claim Chart Showing Infringement of the ’669 Patent by Eonsmoke


x




Exhibit 135 Representative Claim Chart Showing Infringement of the ’669 Patent by Eonsmoke v2.0




Exhibit 139 Representative Claim Chart Showing Infringement of the ’669 Patent by 4X



Exhibit 142 Web Printout of Instructions on How to Use Eonsmoke Brand Devices and Pods

Exhibit 143 Photo of Contents of Eonsmoke Packaging

Exhibit 144 Web Printout of Eonsmoke’s 4X Products for Sale

Exhibit 145 Representative Claim Chart Showing Infringement of the ’669 Patent by Ziip




Exhibit 149 Representative Claim Chart Showing Infringement of the ’669 Patent by Plus Pods


xi



Exhibit 152 Photo of Contents of Ziip Packaging

Exhibit 153 Representative Claim Chart Showing Infringement of the ’669 Patent by XFire

Exhibit 154 Representative Claim Chart Showing Infringement of the ’139 Patent by XFire

Exhibit 155 Photo of Contents of XFire Packaging

Exhibit 156 Web Printout of XFire’s Products for Sale

Exhibit 157 Representative Claim Chart Showing Infringement of the ’669 Patent by Flair Xtreme

Exhibit 158 Representative Claim Chart Showing Infringement of the ’139 Patent by Flair Xtreme

Exhibit 159 Web Printout of Instructions on How to Use Flair Brand Devices and Pods

Exhibit 160 Web Printout of Instructions on How to Use Flair Brand Devices and Pods

Exhibit 161 Photo of Contents of Flair Xtreme Packaging

Exhibit 162 Web Printout of Flair’s Flair Xtreme Products for Sale

Exhibit 163 Web Printout of Flair’s Flair Xtreme Products for Sale

Exhibit 164 Representative Claim Chart Showing Infringement of the ’669 Patent by Myle

Exhibit 165 Representative Claim Chart Showing Infringement of the ’139 Patent by Myle

Exhibit 166 Photo of Contents of Myle Packaging

Exhibit 167 Web Printout of Myle’s Products for Sale

Exhibit 168 Representative Claim Chart Showing Infringement of the ’669 Patent by Pulse




Exhibit 172 Photo of Contents of Pulse Packaging

xii





Exhibit 176 CNBC Article - E-Cigarette Maker Juul Is Raising $150 Million After Spinning Out of Vaping Company

Confidential Exhibit 177

Confidential Representative Claim Chart Showing that JLI’s Domestic Articles Practice the Claims of the ’669 Patent







Exhibit 181 Web Printout of the JUUL System FAQ

Exhibit 182 Copy of J Well’s Original Meeting Minutes

Exhibit 183 Copy of J Well’s Meeting Minutes Translated into English

Exhibit 184 “About Us” Page Designating ZLab S.A. with Mix of Ziip Lab References

Exhibit 185 ZLab S.A./Ziip Labs S.A. “Contact Us” Page

xiii

PHYSICAL EXHIBIT LIST


Physical Exhibit 1 JUUL Starter Kit

Physical Exhibit 2 Bo One Starter Kit

Physical Exhibit 3 Bo+ Starter Kit

Physical Exhibit 4 Eonsmoke Device

Physical Exhibit 5 Eonsmoke v2.0 Device

Physical Exhibit 6 Eonsmoke Pods Pack

Physical Exhibit 7 4X Pods Pack

Physical Exhibit 8 Ziip Starter Kit

Physical Exhibit 9 Plus Pods Pack

Physical Exhibit 10 Plus Pods Pack

Physical Exhibit 11 XFire Device Kit

Physical Exhibit 12 XFire Pods Kit

Physical Exhibit 13 Flair Xtreme Starter Kit

Physical Exhibit 14 Myle Starter Kit

xiv


Physical Exhibit 15 Pulse Starter Kit

Physical Exhibit 16 3X Pods Pack

xv

LIST OF APPENDICES

Appendix Description

Appendix A Listing of Competitor Flavors

Appendix B Certified Copy of the File History of the ’669 Patent (for U.S. Pat. No. 10,070,669)

Appendix C References Cited in the Certified File History of the ’669 Patent

Appendix D Certified Copy of the File History of the ’139 Patent (for U.S. Pat. No. 10,076,139)

Appendix E References Cited in the Certified File History of the ’139 Patent

Appendix F Certified Copy of the File History of the ’568 Patent (for U.S. Pat. No. 10,045,568)

Appendix G References Cited in the Certified File History of the ’568 Patent

Appendix H Certified Copy of the File History of the ’130 Patent (for U.S. Pat. No. 10,058,130)

Appendix I References Cited in the Certified File History of the ’130 Patent

1

I. INTRODUCTION

1. Complainant Juul Labs, Inc. (hereinafter, “JLI”) requests that the United States

International Trade Commission institute an investigation into violations of Section 337 of the

Tariff Act of 1930, as amended, 19 U.S.C. § 1337.

2. JLI’s allegations are based on the unlawful importation into the United States, sale

for importation into the United States, and sale within the United States after importation of

certain electronic nicotine delivery systems (“ENDS”) and components thereof—such as nicotine

delivery pods (also called cartridges) used in ENDS—that infringe one or more of four U.S.

patents owned by JLI. Specifically, JLI alleges that these products infringe one or more of the

following patent claims (independent claims shown in bold underline):

U.S. Patent No. Short Name Asserted Claims

10,070,669 ’669 Patent 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, 21

10,076,139 ’139 Patent 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, 29

10,045,568 ’568 Patent 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19, 20

10,058,130 ’130 Patent 1, 2, 4, 5, 6, 8, 9, 10, 16, 19, 21, 27

3. The ’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent are collectively

referred to herein as the “Asserted Patents,” and the above-listed claims of the Asserted Patents

are collectively referred to herein as the “Asserted Claims.”

4. The proposed Respondents fall into eight groups, named according to their

primary infringing product:

2

Respondent Group

Respondents (collectively “Respondents”) Infringing Product(s)

Bo Group

J Well France S.A.S. (“J Well”) Bo Vaping (“Bo Vaping”) MMS Distribution LLC (“MMS”) The Electric Tobacconist, LLC (“Electric Tobacconist”)

Bo One device and pods Bo+ device and pods

Eonsmoke Group

Eonsmoke, LLC (“Eonsmoke”) Electric Tobacconist

Eonsmoke device and pods Eonsmoke v2.0 device and pods 4X pods

Ziip Group

ZLab S.A. (“Ziip Labs”) Ziip Lab Co., Ltd. (“Ziip China”) Shenzhen Yibo Technology Co., Ltd. (“Yibo”) Electric Tobacconist

Ziip device and pods Plus Pods

XFire Group XFire, Inc. (“XFire”) ALD Group Limited (“ALD”) XFire device and pods

Flair Group Flair Vapor LLC (“Flair”) Shenzhen Joecig Technology Co., Ltd. (“Joecig”)

Flair Xtreme device and pods

Myle Group Myle Vape Inc. (“Myle”) Electric Tobacconist Myle device and pods

Pulse Group

Vapor Hub International, Inc. (“Vapor Hub”) Limitless Mod Co. (“Limitless”) Infinite-N Technology Limited (“INTL”) Electric Tobacconist

Pulse device and pods

3X Group King Distribution LLC (“King”) Keep Vapor Elec. Tech. Co., Ltd. (“Keep Vapor”)

3X pods

JLI’s Beginnings: Filling a Gap in the ENDS Market

5. Since its founding in 2007, JLI has sought to provide a satisfying alternative to

combustible cigarettes by developing its ENDS products. JLI’s mission—to switch adult smokers

from cigarettes—was the driving force behind its product development.

6. As graduate students at Stanford University’s Product Design program in the mid-

2000s, the founders of JLI, James Monsees and Adam Bowen, applied their background in

design and engineering to the challenge of finding a better alternative to cigarettes. As cigarette

smokers at the time, Monsees and Bowen saw a gap in the alternative smoking environment,

3

which then included, for example, nicotine vaping and heat-not-burn systems, for adults who

wanted to make the switch from combustible cigarettes. These early ENDS were often overly

complex to use and failed to provide the experience traditional cigarette smokers expected.

Physical Exhibit 1 – Representative JUUL Starter Kit

7. Monsees and Bowen set out to change that. They knew that, to succeed where

other ENDS had failed, they needed to develop a product that was different from a cigarette in

design, but similar in convenience, simplicity, and satisfaction. Monsees and Bowen leveraged

their design and scientific know-how to develop a real alternative for adult smokers. The

resulting innovations ultimately led to the introduction in June 2015 of the branded JUUL

system, which includes the JUUL device body and JUULpods (hereinafter, “JUUL system,” or

“Domestic Articles”).

8. Smoking is the most prevalent addiction in the United States and the number one

cause of preventable death worldwide. Exhibit 1 (SSA Article - Global Statistics on Addictive

Behaviours); Exhibit 2 at 1-4 (CDC - Quitting Smoking); Exhibit 3 at 1-2 (FDA - 2018 Strategic

Policy Roadmap); Exhibit 4 at 1-3 (CDC - Fast Facts Smoking & Tobacco). Tobacco kills half of

its users, totaling more than seven million people worldwide each year. Exhibit 5 at 1 (Am.

4

Cancer Society Position Statement on E-Cigarettes); Exhibit 6 at 1 (WHO Tobacco Fact Sheet).

The toxic chemical compounds in tobacco products—and particularly in the smoke created by

setting tobacco on fire—are directly and primarily responsible for the illness and death caused by

cigarettes. Exhibit 3 at 3. Smoking not only steals valuable years of life but significantly

increases national healthcare costs. Exhibit 7 at 5 (Levy - Potential Deaths Averted in USA by

Replacing Cigarettes with E-Cigarettes); Exhibit 8 (CMS - Historical Statistics). The Centers for

Disease Control estimates that smoking costs the country $14 billion in monthly health care costs

and $11 billion monthly in lost productivity. Exhibit 9 at 1-4 (CDC - Economic Trends in

Tobacco).

9. Not surprisingly, roughly 70% of adult smokers report that they want to give up

smoking. Exhibit 2 at 2-3. But the average smoker will attempt to give up the habit more than 30

times before successfully doing so for at least one year. Exhibit 10 at 5-7 (Chaiton - Estimating

the Number of Quit Attempts It Takes to Quit Smoking Successfully in a Longitudinal Cohort of

Smokers). Significantly, smoking cessation fails over 90% of the time without some form of

support. Id. at 3-7.

10. ENDS technology represents a potential solution. Recent studies show that

switching from cigarettes to an ENDS can reduce exposure to toxic byproducts by up to 99%.

Exhibit 11 at 1-3 (NASPH - Consequences of E-Cigarettes); Exhibit 3 at 4-7. One 2017 study

lead by researchers from the Oncology Department at Georgetown University Medical Center

estimated that 6.6 million premature deaths could be averted over the next decade if all smokers

switched to an ENDS. Exhibit 7 at 3. Relatedly, healthcare analysts estimate that for every 1% of

cigarette smokers who switch to ENDS, lifetime cost-savings to Medicaid programs would be

$2.8 billion. Exhibit 12 at 1 (Policy Study - Expected Savings to Medicaid from Substituting

5

Electronic for Tobacco Cigarettes). Notably, the FDA and other health organizations have

concluded that nicotine, while highly addictive, does not itself directly cause the cancer, lung or

heart diseases associated with combusted cigarette smoking. Exhibit 13 at 2 (Gottlieb - A

Nicotine-Focused Framework for Public Health) (“Nicotine . . . is not directly responsible for the

tobacco-caused cancer, lung disease, and heart disease that kill hundreds of thousands of

Americans each year.”).

The JUUL System: A Runaway Success

11. Within a few years of the launch of the JUUL system, JLI became the recognized

market leader in the ENDS device and pod refill market. Exhibit 14 at 1-3 (CNBC Article - Juul

e-cigarette sales have surged over the past year); Exhibit 15 (Bloomberg Article - E-Cigarette

Maker Juul Labs Is Raising $1.2 Billion); Exhibit 16 (Bloomberg Article - Imperial Takes on

Juul as Big Tobacco Faces Upstart Rival). After a slow start for a then-unknown company, JLI’s

products began to gain significant word-of-mouth momentum. By the summer of 2016, the

market share for the JUUL system began to grow steadily—and then exponentially. As shown in

the table below, JLI is now responsible for over 95% of the growth in the ENDS pod refill

market in the United States. Confidential Exhibit 17 at ¶ 10, App. 5 (Danaher Decl.);

Confidential Exhibit 18 at 3 (Nielsen 4-Week Sell-Through US); Confidential Exhibit 19 at 3

(IRI 4-Week Sell-Through US).

6

12. Today, the JUUL system is the leading alternative for adult smokers, and analysts

are calling it a “runaway success.” Exhibit 15 at 1-2. As one commentator stated: “It’s no secret

that JLI has dominated the [ENDS] device market over the past year, but just how much it has

dominated is eye-popping.” Exhibit 14 at 1. Similarly, a Wells Fargo analysis of Nielsen data

recently reported that JLI’s effective annual dollar sales skyrocketed 783% in the 52-week period

ending June 16, 2018, reaching $942.6 million. Id. Even more recently, JLI’s sales have surged

by 882%—boosting JLI’s United States market share to 68%. Id.

13. As shown in the graphic below, JLI has captured the majority share of the United

States’ ENDS market. Exhibit 14 at 3. Its share continues to grow in size. For example, as of

early September 2018, JLI’s market share by volume of the U.S. ENDS pod refill market is about

72%. Confidential Exhibit 17 at App. 3 (Danaher Decl.).

7

https://www.cnbc.com/2018/07/02/juul-e-cigarette-sales-have-surged-over-the-past-year.html.

14. JLI’s market share and innovative products have led to competition from

copyists—like Respondents—who hope to profit by stealing JLI’s intellectual property. In a

letter to the U.S. Food and Drug Administration, industry commentators noted how “new

products appear to mimic the sleek design of Juul, including . . . Bo Vaping’s Bo One [and] . . .

XFire Vapor’s Xfire . . . .” Exhibit 20 at 4 (Letter to the FDA - Claim of Other Illegal Products).

Respondents’ products are inferior copies of the Domestic Articles. Respondents market these

JLI look-alike devices—often at a fraction of the price of the JUUL system—without the same

attention to quality control that JLI employs. While JLI manufactures, through the use of contract

manufacturers, its liquid nicotine and fills its pods under tight quality controls here in the United

States, on information and belief, each Respondent maintains its liquid nicotine manufacturing

and pod filling operations in China, operating without necessarily complying with FDA

regulations and operating under unspecified quality control procedures.

https://www.cnbc.com/2018/07/02/juul-e-cigarette-sales-have-surged-over-the-past-year.html

8

JLI’s Leadership: Setting Corporate Responsibility Standards

15. JLI markets only to adult smokers and takes great pains to combat youth use.

Indeed, JLI maintains that no non-nicotine user, especially youth, should ever use its product or

any other product designed to deliver nicotine. In this regard, JLI is dedicated to raising the

standard for responsibility in the ENDS industry, committing an initial investment of at least $30

million for independent research, youth and parent education, and community engagement

efforts. Further, JLI proactively adopted a 21+ “age-gate” nationwide that limits online purchases

of JUUL products via Juul’s e-commerce site to adults 21 and older, despite a majority of states

permitting sales to 18-year olds. JLI has partnered with an industry leading age verification

service to complete a public-records search to determine whether a purchaser is 21 years of age

or older. If the system cannot immediately verify age, the user would be required to upload a

photo I.D. And JLI continually strengthens its online age verification, most recently

implementing a request to input the last four digits of a consumer’s social security number to

enhance verification. In addition, JLI adopted a comprehensive marketing code—particularly on

social media—under which JLI adheres to strict guidelines to ensure that its marketing and sales

are directed only toward existing adult smokers.

16. In contrast, each Respondent appears to make only half-hearted attempts, if any,

to prevent youth adoption—the single most important challenge facing the industry.

Respondents’ ENDS products are easily purchased online after simply checking an unverified

box or filling out a basic unverified form. And in contrast to JLI’s simple, adult-oriented flavors

such as Mango and Virginia Tobacco, many of the Respondents sell pods in a variety of flavors

having obvious, if not deliberate, youth appeal, such as “Bubble Bubble,” “Apple Juice,”

9

“Pineapple Crush,” “Citrus Burst,” “Sour Gummy,” and “Strawberry Milk,” to name a few.1 On

information and belief, Respondents lack any meaningful or formalized program for preventing

minors from purchasing their low-cost products. Without safeguards, including age-verification

and policing, Respondents’ products are ending up in the hands of underage users.

17. Given the encroachment on JLI’s intellectual property, the importance of

continued availability of high-quality ENDS, and the immediate need for corporate responsibility

in this burgeoning industry—particularly as to youth prevention—JLI seeks as relief: (i) a

permanent limited exclusion order under 19 U.S.C. § 1337(d) barring from entry into the United

States the Accused Products that infringe the Asserted Patents, (ii) a permanent cease-and-desist

order under 19 U.S.C. § 1337(f) prohibiting Respondents and their affiliates, subsidiaries,

successors, and assigns from importing, marketing, distributing, repairing, providing warranty

services, selling, offering for sale, or selling after importation into the United States ENDS

products including devices, pods, and all components thereof, that infringe the Asserted Patents,

and (iii) any other relief deemed appropriate by the Commission.

18. Further, JLI requests that the Commission impose a bond on Respondents’

importation of infringing products during the 60-day Presidential review period pursuant to 19

U.S.C. § 1337(j) to prevent further injury to JLI and its domestic industry relating to the Asserted

Patents.

II. THE PARTIES

A. The Complainant

19. JLI is a privately-held corporation organized and existing under the laws of the

state of Delaware, with its principal place of business at 560 20th Street, San Francisco, 1 For a more complete listing of Respondents’ flavors, see Appendix A (Listing of Competitor Flavors).

10

California 94107. JLI was incorporated in 2007, beginning as a small start-up consumer-products

company. Since its founding in 2007, however, JLI matured into an FDA-regulated enterprise,

dedicating significant resources to its capacities in the United States both in terms of assets and

personnel. The Domestic Articles were first brought to market in June 2015 by JLI’s predecessor

corporate entity, Pax Labs, Inc. (“Pax”). On June 30, 2017, Pax was renamed Juul Labs, Inc.,

making Juul Labs, Inc. the direct successor-in-interest of the original Pax Labs. Juul Labs, Inc.

then spun off certain products (other than the JUUL system), personnel, and resources into a new,

distinct corporate entity, which reacquired the corporate name Pax Labs, Inc. (New Pax). New

Pax focuses on other vaporization fields that do not involve the vaporization of nicotine liquid.

The JUUL System

20. Three core concepts drove the development of the JUUL system: (i) an elegant

design to replace the cigarette iconography of the “round white burning stick”; (ii) a simple user

interface requiring no buttons, switches, or complex instructions; and (iii) reliable performance.

And the liquid nicotine of the JUUL system was specially formulated to mimic nicotine

satisfaction similar to that of cigarettes.

21. Years of research and development, leading to multiple innovations in ENDS

technology, resulted in JLI’s market-leading product, the JUUL system: an elegant, intuitive

closed pod-based device that delivers a satisfying experience to help adult smokers switch from

11

combustible cigarettes. By way of illustration, certain elements of the JUUL system are shown

below, including the JUUL device (far left), its packaging, and various other system components.

The JUUL system, packaging, and components.

B. Respondents

22. In contrast to JLI, Respondents are mostly bit players and recent entrants in the

ENDS market. Seeing an opportunity to capture some of JLI’s success with minimal investment,

Respondents blatantly emulated the distinctive design of the JUUL system.

12

Cascade of Copy-Cats Entering Market Starting in 2017

23. On information and belief, Respondents copied JLI’s innovative design and other

patented features to steal JLI’s domestic market share by importing into the United States—often

at lower prices—infringing products such as pods and related devices that include JLI’s patented

technology.

1. Bo Group

a) J Well France S.A.S.2 (“J Well”)

24. Respondent J Well is a French company with its principal place of business at 50

rue de Miromesnil, 75008 Paris, France. Exhibit 21 at 2; Exhibit 22; Exhibit 23 (corporate profile

of J Well France); Exhibit 24 at 2 (Tobacco Business Magazine - Bringing Up Bo) (noting that J

2 J Well France S.A.S., formerly J Well France S.A.R.L., changed its corporate structure from société à responsabilité limitée to société par actions simplifiée on February 1, 2018. Exhibit 21 (copy of J Well’s original corporate by-laws update); Exhibit 22 (copy of English translation of J Well’s corporate by-laws update); Exhibit 182 (copy of J Well’s original meeting minutes); Exhibit 183 (copy of J Well’s meeting minutes translated into English).

13

Well developed the Bo line of devices and pods); Exhibit 25 (Web Printout of J Well’s Website

(Bo One)) (showing that Bo One is a J Well product); Exhibit 26 (Web Printout of J Well’s

Website (Bo+)) (showing that Bo+ is a J Well product).

25. On information and belief, Respondent J Well designed the Bo One and Bo+

devices and pods that are marketed to consumers in the United States. Respondent J Well’s

products are manufactured, assembled, and filled in China. See infra ¶¶ 106-110; Exhibit 108 ¶ 6

(photographs of the Bo One packaging and Bo+ packaging) (“Lazea Decl.”); Exhibit 27 (Web

Printout of J Well’s Website (Bo One from China)) (showing that the Bo One is assembled in

China); Exhibit 28 (Web Printout of J Well’s Website (Bo+ from China)) (showing that the Bo+

is assembled in China).

b) Bo Vaping

26. Respondent Bo Vaping is an American company with its principal place of

business in New York, at 591 Stewart Avenue, Garden City, NY 11530. Exhibit 29 (Bo Vaping

website showing address); Exhibit 30 (Bo Vaping website showing sales of Bo One products);

Exhibit 31 (Bo Vaping website showing line of products, including Bo One, Bo+, and Bo Caps).

27. On information and belief, Respondent Bo Vaping is a subsidiary brand company

of Respondent J Well and markets the Bo One and Bo+ devices and pods to consumers in the

United States. Exhibit 25 (showing Bo Vaping as a subsidiary brand of Respondent J Well);

Exhibit 26 (showing Bo Vaping as a subsidiary brand of Respondent J Well).

c) MMS Distribution LLC (“MMS”)

28. Respondent MMS is an American limited liability company with its principal

place of business in New York, at 195 Lake Louise Marie Road, Rock Hill, NY 12775. Exhibit

32 at 1-2 (MMS Distribution LLC Company Report).

14

29. On information and belief, Respondent MMS distributes the Bo One and Bo+

devices and pods. Exhibit 33 (Article – MMS Is Exclusive Distributor of Bo Products) (MMS is

the exclusive distributor of Bo products); Exhibit 34 (Web Printout of MMS Distribution, Bo’s

Exclusive Distributor ) (noting that MMS is the “EXCLUSIVE distributor of AUTHENTIC Bo

products in the US”).

d) The Electric Tobacconist, LLC (“Electric Tobacconist”)

30. Respondent Electric Tobacconist is an American limited liability company with its

principal place of business in Colorado, at 3235 Prairie Avenue, Boulder, CO 80301. Exhibit 35

at 1-2 (The Electric Tobacconist, LLC Corporate Entity Information); Exhibit 36 (Electric

Tobacconist Company Profile).

31. On information and belief, Respondent Electric Tobacconist distributes the Bo

One and Bo+ devices and pods through its website. Exhibit 37 (Web Printout of Electric

Tobacconist, Bo One and Bo+ devices and pods distributor).

2. Eonsmoke Group

a) Eonsmoke, LLC (“Eonsmoke”)

32. Respondent Eonsmoke is an American limited liability company with its principal

place of business in New Jersey, at 1500 Main Ave., 2nd Floor, Clifton, NJ 07011. Exhibit 38 at

2 (Eonsmoke, LLC Company Report).

33. On information and belief, Respondent Eonsmoke’s Eonsmoke and Eonsmoke

v2.0 devices and pods, as well as 4X pods, are marketed to consumers in the United States.

These products are expressly marketed as “Juul Compatible.” Exhibit 39 (Web Printout of

Eonsmoke Shop Selling Eonsmoke Devices and Pods); Exhibit 40 (Web Printout of Eonsmoke

Shop Selling Eonsmoke v2.0 Devices and Pods). Respondent Eonsmoke manufactures its

15

devices and pods in China. See infra ¶¶ 111-118; Exhibit 108 ¶13 (photographs of the Eonsmoke

device packaging, Eonsmoke v2.0 packaging, Eonsmoke pods packaging, and 4X packaging).

b) Electric Tobacconist

34. On information and belief, Respondent Electric Tobacconist distributes the

Eonsmoke and Eonsmoke v2.0 pods, as well as the 4X pods, through its website. Exhibit 41

(Web Printout of Electric Tobacconist, Eonsmoke and Eonsmoke v2.0 pods distributor); Exhibit

42 (Web Printout of Electric Tobacconist, 4X pods Distributor).

3. Ziip Group

a) ZLab S.A. (“Ziip Labs”)3

35. Respondent Ziip Labs is a Uruguayan corporation with its principal place of

business at Ave. Golero, 911 Office 27, Punta del Este – Maldonado – Uruguay, 20100. Exhibit

45 at 1. On information and belief, the Ziip Group Respondents’ Ziip devices and pods, as well

as Plus Pods, are marketed to consumers in the United States. These products are expressly

marketed as “Juul Compatible,” and on information and belief, are of substantially the same

design as the Eonsmoke products.

36. On information and belief, Ziip Labs designs the Ziip devices and pods, including

the Plus Pods, in Uruguay, and it manufactures its devices and pods in China. See infra ¶¶ 119-

130; Exhibit 108 ¶ 18 (photographs of the Ziip starter kit packaging and Plus Pods packaging);

Exhibit 43 at 2 (Web Printout of ZLab Website ) (advertising on Ziip’s website that “ZLab S.A.

develops high quality e-juices . . .”). On information and belief, Ziip Labs has two sales offices

in the United States: one in San Francisco, Exhibit 44, and another in New York, Exhibit 45.

3 On information and belief, ZLab S.A. rebranded and changed its business name from Ziip Labs S.A. to ZLab S.A. See Exhibit 184 (“About Us” Page Designating ZLab S.A. with Mix of Ziip Lab References); Exhibit 185 (ZLab S.A./Ziip Labs S.A. “Contact Us” Page).

16

b) Ziip Lab Co., Limited (“Ziip China”)

37. Respondent Ziip China is a Chinese company with its principal place of business

at E District 4F, 5 Building, Wen Ge Industrial Zone, Heshuikou, Gongming St., Guangming

New District, Shenzhen City, Guangdong Province, China 518106. Exhibit 44 at 2.

38. On information and belief Respondent Ziip China manufactures Ziip devices and

pods, as well as the Plus Pods. See Exhibit 44 at 2; Exhibit 45 at 1 (Web Printout of ZLab

Contact).

c) Shenzhen Yibo Technology Co., Ltd. (“Yibo”)

39. Respondent Yibo is a Chinese company with its principal place of business at 1F-

4F, 3rd Building, Laowei, Tiantou Community, Pingshan Sub-District, Pingshan New District,

Shenzhen City, Guangdong Province, China 518118. Exhibit 46 at 1 (Web Printout of Shenzhen

Yibo Website).

40. On information and belief, Respondent Yibo manufactures Ziip devices and pods,

as well as the Plus Pods, in China. Exhibit 47 (noting Ziip’s factory as Yibo).

d) Electric Tobacconist

41. On information and belief, Respondent Electric Tobacconist distributes Ziip pods

through its website. Exhibit 48 (Web Printout of Electric Tobacconist, Ziip pods distributor).

4. XFire Group

a) XFire, Inc. (“XFire”)

42. Respondent XFire is an American corporation with its principal place of business

in Texas, at 820 Summer Park Drive, Suite 700, Stafford, TX 77477. Exhibit 49 at 1 (XFire Inc

Company Report).

43. On information and belief, Respondent XFire’s XFire devices and pods are

marketed to consumers in the United States. The XFire devices and pods are manufactured in

17

China. See infra ¶¶ 131-133; Exhibit 108 ¶ 21 (photographs of the XFire device packaging and

XFire pods packaging).

b) ALD Group Limited (“ALD”)

44. Respondent ALD is a Chinese company with its principal place of business at No.

2, 3rd Industrial Road, Baoan District, Shenzhen City, Guangdong Province, China 518108.

Exhibit 50 at 1 (Web Printout of ALD Contact); Exhibit 51 at 1-2 (ALD Company Report).

45. On information and belief, ALD manufactures Respondent XFire’s XFire devices

and pods in China.

5. Flair Group

a) Flair Vapor LLC (“Flair”)

46. Respondent Flair is an American limited liability company with its principal place

of business in New Jersey, at 2500 Hamilton, Blvd., Suite B, South Plainfield, NJ 07080. Exhibit

52 at 1 (Flair Vapor LLC Company Report).

47. On information and belief, Respondent Flair’s Flair Xtreme devices and pods are

marketed to consumers in the United States. The Flair Xtreme devices and pods are

manufactured in China. See infra ¶¶ 134-136; Exhibit 108 ¶ 24 (photograph of the Flair Xtreme

starter kit packaging).

b) Shenzhen Joecig Technology Co., Ltd. (“Joecig”)

48. Respondent Joecig is a Chinese company with its principal place of business at

1F-5F, Building 17, Quarter G, ShaJing Road, Gonghe 3rd Industry District, Baoan District,

Shenzhen City, Guangdong Province, China 518104. Exhibit 53 at 1-2 (Web Printout of Joecig

Contact).

49. On information and belief, Joecig manufactures Respondent Flair’s Flair Xtreme

devices and pods in China. Exhibit 54 at 15 (Wingle (Public) Report on Nicotine Salts E-Liquid

18

Overview) (noting the Joecig Eavalon is the OEM of the Flair Xtreme); Exhibit 55 (Joecig

Eavalon Website) (showing that the Joecig Eavalon is identical to the Flair Xtreme).

6. Myle Group

a) Myle Vape Inc. (“Myle”)

50. Respondent Myle is an American corporation with its principal place of business

in New York, at 8085 Chevy Chase Street, Jamaica, NY 11432. Exhibit 56 at 1 (Myle Vape Inc.

Company Report).

51. On information and belief, Respondent Myle’s Myle devices and pods are

marketed to consumers in the United States. The Myle devices and pods are manufactured in

China. See infra ¶¶ 137-139; Exhibit 108 ¶ 27 (photograph of the Myle starter kit packaging).

b) Electric Tobacconist

52. On information and belief, Respondent Electric Tobacconist distributes

Respondent Myle’s Myle devices and pods through its website. Exhibit 57 (Web Printout of

Electric Tobacconist, Myle devices and pods distributor).

7. Pulse Group

a) Vapor Hub International, Inc. (“Vapor Hub”)

53. Respondent Vapor Hub is an American corporation with its principal place of

business in California, at 1871 Tapo Street, Simi Valley, CA 93063. Exhibit 58 at 5 (Vapor Hub

International Inc. Company Report).

54. On information and belief, Respondent Vapor Hub’s Pulse devices and pods are

marketed to consumers in the United States. Vapor Hub distributes its devices and pods. Exhibit

59 (Web Printout of Vapor Hub’s Shop Selling Pulse Devices and Pods); see also infra ¶¶ 140-

141.

19

b) Limitless Mod Co. (“Limitless”)

55. Respondent Limitless is an American limited liability company with its principal

place of business in California, at 4590 Ish Drive, Suite 100, Simi Valley, CA 93063. Exhibit 60

at 1-2 (Limitless Mod Co. Company Report); Exhibit 61 (Limitless Mod Co., LLC. Notation in

Terms & Conditions).

56. On information and belief, Limitless distributes Respondent Vapor Hub’s Pulse

devices and pods. Exhibit 62 (Web Printout of Limitless Products for Sale and Instructions for

Use); Exhibit 63 (Web Printout of Limitless Products for Sale).

c) Infinite-N Technology Limited (“INTL”)

57. Respondent INTL is a Chinese company with its principal place of business at 4F,

iTone Digital Park, Xin Fa San Road, Sha Jing, Shenzhen City, Guangdong Province, China

518200. Exhibit 64 at 1 (Web Printout of INTL Contact).

58. On information and belief, INTL manufactures Respondent Vapor Hub’s Pulse

devices and pods in China.

d) Electric Tobacconist

59. On information and belief, Respondent Electric Tobacconist distributes

Respondent Vapor Hub’s Pulse devices and pods through its website. Exhibit 65 (Web Printout of

Electric Tobacconist, Pulse devices and pods distributor).

8. 3X Group

a) King Distribution LLC (“King”)

60. Respondent King is an American limited liability company with its principal place

of business in New Jersey, at 281 Route 46 West, Elmwood Park, NJ 07407. Exhibit 66 (King

Distribution Certificate of Formation).

20

61. On information and belief, the 3X pods are marketed to consumers in the United

States.4 These products are expressly marketed as “Juul Compatible.” King coordinates with

Keep Vapor to distribute the 3X Pods. See infra ¶¶ 142-143; Exhibit 108 ¶ 32 (photograph of the

3X packaging) (3X packaging noting King as the distributor and Keep Vapor as the

manufacturer).

b) Keep Vapor Electronic Technology Co., Ltd. (“Keep Vapor”)

62. On information and belief, Respondent Keep Vapor is a Chinese Company with

its principal place of business at Block D, XinLong Techno Park, ShaJing Town, Bao An District,

Shenzhen, China.

63. On information and belief, Keep Vapor manufactures the 3X Pods in China.

Exhibit 108 ¶ 32 (3X packaging noting production by Keep Vapor in China).

III. THE ASSERTED PATENTS

64. The Asserted Patents are specifically directed to features that have been

incorporated into the Domestic Articles. These patented features have contributed to the success

of the Domestic Articles in the United States, and are the same features that Respondents have

copied in their attempts to undercut and appropriate JLI’s market share.

65. JLI has licensed certain rights in the Asserted Patents to New Pax, the entity spun

out from JLI as discussed above in Section II.A. JLI, however, retains the sole right and

discretion to assert and defend its intellectual property rights, including against any use of the

patented technology for the delivery of nicotine vapor in the United States. Moreover, the license 4 JLI filed a trademark infringement claim against King. See Juul Labs, Inc. v. King Distribution LLC, 18-CV-09233 (D.N.J.) (filed May 15, 2018). As a result, King agreed to make ornamental changes to its 3X pod design. However, the redesigned 3X pods continue to infringe the Asserted Patents. In working to resolve the trademark infringement claims against King, JLI specifically reserved its right to allege infringement of additional JLI intellectual property found to be infringed.

21

prohibits Pax from using the Asserted Patents outside Pax’s own field of use, meaning Pax lacks

any rights to use the Asserted Patents in the nicotine field of use.

66. In addition, JLI has previously given a security interest in the Asserted Patents,

but retains all rights, title, and interest to the Asserted Patents absent default.

A. The ’669 Patent

67. On September 11, 2018, the United States Patent and Trademark Office

(“USPTO”) duly and lawfully issued the ’669 Patent, entitled “Cartridge for Use with a

Vaporizer Device,” to inventors James Monsees, Adam Bowen, Steven Christensen, Joshua

Morenstein, and Christopher Nicholas HibmaCronan. The ’669 Patent issued from U.S.

Application No. 15/820,370, filed November 21, 2017, and is a continuation of U.S. Application

No. 15/257,748. The ’669 Patent descends from the same parent application as the ’130 Patent.

There are no fees currently due with respect to the ’669 Patent. The ’669 Patent will expire

December 23, 2034.

68. A certified copy of the ’669 Patent is attached hereto as Exhibit 67. By way of

assignment, JLI holds all rights, title, and interest to the ’669 Patent. A certified copy of the

assignment record for the ’669 Patent is attached hereto as Exhibit 68. Pursuant to Commission

Rule 210.12(c), a certified copy of the File History of the ’669 Patent is included as Appendix B.

Copies of the references cited in the certified file history of the ’669 Patent are included as

Appendix C.

69. The ’669 Patent has 21 claims, including 2 independent claims and 19 dependent

claims. JLI has asserted independent claims 1 and 12 and dependent claims 2, 4, 5, 7, 8, 10, 13,

16, 17, 20, 21 of the ’669 Patent.

70. In accordance with Commission Rule 210.12(a)(9)(v), a list of all foreign patents

and patent applications corresponding to the ’669 Patent, including an indication of status, is

22

attached as Exhibit 69. JLI is aware of no other foreign counterparts issued, filed, abandoned,

withdrawn, or rejected with respect to the ’669 Patent.

B. The ’139 Patent

71. On September 18, 2018, the USPTO duly and lawfully issued the ’139 Patent,

entitled “Vaporizer Apparatus,” to inventors James Monsees, Adam Bowen, Steven Christensen,

Joshua Morenstein, and Christopher Nicholas HibmaCronan. The ’139 Patent issued from U.S.

Application No. 15/257,760, filed September 6, 2016, and is a continuation of U.S. Application

No. 14/581,666. There are no fees currently due with respect to the ’139 Patent. The ’139 Patent

will expire December 23, 2034.

72. A certified copy of the ’139 Patent is attached here to as Exhibit 70. By way of



Rule 210.12(c), a certified copy of the File History of the ’139 Patent is included as Appendix

D. Copies of the references cited in the certified file history of the ’139 Patent are included as

Appendix E.


claims. JLI has asserted independent claims 1, 11, 19, and 20 and dependent claims 2, 3, 4, 9, 10,

13, 14, 21, 24, 28, 29 of the ’139 Patent.





23

C. The ’568 Patent

75. On August 14, 2018, the USPTO duly and lawfully issued the ’568 Patent,

entitled “Vaporization Device Systems and Methods,” to inventors James Monsees, Adam

Bowen, Steven Christensen, Joshua Morenstein, and Christopher Nicholas HibmaCronan. The

’568 Patent issued from U.S. Application No. 15/832,749, filed December 5, 2017, and is a

continuation of U.S. Application No. 15/379,898. There are no fees currently due with respect to

the ’568 Patent. The ’568 Patent will expire December 23, 2034.




Rule 210.12(c), a certified copy of the File History of the ’568 Patent is included as Appendix F.

Copies of the references cited in the certified file history of the ’568 Patent are included as

Appendix G.


claims. JLI has asserted independent claims 1, 12, and 20 and dependent claims 2, 3, 5, 6, 7, 8, 9,

17, 18, 19 of the ’568 Patent.

78. In accordance with Commission Rule 210.12(a)(9)(v), JLI is aware of no foreign

patents and patent applications corresponding to the ’568 Patent.

D. The ’130 Patent

79. On August 28, 2018, the USPTO duly and lawfully issued the ’130 Patent,

entitled “Cartridge for Use with a Vaporizer Device,” to inventors James Monsees, Adam

Bowen, Steven Christensen, Joshua Morenstein, and Christopher Nicholas HibmaCronan. The

’130 Patent issued from U.S. Application No. 15/813,089, filed November 14, 2017, and is a

continuation of U.S. Application No. 15/257,748. The ’130 Patent descends from the same parent

24

application as the ’669 Patent. There are no fees currently due with respect to the ’130 Patent.

The ’130 Patent will expire December 23, 2034.




Rule 210.12(c), a certified copy of the File History of the ’130 Patent is included as Appendix

H. Copies of the references cited in the certified file history of the ’130 Patent are included as

Appendix I.


claims. JLI has asserted independent claims 1, 8, and 21 and dependent claims 2, 4, 5, 6, 9, 10,

16, 19, 27 of the ’130 Patent.





IV. NON-TECHNICAL DESCRIPTION OF THE ASSERTED PATENTS5

83. The Asserted Patents each relate to ENDS and components of ENDS such as the

liquid nicotine pods. The patented ENDS generally have a pod containing liquid nicotine that is

inserted into the ENDS device body. The ENDS device body has a battery and a pod receptacle

into which the pod is inserted, as well as a charging port for charging the battery. The ENDS

device body also contains a printed circuit board that controls the electronic operations of the 5 The following non-technical description of the patented technology is provided solely for compliance with the Commission Rules. It is not intended to, and does not, limit, define, or otherwise affect the construction or application of the claim language and should not be understood to do so.

25

device. The JUUL system’s form-factor allows sufficient space for its advanced components, but

is compact enough to easily and snugly fit in a user’s closed lips during puffs.

84. The pod includes a mouthpiece and storage compartment for the liquid nicotine.

The pod is filled with the liquid pursuant to JLI’s patented method in JLI’s domestic filling

plants. The disposable pod-based system provides the simplicity and convenience that smokers

seek. With only minimal attention to orientation and mild pressure, the single, reversible pod is

easily inserted and removed from the device body, even in the dark.

85. The JUUL system is simple, yet distinct. It is purposefully designed to make it

easy for adult smokers to transition to the product. Its design distinguishes the JUUL system

from combustible cigarettes and from the first generation of ENDS. Critically, it is not a white,

round, cigarette-like stick, instead employing a unique form factor that represented a stark

departure from conventional thinking about ENDS design. At one basic level, the flattened,

Storage Compartment

Circuit Board

Charging Port

Device Body

Mouthpiece

26

oblong design creates space for JLI to leverage and incorporate its innovations into an effective

and well-controlled ENDS, with a unique iconography.

86. The Asserted Patents are directed to the innovative features of the JUUL system,

which includes the JUUL device body as well as the JUUL pod.

A. The ’669 Patent

87. The ’669 Patent discloses a pod with a mouthpiece, where the mouthpiece covers

only an upper portion of the pod body, and the mouthpiece does not cover a lower portion of the

pod body. The uncovered portion of the pod body is configured for insertion into an ENDS

device body. Nevertheless, when the pod body is inserted into the ENDS device body, there is

still a portion of the pod body that is neither covered by the mouthpiece nor the ENDS device

body, so as to allow an ENDS user to see the liquid nicotine level of the pod. See Exhibit 67,

’669 Patent, Figure 24B.

88. The ’669 Patent discloses the transparent pod with a mouthpiece configuration

allowing users to see the nicotine formulation liquid level inside the pod. Prior to the ’669 Patent,

users using many other ENDS could not see the nicotine formulation liquid levels inside the pod

while using the device. JLI’s ’669 Patent addresses this difficulty by disclosing transparent pods

27

where a portion of the pod is not covered by the mouthpiece. The pod is flattened with a notch up

into the mouthpiece such that the liquid nicotine level is visible.

B. The ’139 Patent

89. The ’139 Patent discloses an apparatus comprising a cartridge having a storage

compartment, through which a vaporizable material is visible. Furthermore, the ’139 Patent

discloses an ENDS device body having a receptacle with a notch, and the cartridge is inserted

into this receptacle. When the cartridge sits in the ENDS device body, the notch allows an ENDS

user to view the storage level within the storage compartment of the cartridge. See Exhibit 70,

’139 Patent, Figures 12, 27B.

90. The ’139 Patent discloses the transparent cartridge with a device configuration

allowing users to see the nicotine formulation liquid level inside the cartridge. Prior to the ’139

Patent, users using many other ENDS could not see the nicotine formulation liquid levels inside

the cartridge while using the device. JLI’s ’139 Patent addresses this difficulty by disclosing

transparent cartridges where a portion of the cartridge is not covered by the device. The ENDS

device body has a notch such that a portion of the cartridge is visible through the notch when it is

housed within the device.

28

C. The ’568 Patent

91. The ’568 Patent discloses a pod with a mouthpiece enclosing and simultaneously

concealing a portion of the storage compartment, as well as an ENDS device body with a

notched pod receptacle to allow an ENDS user to view the liquid level inside the pod when the

pod sits inside the ENDS device body. Moreover, the ’568 Patent discloses paired plates sitting

inside the pod, and flat contact tabs extend from these paired plates to outside of the pod. The flat

contact tabs also fold over so as to lie against the side of the pod that meets an electrical contact

in the ENDS device body when the pod is housed inside the ENDS device body. See Exhibit 73,

’568 Patent, Figure 24B (part 2411).

92. The ’568 Patent discloses a pair of exposed, flat, folded-over contact tabs

integrally formed from the paired plates. These exposed, flat, folded-over contact tabs complete a

circuit with the battery in the ENDS device body when the pod is inserted into the device. Prior

to the ’568 Patent, other ENDS used pins to connect the heating element and the pod. As

opposed to the claimed contact tabs which lay flat against the bottom of the pod, these pins were

larger and often required a separate compartment adjacent to the bottom of the pod for housing

the pins in order to dissipate excess heat from the heating element. However, the pins were

inadequate for dissipating excess heat and so were prone to overheat and produce a burnt flavor.

JLI’s ’568 Patent addresses this problem by disclosing the flat folded-over contact tabs integrally

formed from the paired plates, making the device more space-efficient and relatively easy to

manufacture and install, and allowing for heat to dissipate through the heat sink, which prevents

the formation and transmission of burnt flavors to users.

29

D. The ’130 Patent

93. The ’130 Patent discloses a method of manufacturing a pod with a humectant, a

heating element, and a pair of heater contact plates, where the heating element sits between the

pair of heater contact plates, and the heater contact plates sit on opposite sides of the pod.

94. The ’130 Patent discloses a method of fabricating a pod with a pair of plates

proximate to two opposing sides of the pod, where both plates are coupled to a heating element

positioned between the two paired plates. Prior to the ’130 Patent, other ENDS were fabricated

with a larger number of components for the pod, leading to leakage problems, difficulty of

manufacture, and quality control issues. JLI’s ’130 Patent addresses this problem by disclosing a

method of fabrication where a much smaller number of components, including a heating element

connected to two flat, paired plates and contact tabs to absorb, regulate, and dissipate the heat

produced by the heating element, where the plates and tabs are made from a single piece of

material. This method reduces the number of components and the chances of leakage, and it

makes the device more space-efficient and relatively easy to manufacture and install along

portions of the heating chamber walls, all while providing effective heat sink features.

V. THE ACCUSED PRODUCTS

95. Pursuant to section 210.10(b)(1) of the Commission's Rules of Practice and

Procedure, 19 C.F.R. § 210.10(b)(1), the proposed plain language description of the category of

accused products, which defines the scope of the investigation, is “electronic nicotine delivery

systems (‘ENDS’), and components thereof, including ENDS devices and ENDS pods.” As

detailed below, some of the accused products include an ENDS device and the associated ENDS

pods sold for use with the device. Others are ENDS pods alone. Some accused ENDS pods—

sold alone or with an associated ENDS device—are expressly marketed as “Juul Compatible.”

30

96. The Accused Products include at least the Bo Group’s Bo One and Bo+ devices

and pods (also called “Bo Caps”); Eonsmoke Group’s Eonsmoke and Eonsmoke v2.0 devices

and pods, as well as 4X pods; the Ziip Group’s Ziip devices (also called “ZDevice”) and pods

(also called “ZPods”), as well as Plus Pods; the XFire Group’s XFire devices and pods; the Flair

Group’s Flair Xtreme devices and pods; the Myle Group’s Myle devices and pods; the Pulse

Group’s Pulse (also called “Ply Rock”) devices and pods; and the 3X Group’s 3X pods

(“Accused Products”).6

Device Pod Bo One X X

Bo+ X X Eonsmoke X X

Eonsmoke v2.0 X X 4X X

Ziip X X Plus Pods X

XFire X X Flair X X Myle X X Pulse X X

3X X

A. Bo Group

97. On information and belief, each of J Well’s, Bo Vaping’s, MMS’s, and Electric

Tobacconist’s Bo One and Bo+ devices and pods are ENDS or components thereof. See, e.g.,

Exhibit 78 (Photo of Bo One Device and Pod); Exhibit 79 (Photo of Bo+ Device and Pod);

Exhibit 80 (Photo of Bo One Device and Pod Coupled); Exhibit 81 (Photo of Bo One Device and

Pod Separated).

6 JLI has identified these products based on information that is publicly available at this time. This list is non-limiting, and JLI reserves the right to identify additional infringing products during discovery.

31

Exhibits 80-81 (Bo One device and pod, coupled and separated)

B. Eonsmoke Group

98. On information and belief, each of Eonsmoke’s and Electric Tobacconist’s

Eonsmoke and Eonsmoke v2.0 devices and pods, as well as 4X pods, are ENDS or components

thereof. See, e.g., Exhibit 82 (Photo of Eonsmoke Device and Pod); Exhibit 83 (Photo of

Eonsmoke v2.0 Device and Pod); Exhibit 84 (Photo of 4X Pod); Exhibit 85 (Photo of Eonsmoke

Device and Pod Coupled); Exhibit 86 (Photo of Eonsmoke Device and Pod Separated).

Exhibits 85-86 (Eonsmoke device and pod, coupled and separated)

32

C. Ziip Group

99. On information and belief, each of Ziip Labs’, Ziip China’s, Yibo’s, and Electric

Tobacconist’s Ziip devices and pods, as well as Plus Pods, are ENDS or components thereof.

See, e.g., Exhibit 87 (Photo of Ziip Device and Pod); Exhibit 88 (Photo of Ziip Device and Pod

Coupled); Exhibit 89 (Photo of Ziip Device and Pod Separated); Exhibit 90 (Photo of Plus Pod);

Exhibit 91 (Photo of Plus Pod Without Cap).

Exhibits 88-89 (Ziip device and pod, coupled and separated)

D. XFire Group

100. On information and belief, each of XFire’s and ALD’s XFire devices and pods are

ENDS or components thereof. See, e.g., Exhibit 92 (Photo of XFire Device and Pod); Exhibit 93

(Photo of XFire Device and Pod Coupled); Exhibit 94 (Photo of XFire Device and Pod

Separated).

33

Exhibits 93-94 (XFire device and pod, coupled and separated)

E. Flair Group

101. On information and belief, each of Flair’s and Joecig’s Flair Xtreme devices and

pods are ENDS or components thereof. See, e.g., Exhibit 95 (Photo of Flair Xtreme Device and

Pod); Exhibit 96 (Photo of Flair Xtreme Device and Pod Coupled); Exhibit 97 (Photo of Flair

Xtreme Device and Pod Separated).

Exhibits 96-97 (Flair Xtreme device and pod, coupled and separated)

F. Myle Group

102. On information and belief, each of Myle’s and Electric Tobacconist’s Myle

devices and pods are ENDS or components thereof. See, e.g., Exhibit 98 (Photo of Myle Device

34

and Pod); Exhibit 99 (Photo of Myle Device and Pod Coupled); Exhibit 100 (Photo of Myle

Device and Pod Separated).

Exhibits 99-100 (Myle device and pod, coupled and separated)

G. Pulse Group

103. On information and belief, each of Vapor Hub’s, Limitless’s, INTL’s, and Electric

Tobacconist’s Pulse devices and pods are ENDS or components thereof. See, e.g., Exhibit 101

(Photo of Pulse Device and Pod); Exhibit 102 (Photo of Pulse Device and Pod Coupled); Exhibit

103 (Photo of Pulse Device and Pod Separated).

Exhibits 102-103 (Pulse device and pod, coupled and separated)

35

H. 3X Group

104. On information and belief, each of King’s and Keep Vapor’s 3X pods is a

component of ENDS. See, e.g., Exhibit 104 (Photo of 3X Pod); Exhibit 105 (Photo of 3X Pod

with Cap); Exhibit 106 (Photo of 3X Pod without Cap); Exhibit 107 (Photo of 3X Pod without

Cap, Angled View).

Exhibits 105-107 (3X pods with and without caps)

VI. RESPONDENTS’ UNLAWFUL AND UNFAIR ACTS

A. Importation and Sale

105. The specific instances set forth below are representative examples of

Respondents’ unlawful acts.

1. Bo Group

106. Respondents J Well, Bo Vaping, MMS, and Electric Tobacconist knowingly and

intentionally organize, direct, authorize, approve, or otherwise participate in the unlawful and

infringing conduct alleged herein, including the manufacture, distribution, sale for importation,

importation, and sale after importation in the United States of the infringing Bo One and Bo+

devices and pods. On information and belief, J Well organizes, directs, authorizes, approves, or

otherwise participates in the manufacture, distribution, sale for importation, importation, and sale

after importation in the United States of these infringing Bo One and Bo+ devices and pods.

Exhibit 25; Exhibit 26. On information and belief, Bo Vaping, MMS, and Electric Tobacconist

36

distribute these infringing Bo One and Bo+ devices and pods. Exhibit 30; Exhibit 31; Exhibit 24

at 2-3; Exhibit 34; Exhibit 37.

Specific Instance of Importation of the Bo One Device and Pods

107. Starter kits that each contained a Bo One device and pods were purchased in the

United States from Electric Tobacconist and were shipped to an address in Washington, D.C. See,

e.g., Exhibit 108 ¶¶ 3-4 (Declaration of Alexandra Lazea ) (“Lazea Decl.”). Packaging for these

starter kits shows that they were designed in France, assembled in China, and distributed by Bo

Vaping. See Exhibit 108 ¶ 6.

108. On information and belief, J Well organized, directed, authorized, or otherwise

participated in the sale for importation, importation, and sale after importation in the United

States of these infringing Bo One devices and pods, and Bo Vaping, MMS, and Electric

Tobacconist distributed these infringing Bo One devices and pods.

37

Specific Instance of Importation of the Bo+ Device and Pods

109. Starter kits that each contained a Bo+ device and pods were purchased in the


e.g., Exhibit 108 ¶¶ 3, 5. Packaging for these starter kits shows that they were designed in

France, assembled in China, and distributed by Bo Vaping. See Exhibit 108 ¶ 6.

110. On information and belief, J Well organized, directed, authorized, or otherwise


States of these infringing Bo+ devices and pods, and Bo Vaping, MMS, and Electric Tobacconist

distributed these infringing Bo+ devices and pods.

2. Eonsmoke Group

111. Respondents Eonsmoke and Electric Tobacconist knowingly and intentionally

organize, direct, authorize, approve, or otherwise participate in the unlawful and infringing

conduct alleged herein, including the manufacture, distribution, sale for importation, importation,

and sale after importation in the United States of the infringing Eonsmoke and Eonsmoke v2.0

devices and pods, as well as 4X pods. On information and belief, Eonsmoke organizes, directs,

38

authorizes, approves, or otherwise participates in the manufacture, distribution, sale for

importation, importation, and sale after importation in the United States of these infringing Bo

One and Bo+ devices and pods. Exhibit 109 at 6-7 (Web Printout of Vaping Daily – Eonsmoke

Review) (“The company also copies designs from other brands and modders, though no

improvements are made.”). On information and belief, Electric Tobacconist distributes these

infringing Eonsmoke pods and 4X pods. Exhibit 41; Exhibit 42.

Specific Instance of Importation of the Eonsmoke Device and Pods

112. Three Eonsmoke devices were purchased in the United States from Vapor DNA,

and were shipped to an address in Washington, D.C. See, e.g., Exhibit 108 ¶¶ 7, 10. Packaging

for Eonsmoke’s starter kits shows that they were made in China and distributed by Respondent

Eonsmoke. See Exhibit 108 ¶ 13.

113. On information and belief, Eonsmoke organized, directed, authorized, or

otherwise participated in the sale for importation, importation, and sale after importation in the

United States of these infringing Eonsmoke devices and pods.

39

114. Packaging for the infringing Eonsmoke starter kits also shows that Respondent

Ziip Labs designs the Eonsmoke devices and pods. See Exhibit 108 ¶ 13. On information and

belief, Ziip Labs organizes, directs, authorizes, or otherwise participates in the sale for

importation, importation, and sale after importation in the United States of these infringing

Eonsmoke devices and pods.

Specific Instance of Importation of the Eonsmoke v2.0 Device and Pods

115. Two Eonsmoke v2.0 devices and two packs of “JUUL-compatible pods” were

purchased in the United States directly from Eonsmoke and were shipped to an address in

Washington, D.C. See, e.g., Exhibit 108 ¶¶ 8, 11. Packaging for Eonsmoke v2.0 devices and pods

show that they were made in China and distributed by Respondent Eonsmoke. See Exhibit 108 ¶

13.



United States of these infringing Eonsmoke v2.0 devices and pods.

40

Specific Instance of Importation of the 4X Pods

117. Two multi-flavor JLI compatible pods were purchased in the United States

directly from 4X and were shipped to an address in Washington, D.C. See, e.g., Exhibit 108 ¶¶ 9,

12. Moreover, 4X pods were purchased in the United States by a private investigator at the

request of counsel directly from 4X and were shipped to an address in New Jersey. See, e.g.,

Confidential Exhibit 110 at 2-6 (Investigator Report Regarding 4X Pods). The private

investigator received a portion of the order in a box with an email address linked to the co-

founder of Eonsmoke. See Confidential Exhibit 110 at 6. Packaging for 4X pods shows that they

were made in China. See Exhibit 108 ¶ 13.



United States of these infringing 4X pods.

41

3. Ziip Group

119. Respondents Ziip Labs, Ziip China, Yibo, and Electric Tobacconist knowingly

and intentionally organize, direct, authorize, approve, or otherwise participate in the unlawful

and infringing conduct alleged herein, including the manufacture, distribution, sale for

importation, importation, and sale after importation in the United States of the infringing Ziip

devices and pods, as well as Plus Pods.

120. On information and belief, Ziip Labs organizes, directs, authorizes, approves, or

otherwise participates in the manufacture, distribution, sale for importation, importation, and sale

after importation in the United States of the infringing Ziip devices and pods, as well as the Plus

Pods. Exhibit 44; Exhibit 111 (Web Printout of Ziip’s Products for Sale); Exhibit 112 (Web

Printout of Plus Pods’ Products for Sale); Exhibit 113 (Web Printout of Plus Pods’ Juul

Compatible Pods and Charger for Sale) (PlusPods selling “Juul Compatible Pods + Charger”).

121. On information and belief, Ziip China, a subsidiary of Ziip Labs, organizes,

directs, authorizes, approves, or otherwise participates from China, in consultation with Ziip

Labs, in the manufacture, distribution, sale for importation, importation, and sale after

importation in the United States of these infringing Ziip devices and pods, as well as Plus Pods.

Exhibit 44; Exhibit 45.

122. On information and belief, Ziip Labs designs, organizes, directs, authorizes,

approves, or otherwise participates in the manufacture, distribution, sale for importation,

importation, and sale after importation in the United States of these infringing Ziip devices and

pods, as well as Plus Pods. Exhibit 44; Exhibit 45.

123. On information and belief, Yibo manufactures and sells for importation into the

United States these infringing Ziip devices and pods, as well as the Plus Pods, as part of its

manufacturing activities. Exhibit 47 (Web Printout of Yibo Contact).

42

124. On information and belief, Electric Tobacconist distributes these infringing Ziip

pods. Exhibit 48.

Specific Instance of Importation of the Ziip Devices and Pods

125. Starter kits that each contained a Ziip device and pods were purchased in the

United States from Zen Factory Outlet and were shipped to an address in Washington, D.C. See,

e.g., Exhibit 108 ¶¶ 14, 16. Packaging for these starter kits states that Respondent Ziip Labs

designed the devices and pods in Uruguay, and it manufactured them in China. See Exhibit 108 ¶

18.

126. On information and belief, Ziip Labs and Ziip China organized, directed,

authorized, or otherwise participated in the sale for importation, importation, and sale after

importation in the United States of these infringing Ziip devices and pods, while Yibo

manufactured and sold for importation into the United States these infringing Ziip devices and

pods as part of its manufacturing activities.

Specific Instance of Importation of the Plus Pods

127. Packs of Plus Pods were purchased in the United States from Plus Pods’ website,

http://www.pluspods.com/, and were shipped to an address in New York, NY. See Confidential

http://www.pluspods.com/

43

Exhibit 114 (Investigator Report Regarding Plus Pods). Packaging for these Plus Pods states that

Respondent Ziip Labs designed the pods in Uruguay, and it manufactures them in China. See

Exhibit 115 (Plus Pods packaging). In fact, the backing for the Plus Pods blister pack shares the

same Ziip logo that is printed on the backing for the Ziip pods blister pack. See Exhibits 116;

117; 118 (showing Ziip pods blister pack backing and Plus Pods blister pack backing).

Exhibit 115 (Plus Pods Packaging)

44

Ziip Pods Blister Pack

Exhibit 116 (Ziip pods blister pack front)

Exhibit 117 (Ziip pods blister pack back)

Plus Pods Blister Pack

Exhibit 118 (Plus Pods blister pack back)

128. A second set of Plus Pods were purchased in the United States from Plus Pods’

website, http://www.pluspods.com/, and were shipped to an address in Washington, D.C. See

Exhibit 108 ¶¶ 15, 17. Packaging for these Plus Pods states that they are manufactured in China.

See Exhibit 108 ¶ 18.

http://www.pluspods.com/

45

129. On information and belief, Ziip Labs and Ziip China organized, directed,

authorized, or otherwise participated in the sale for importation, importation, and sale after

importation in the United States of these infringing Plus Pods, while Yibo manufactured and sold

for importation into the United States these infringing Plus Pods as part of its manufacturing

activities.

130. On information and belief, Yibo manufactures and assembles the Ziip devices and

pods in China. On information and belief, Yibo manufactures and sells for importation into the

United States these infringing Plus Pods as part of its manufacturing activities.

4. XFire Group

131. Respondents XFire and ALD knowingly and intentionally organize, direct,

authorize, approve, or otherwise participate in the unlawful and infringing conduct alleged

herein, including the manufacture, distribution, sale for importation, importation, and sale after

importation in the United States of the infringing XFire devices and pods. On information and

belief, XFire organizes, directs, authorizes, approves, or otherwise participates in the

manufacture, distribution, sale for importation, importation, and sale after importation in the

United States of these infringing XFire devices and pods, while ALD manufactures, assembles,

and sells for importation into the United States these infringing XFire devices and pods as part of

its manufacturing activities.

Specific Instance of Importation of the Xfire Devices and Pods

132. Starter kits that each contained an XFire device and pods were purchased in the

United States directly from XFire and were shipped to an address in Washington D.C. See, e.g.,

Exhibit 108 ¶¶ 19-20. Packaging for these devices and pods shows that XFire manufactured them

in China. See Exhibit 108 ¶ 21.

46

133. On information and belief, XFire organized, directed, authorized, or otherwise


States of these infringing XFire devices and pods, while ALD manufactured and sold for

importation into the United States these infringing XFire devices and pods as part of its

manufacturing activities.

5. Flair Group

134. Respondents Flair and Joecig knowingly and intentionally organize, direct,



importation in the United States of the infringing Flair Xtreme devices and pods. On information

and belief, Flair organizes, directs, authorizes, approves, or otherwise participates in the

manufacture, distribution, sale for importation, importation, and sale after importation in the

United States of these infringing Flair Xtreme devices and pods, while Joecig manufactures,

47

assembles, and sells for importation into the United States these infringing Flair Xtreme devices

and pods as part of its manufacturing activities. Exhibit 54 at 12.

Specific Instance of Importation of the Flair Xtreme Devices and Pods

135. Starter kits that each contained a Flair Xtreme device and pods were purchased in

the United States directly from Flair Vapor, and were shipped to an address in Washington, D.C.

See, e.g., Exhibit 108 ¶¶ 22-23. Packaging for these starter kits shows that Flair manufactures the

devices and pods in China. See Exhibit 108 ¶ 24.

136. On information and belief, Flair organized, directed, authorized, or otherwise


States of these infringing Flair Xtreme devices and pods, while Joecig manufactured and sold for

importation into the United States these infringing Flair Xtreme devices and pods as part of its

manufacturing activities.

48

6. Myle Group

137. Respondents Myle and Electric Tobacconist knowingly and intentionally

organize, direct, authorize, approve, or otherwise participate in the unlawful and infringing

conduct alleged herein, including the manufacture, distribution, sale for importation, importation,

and sale after importation in the United States of the infringing Myle devices and pods. On

information and belief, Myle organizes, directs, authorizes, approves, or otherwise participates in

the manufacture, distribution, sale for importation, importation, and sale after importation in the

United States of these infringing Myle devices and pods. On information and belief, Electric

Tobacconist distributes these infringing Myle devices and pods. Exhibit 57.

Specific Instance of Importation of the Myle Devices and Pods

138. Starter kits that each contained a Myle device and pods were purchased in the


e.g., Exhibit 108 ¶¶ 25-27. Packaging for Myle’s starter kits shows that Myle designs the devices

and pods in Italy and manufactures them in China. See Exhibit 108 ¶ 28.

49

139. On information and belief, Myle organized, directed, authorized, or otherwise


States of these infringing Myle devices and pods.

7. Pulse Group

140. Respondents Vapor Hub, Limitless, INTL, and Electric Tobacconist knowingly

and intentionally organize, direct, authorize, approve, or otherwise participate in the unlawful

and infringing conduct alleged herein, including the manufacture, distribution, sale for

importation, importation, and sale after importation in the United States of the infringing Pulse

devices and pods. On information and belief, Vapor Hub organizes, directs, authorizes, approves,

or otherwise participates in the manufacture, distribution, sale for importation, importation, and

sale after importation in the United States of these infringing Pulse devices and pods. Exhibit 59.

On information and belief, Limitless organizes, directs, authorizes, approves, or otherwise

participates in the manufacture, distribution, sale for importation, importation, or sale after

importation in the United States these infringing Pulse devices and pods as part of its distribution

activities in the United States. Exhibit 119 (Web Printout of Vapor Hub Introducing Limitless

Products); Exhibit 63; Exhibit 62. On information and belief, INTL manufactures, assembles,

and sells for importation into the United States these infringing Pulse devices and pods as part of

its manufacturing activities. On information and belief, Electric Tobacconist distributes these

infringing Pulse devices and pods. Exhibit 65.

Specific Instance of Importation of the Pulse Devices and Pods

141. Starter kits that each contained a Pulse device and pods were purchased in the


e.g., Exhibit 108 ¶¶ 29-30. Moreover, Vapor Hub also knowingly and intentionally coordinates

with retail stores through direct sales primarily in the United States See Exhibit 120 at 18 (Web

50

Printout of Vapor Hub’s SEC Form 10-Q). Vapor Hub also knowingly and intentionally sells the

Pulse devices and pods through third-party wholesalers who then resell the products to retailers

in the United States, such as convenience stores and gas stations. See id. On information and

belief, Vapor Hub and Limitless organized, directed, authorized, or otherwise participated in the

sale for importation, importation, and sale after importation in the United States of these

infringing Pulse devices and pods, while INTL manufactured and sold for importation into the

United States these infringing Pulse devices and pods as part of its manufacturing activities.

8. 3X Group

142. Respondents King and Keep Vapor knowingly and intentionally organize, direct,



importation in the United States of the infringing 3X pods. On information and belief, King

organizes, directs, authorizes, approves, or otherwise participates in the distribution, importation,

and sale after importation in the United States of the infringing 3X pods. See generally Exhibit

108 ¶ 33 (package showing King as the distributor). On information and belief, Keep Vapor

organizes, directs, authorizes, approves, or otherwise participates in the manufacture, sale for

importation, and importation in the United States of the infringing 3X pods. See generally

Exhibit 108 ¶ 33 (package showing Keep Vapor as the manufacturer).

Specific Instance of Importation of the 3X Pods

143. Two packs of 3X pods were purchased in the United States from Vapers & Papers

and were shipped to an address in Washington, D.C. See Exhibit 108 ¶¶ 31-32. Packaging for 3X

pods show that they were made in China. See Exhibit 108 ¶ 33. Respondent King knowingly and

intentionally coordinated and directed Keep Vapor, who manufactures the 3X pods in China. On

information and belief, King and Keep Vapor organized, directed, authorized, approved, or

51

otherwise participated in the manufacture, distribution, sale for importation, importation, and

sale after importation in the United States of these infringing 3X pods.

B. Infringement

144. As explained in Section VI.A., Respondents import, sell for importation, and sell

after importation the Accused Products. In violation of § 1337(a)(1)(B), the Accused Products

directly infringe, literally or under the doctrine of equivalents, the Asserted Claims or are made

by a process that directly infringes, literally or under the doctrine of equivalents, the Asserted

Claims.

145. The Accused Products directly infringe at least claims 1, 2, 4, 5, 7, 8, 10, 12, 13,

16, 17, 20, 21 of the ’669 Patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, 29 of the

’139 Patent; and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19, 20 of the ’568 Patent. In addition, the

Accused Products are manufactured according to a process that infringes claims 1, 2, 4, 5, 6, 8, 9,

10, 16, 19, 21, 27 of the ’130 Patent.

52

146. Specifically the Accused Devices and the Accused Pods infringe the following

claims of each patent:

’669 Patent ’139 Patent ’568 Patent ’130 Patent

Bo Group

Bo One device and

pods 12, 13, 16, 21 20, 21, 24, 28,

29

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

Bo+ device and pods

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

Eonsmoke Group

Eonsmoke device and

pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28,

29

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

Eonsmoke v2.0 device and pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 11, 13, 20, 21, 24,

28, 29

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

4X pods 1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

Ziip Group

Ziip device and pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28,

29

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

Plus Pods 1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

XFire Group

XFire device and

pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28,

29

Flair Group

Flair Xtreme

device and pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 10, 11, 13, 19, 20, 21, 24, 28, 29

Myle Group

Myle device and

pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28,

29

Pulse Group

Pulse device and

pods

1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17

1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28,

29

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21

53

’669 Patent ’139 Patent ’568 Patent ’130 Patent

3X Group 3X pods 1, 2, 4, 5, 7, 8, 10, 12, 13, 16,

17, 20, 21

1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19

1, 2, 4, 5, 6, 8, 9, 10, 16, 19,

21, 27

1. Bo Group

a) Direct Infringement

147. Respondents J Well, Bo Vaping, MMS, and Electric Tobacconist import, sell for

importation, and/or sell after importation the Bo One and Bo+ devices and pods. In violation of

§ 1337(a)(1)(B), the Bo One devices and pods directly infringe, literally or under the doctrine of

equivalents, claims 12, 13, 16, 21 of the ’669 Patent; claims 20, 21, 24, 28, 29 of the ’139 Patent;

and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19, 20 of the ’568 Patent, or are made by a process

that directly infringes, literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 6, 8, 9, 10,

16, 19, 21, 27 of the ’130 Patent. Furthermore, in violation of § 1337(a)(1)(B), the Bo+ devices

and pods directly infringe, literally or under the doctrine of equivalents, claims 1, 2, 3, 5, 6, 7, 8,

9, 12, 17, 18, 19, 20 of the ’568 Patent, or are made by a process that directly infringes, literally

or under the doctrine of equivalents, claims 1, 2, 4, 5, 6, 8, 9, 10, 16, 19, 21, 27 of the ’130

Patent.

148. Claim charts comparing representative Bo One devices and pods to the Asserted

Claims of the ’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent are attached as Exhibits 121

(’669 Patent), 122 (’139 Patent), 123 (’568 Patent), and 124 (’130 Patent). Claim charts

comparing representative Bo+ devices and pods to the Asserted Claims of the ’568 Patent and

’130 Patent are attached as Exhibits 125 (’568 Patent) and 126 (’130 Patent).

149. On information and belief, each of the Respondents J Well, Bo Vaping, MMS, and

Electric Tobacconist maintain a commercially-significant inventory of the Bo One and Bo+

54

devices and pods in the United States. Respondents’ sales of pods alone directly infringe JLI’s

Asserted Claims directed to nicotine delivery pods of each of the ’669 Patent, ’139 Patent, ’568

Patent, and ’130 Patent.

b) Indirect Infringement

150. The Bo Group Respondents have also induced and continue to induce others to

infringe, literally or under the doctrine of equivalents, the Asserted Claims under 35 U.S.C.

§ 271(b) by selling for importation into the United States, importing, and selling after

importation the Accused Products and encouraging and facilitating others to perform actions

using those Accused Products that Respondents know will infringe and with the intent that

performance of the actions will infringe.

151. As an initial matter, the Bo Group Respondents had notice of each of the Asserted

Patents, as well as JLI’s infringement allegations at least as early as October 3, 2018—the filing

date of JLI’s complaint in the United States District Court for the Eastern District of New York.

152. The Bo Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported Bo One and Bo+ devices and pods in a way

that directly infringes the Asserted Patents, knowing and intending that their customers will

commit infringing acts in such a manner as to directly infringe the Asserted Claims. Specifically,

Respondents provide explicit instructions to their customers regarding the use of the pods with a

rechargeable device, and even sell rechargeable devices and pods together as starter kits. See

Exhibit 127 (instructions on how to use the device and pods); Exhibit 128 (Bo One packaging).

On information and belief, the products are sold to customers and used by them pursuant to

Respondents’ packaging instructions to infringe one or more of the Asserted Claims. The devices

and pods have no substantial purpose other than to be combined in a manner that infringes the

claims of each of the ’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent.

55

153. Moreover, Respondents’ sales of pods alone also indirectly infringe JLI’s Asserted

Claims directed to the device of each of the ’669 Patent, ’139 Patent, ’568 Patent, and ’130

Patent because Respondents’ sales of pods are only intended to be used in an infringing ENDS.

154. On information and belief, Respondents also contribute to the infringement of the

Asserted Claims under 35 U.S.C. § 271(c) by their manufacture, importation, sale for

importation, and/or sale in the United States after importation of one or more components of the

Accused Products. Since at least the date a courtesy copy of JLI’s October 3, 2018 district court

complaint alleging infringement of the Asserted Patents was sent to Respondents, Respondents

have had knowledge of the Asserted Patents and the infringing nature of the Accused Products.

Respondents are aware that their imported components are designed for use in the Accused

Products, embody a material part of the invention claimed in the Asserted Patents, and are not

staple articles of commerce suitable for substantial non-infringing use.

155. Respondents’ importation, sale for importation, and sale in the United States after

importation of the Accused Products, and components thereof, are continuing. Moreover,

Respondents have continued to distribute product literature and website materials encouraging

their customers and others to use their products in the customary and intended manner which

infringes the Asserted Patents. See Exhibit 129 (sale of the Bo One device, pods, and charger on

its website); Exhibit 130 (sale of the Bo+ device, pods, and charger on its website). Thus,

Respondents contribute to and induce the infringement of the Asserted Patents.

2. Eonsmoke Group


156. Respondents Eonsmoke and Electric Tobacconist imports, sell for importation,

and/or sell after importation the Eonsmoke and Eonsmoke v2.0, as well as the 4X pods. In

violation of § 1337(a)(1)(B), the Eonsmoke devices and pods directly infringe, literally or under

56

the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, 21 of the ’669 Patent;

claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, 29 of the ’139 Patent; and claims 1, 2, 3, 5,

6, 7, 8, 9, 12, 17, 18, 19, 20 of the ’568 Patent, or are made by a process that directly infringes,

literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 6, 8, 9, 10, 16, 19, 21, 27 of the

’130 Patent. Furthermore, in violation of § 1337(a)(1)(B), the Eonsmoke v2.0 devices and pods

directly infringe, literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13,

16, 17, 20, 21 of the ’669 Patent; claims 1, 2, 3, 4, 9, 11, 13, 20, 21, 24, 28, 29 of the ’139 Patent;

and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19, 20 of the ’568 Patent, or are made by a process


16, 19, 21, 27 of the ’130 Patent. Finally, in violation of § 1337(a)(1)(B), the 4X pods directly

infringe, literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17,

20, 21 of the ’669 Patent and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19 of the ’568 Patent, or are

made by a process that directly infringes, literally or under the doctrine of equivalents, claims 1,

2, 4, 5, 6, 8, 9, 10, 16, 19, 21, 27 of the ’130 Patent.

157. Claim charts comparing representative Eonsmoke devices and pods to the

Asserted Claims of the ’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent are attached as

Exhibits 131 (’669 Patent), 132 (’139 Patent), 133 (’568 Patent), and 134 (’130 Patent). Claim

charts comparing representative Eonsmoke v2.0 devices and pods to the Asserted Claims of the

’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent are attached as Exhibits 135 (’669 Patent),

136 (’139 Patent), 137 (’568 Patent), and 138 (’130 Patent). Claim Charts comparing

representative 4X pods to the Asserted Claims of the ’669 Patent, ’568 Patent, and ’130 Patent

are attached as Exhibits 139 (’669 Patent), 140 (’568 Patent), and 141 (’130 Patent).

57

158. On information and belief, each of the Respondents Eonsmoke and Electric

Tobacconist maintain a commercially-significant inventory of the Eonsmoke and Eonsmoke

v2.0, as well as the 4X pods, in the United States. Respondents’ sales of pods alone directly

infringe JLI’s Asserted Claims directed to nicotine delivery pods of each of the ’669 Patent, ’139

Patent, ’568 Patent, and ’130 Patent.


159. The Eonsmoke Group Respondents have also induced and continue to induce

others to infringe, literally or under the doctrine of equivalents, the Asserted Claims under 35

U.S.C. § 271(b) by selling for importation into the United States, importing, and selling after




160. As an initial matter, the Eonsmoke Group Respondents had notice of each of the

Asserted Patents, as well as JLI’s infringement allegations at least as early as October 3, 2018—

the filing date of JLI’s complaint in the United States District Court for the District of New

Jersey.

161. The Eonsmoke Group Respondents actively encourage, promote, distribute,

provide instructions for, and support the use of the imported Eonsmoke and Eonsmoke v2.0

devices and pods, as well as the 4X pods, in a way that directly infringes the Asserted Patents,

knowing and intending that their customers will commit infringing acts in such a manner as to

directly infringe the Asserted Claims. Specifically, Respondents provide explicit instructions to

their customers regarding the use of the pods with a rechargeable device, and even sell

rechargeable devices and pods together as starter kits. See Exhibit 142 (instructions on how to

use the device and pods); Exhibit 143 (Eonsmoke packaging). On information and belief, the

58

products are sold to customers and used by them pursuant to Respondents’ packaging

instructions to infringe one or more of the Asserted Claims. The devices and pods have no

substantial purpose other than to be combined in a manner that infringes the claims of each of the

’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent.

















infringe the Asserted Patents. See Exhibit 39 (website sales of the Eonsmoke device, pods, and

charger); Exhibit 40 (website sales of the Eonsmoke v2.0, pods, and charger); Exhibit 144

59

(website sales of the 4X pods and chargers). Thus, Respondents contribute to and induce the

infringement of the Asserted Patents.

3. Ziip Group


165. Respondents Ziip Labs, Ziip China, Yibo, and Electric Tobacconist import, sell

for importation, and/or sell after importation the Ziip devices and pods, as well as the Plus Pods.

In violation of § 1337(a)(1)(B), the Ziip devices and pods directly infringe, literally or under the

doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, 21 of the ’669 Patent;

claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, 29 of the ’139 Patent; and claims 1, 2, 3, 5,

6, 7, 8, 9, 12, 17, 18, 19, 20 of the ’568 Patent, or are made by a process that directly infringes,

literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 6, 8, 9, 10, 16, 19, 21, 27 of the

’130 Patent. Furthermore, in violation of § 1337(a)(1)(B), the Plus Pods directly infringe,

literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, 21 of

the ’669 Patent and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19 of the ’568 Patent, or are made by a

process that directly infringes, literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 6,

8, 9, 10, 16, 19, 21, 27 of the ’130 Patent.

166. Claim charts comparing representative Ziip devices and pods to the Asserted


(’669 Patent), 146 (’139 Patent), 147 (’568 Patent), and 148 (’130 Patent). Claim charts

comparing representative Plus Pods to the Asserted Claims of the ’669 Patent, ’568 Patent, and

’130 Patent are attached as Exhibits 149 (’669 Patent), 150 (’568 Patent), and 151 (’130 Patent).

167. On information and belief, each of the Respondents Ziip Labs, Ziip China, Yibo,

and Electric Tobacconist maintain a commercially-significant inventory of the Ziip devices and

pods, as well as the Plus Pods, in the United States. Respondents’ sales of pods alone directly

60

infringe JLI’s Asserted Claims directed to nicotine delivery pods of each of the ’669 Patent, ’139

Patent, ’568 Patent, and ’130 Patent.


168. The Ziip Group Respondents have also induced and continue to induce others to






169. As an initial matter, the Ziip Group Respondents had notice of each of the


the filing date of JLI’s complaint in the United States District Court for the Northern District of

California.

170. The Ziip Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported Ziip devices and pods, as well as the Plus

Pods, in a way that directly infringes the Asserted Patents, knowing and intending that their

customers will commit infringing acts in such a manner as to directly infringe the Asserted

Claims. Specifically, Respondents provide explicit instructions to their customers regarding the

use of the pods with a rechargeable device, and even sell rechargeable devices and pods together

as starter kits. Exhibit 152 (Ziip packaging). On information and belief, the products are sold to

customers and used by them pursuant to Respondents’ packaging instructions to infringe one or

more of the Asserted Claims. The devices and pods have no substantial purpose other than to be

combined in a manner that infringes the claims of each of the ’669 Patent, ’139 Patent, ’568

Patent, and ’130 Patent.

61

















infringes the Asserted Patents. See Exhibit 111 (website sales of the Ziip device, pods, and

charger); Exhibit 112 (website sales of the Plus Pods); Exhibit 113 (website sales of the Juul

compatible pods and charger at Plus Pods’ website). Thus, Respondents contribute to and induce

the infringement of the Asserted Patents.

4. XFire Group


174. Respondents XFire and ALD import, sell for importation, and/or sell after

importation the XFire devices and pods. In violation of § 1337(a)(1)(B), the XFire devices and

62

pods directly infringe, literally or under the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12,

13, 16, 17, 20, 21 of the ’669 Patent and claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, 29

of the ’139 Patent.

175. Claim charts comparing representative XFire devices and pods to the Asserted

Claims of the ’669 Patent and ’139 Patent are attached as Exhibits 153 (’669 patent) and 154

(’139 Patent).

176. On information and belief, each of the Respondents XFire and ALD maintain a

commercially-significant inventory of the XFire devices and pods in the United States.

Respondents’ sales of pods alone directly infringe JLI’s Asserted Claims directed to nicotine

delivery pods of the ’669 Patent and ’139 Patent.


177. The XFire Group Respondents have also induced and continue to induce others to






178. As an initial matter, the XFire Group Respondents had notice of each of the


the filing date of JLI’s complaint in the United States District Court for the Southern District of

Texas.

179. The XFire Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported XFire devices and pods in a way that

directly infringes the Asserted Patents, knowing and intending that their customers will commit

63

infringing acts in such a manner as to directly infringe the Asserted Claims. Specifically,


rechargeable device, and even sell rechargeable devices and pods together as starter kits. Exhibit

155 (XFire packaging). On information and belief, the products are sold to customers and used

by them pursuant to Respondents’ packaging instructions to infringe one or more of the Asserted

Claims. The devices and pods have no substantial purpose other than to be combined in a manner

that infringes the claims of the ’669 Patent and ’139 Patent.


Claims directed to the device of the ’669 Patent and ’139 Patent because Respondents’ sales of

pods are only intended to be used in an infringing ENDS.






have had knowledge of the ’669 Patent and ’139 Patent and the infringing nature of the Accused

Products. Respondents are aware that their imported components are designed for use in the

Accused Products, embody a material part of the invention claimed in the ’669 Patent and ’139

Patent, and are not staple articles of commerce suitable for substantial non-infringing use.





64

infringes the ’669 Patent and ’139 Patent. See Exhibit 156 (website sales of the XFire device,

pods, and charger). Thus, Respondents contribute to and induce the infringement of the ’669

Patent and ’139 Patent.

5. Flair Group


183. Respondents Flair and Joecig import, sell for importation, and/or sell after

importation the Flair Xtreme devices and pods. In violation of § 1337(a)(1)(B), the Flair Xtreme

devices and pods directly infringe, literally or under the doctrine of equivalents, claims 1, 2, 4, 5,

7, 8, 10, 12, 13, 16, 17, 20, 21 of the ’669 Patent and claims 1, 2, 3, 4, 9, 10, 11, 13, 19, 20, 21,

24, 28, 29 of the ’139 Patent.

184. Claim charts comparing representative Flair Xtreme devices and pods to the

Asserted Claims of the ’669 Patent and ’139 Patent are attached as Exhibits 157 (’669 Patent)

and 158 (’139 Patent).

185. On information and belief, each of the Respondents Flair and Joecig maintain a

commercially-significant inventory of the Flair Xtreme devices and pods in the United States.

Respondents’ sales of pods alone directly infringe JLI’s Asserted Claims directed to nicotine

delivery pods of the ’669 Patent and ’139 Patent.


186. The Flair Group Respondents have also induced and continue to induce others to






65

187. As an initial matter, the Flair Group Respondents had notice of each of the


the filing date of JLI’s complaint in the United States District Court for the District of New

Jersey.

188. The Flair Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported Flair Xtreme devices and pods in a way that

directly infringes the Asserted Patents, knowing and intending that their customers will commit



rechargeable device, and even sell rechargeable devices and pods together as starter kits. See

Exhibit 159 (instructions on how to use the device and pods); Exhibit 160 (instructions on how to

use the device and pods); Exhibit 161 (Flair Xtreme packaging). On information and belief, the

products are sold to customers and used by them pursuant to Respondents’ packaging


substantial purpose other than to be combined in a manner that infringes the claims of the ’669



Claims directed to the device of the ’669 Patent and ’139 Patent because Respondents’ sales of






66


have had knowledge of the ’669 Patent and ’139 Patent, and the infringing nature of the Accused








infringes the ’669 Patent and ’139 Patent. See Exhibit 162 (website sales of the Flair Xtreme

devices and pods); Exhibit 163 (website sales of the Flair Xtreme charger). Thus, Respondents

contribute to and induce the infringement of the ’669 Patent and ’139 Patent.

6. Myle Group


192. Respondents Myle and Electric Tobacconist import, sell for importation, and/or

sell after importation the Myle devices and pods. In violation of § 1337(a)(1)(B), the Myle

devices and pods directly infringe, literally or under the doctrine of equivalents, claims 1, 2, 4, 5,

7, 8, 10, 12, 13, 16, 17, 20, 21 of the ’669 Patent and claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20,

21, 24, 28, 29 of the ’139 Patent.

193. Claim charts comparing representative Myle devices and pods to the Asserted

Claims of the ’669 Patent and ’139 Patent are attached as Exhibits 164 (’669 Patent) and 165

(’139 Patent).

194. On information and belief, each of the Respondents Myle and Electric

Tobacconist maintain a commercially-significant inventory of the Myle devices and pods in the

67

United States. Respondents’ sales of pods alone directly infringe JLI’s Asserted Claims directed

to nicotine delivery pods of the ’669 Patent and ’139 Patent.


195. The Myle Group Respondents have also induced and continue to induce others to






196. As an initial matter, the Myle Group Respondents had notice of each of the


the filing date of JLI’s complaint in the United States District Court for the Eastern District of

New York.

197. The Myle Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported Myle devices and pods in a way that directly

infringes the Asserted Patents, knowing and intending that their customers will commit



rechargeable device, and even sell rechargeable devices and pods together as starter kits. Exhibit

166 (Myle packaging). On information and belief, the products are sold to customers and used by

them pursuant to Respondents’ packaging instructions to infringe one or more of the Asserted

Claims. The devices and pods have no substantial purpose other than to be combined in a manner

that infringes the claims of the ’669 Patent and ’139 Patent.

68


Claims directed to the device of the ’669 Patent and ’139 Patent, because Respondents’ sales of







have had knowledge of the ’669 Patent and ’139 Patent, and the infringing nature of the Accused








infringes the ’669 Patent and ’139 Patent. See Exhibit 167 (website sales of the Myle device,

pods, and charger). Thus, Respondents contribute to and induce the infringement of the ’669


7. Pulse Group


201. Respondents Vapor Hub, Limitless, INTL, and Electric Tobacconist import, sell

for importation, and/or sell after importation the Pulse devices and pods. In violation of

§ 1337(a)(1)(B), the Pulse devices and pods directly infringe, literally or under the doctrine of

69

equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17 of the ’669 Patent; claims 1, 2, 3, 4, 9, 10,

11, 13, 14, 19, 20, 21, 24, 28, 29 of the ’139 Patent; and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18,

19, 20 of the ’568 Patent, or are made by a process that directly infringes, literally or under the

doctrine of equivalents, claims 1, 2, 4, 5, 6, 8, 9, 10, 16, 19, 21 of the ’130 Patent.

202. Claim charts comparing representative Pulse devices and pods to the Asserted


(’669 Patent), 169 (’139 Patent), 170 (’568 Patent), and 171 (’130 Patent).

203. On information and belief, each of the Respondents Vapor Hub, Limitless, INTL,

and Electric Tobacconist maintain a commercially-significant inventory of the Pulse devices and

pods in the United States. Respondents’ sales of pods alone directly infringe JLI’s Asserted

Claims directed to nicotine delivery pods of each of the ’669 Patent, ’139 Patent, ’568 Patent,

and ’130 Patent.


204. The Pulse Group Respondents have also induced and continue to induce others to






205. As an initial matter, the Pulse Group Respondents had notice of each of the


the filing date of JLI’s complaint in the United States District Court for the Central District of

California.

70

206. The Pulse Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported Pulse devices and pods in a way that directly

infringes the Asserted Patents, knowing and intending that their customers will commit

infringing acts in such a manner as to directly infringe the Asserted Claims. See Exhibit 62

(description of how to fill the pods). Specifically, Respondents provide explicit instructions to

their customers regarding the use of the pods with a rechargeable device, and even sell

rechargeable devices and pods together as starter kits. See Exhibit 62 (instructions on how to use

the device and pods on Pulse’s website); Exhibit 172 (Pulse packaging). On information and

belief, the products are sold to customers and used by them pursuant to Respondents’ packaging


substantial purpose other than to be combined in a manner that infringes the claims of each of the

’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent. Additionally, Respondents sell for

importation, import, and sell after importation unfilled pods for the Pulse device, knowing and

intending that these pods will be filled with nicotine liquid and combined with devices to

infringe the Asserted Patents; this is the only substantial use for these unfilled pods. See Exhibit

59 (sale of the Pulse device with empty pods); Exhibit 63 (sale of the Pulse device with empty

pods).







71











infringes the Asserted Patents. See Exhibit 63 (website sales of the Pulse device, pods, and

charger). Thus, Respondents contribute to and induce the infringement of the Asserted Patents.

8. 3X Group


210. Respondents King and Keep Vapor import, sell for importation, and/or sell after

importation the 3X pods. In violation of § 1337(a)(1)(B), the 3X pods directly infringe, literally

or under the doctrine of equivalents, claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, 21 of the ’669

Patent and claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 17, 18, 19 of the ’568 Patent, or are made by a process


16, 19, 21, 27 of the ’130 Patent.

211. Claim charts comparing representative 3X pods to the Asserted Claims of the ’669

Patent, ’568 Patent, and ’130 Patent are attached as Exhibits 173 (’669 Patent), 174 (’568

Patent), and 175 (’130 Patent).

72

212. On information and belief, each of the Respondents King and Keep Vapor

maintain a commercially-significant inventory of the 3X pods in the United States. Respondents’

sales of pods alone directly infringe JLI’s Asserted Claims directed to nicotine delivery pods of

each of the ’669 Patent, ’568 Patent, and ’130 Patent.


213. The 3X Group Respondents have also induced and continues to induce others to






214. As an initial matter, the 3X Group Respondents had notice of each of the Asserted

Patents, as well as JLI’s infringement allegations at least as early as October 3, 2018—the filing

date of JLI’s complaint in the United States District Court for the District of New Jersey.

215. The 3X Group Respondents actively encourage, promote, distribute, provide

instructions for, and support the use of the imported 3X pods in a way that directly infringes the

Asserted Patents, knowing and intending that their customers will commit infringing acts in such

a manner as to directly infringe the Asserted Claims. Specifically, Respondents provide explicit

instructions to their customers regarding the use of the pods with a rechargeable device. On

information and belief, the pods are sold to customers and used by them pursuant to

Respondents’ packaging instructions to infringe one or more of the Asserted Claims. The pods

have no substantial purpose other than to be used in a manner that infringes the claims of each of

the ’669 Patent, ’568 Patent, and ’130 Patent.

73


Claims directed to the device of each of the ’669 Patent, ’568 Patent, and ’130 Patent because

Respondents’ sales of pods are only intended to be used in an infringing ENDS.














infringes the Asserted Patents. Thus, Respondents contribute to and induce the infringement of

the Asserted Patents.

VII. PHYSICAL SAMPLE

219. Physical samples of the Domestic Articles have been submitted with this

Complaint as Physical Exhibit 1 (JLI’s JUUL system, which includes the JUUL device body and

the JUULpods (or cartridges)). Physical samples of the Accused Products have been submitted

with this Complaint as Physical Exhibit 2 (Bo One device and pods); Physical Exhibit 3 (Bo+

device and pods); Physical Exhibit 4 (Eonsmoke device); Physical Exhibit 5 (Eonsmoke v2.0

74

device); Physical Exhibit 6 (Eonsmoke pods); Physical Exhibit 7 (4X pods); Physical Exhibit 8

(Ziip device and pods); Physical Exhibit 9 (Plus Pods); Physical Exhibit 10 (Plus Pods); Physical

Exhibit 11 (XFire device kit); Physical Exhibit 12 (XFire pods kit); Physical Exhibit 13 (Flair

Xtreme device and pods); Physical Exhibit 14 (Myle device and pods); Physical Exhibit 15

(Pulse device and pods); Physical Exhibit 16 (3X pods).

VIII. HARMONIZED TARIFF SCHEDULE

220. The Accused Products fall within at least the following headings and subheadings

of the United States Harmonized Tariff Schedule (“HTS”): 8543.70.9930; 8543.70.9940;

8543.90.8850; 8543.90.8860. These HTS numbers are illustrative only and not intended to limit

the scope of the Investigation.

IX. THE DOMESTIC INDUSTRY

221. A domestic industry exists in the United States relating to the Domestic Articles

as required by 19 U.S.C. § 1337(a)(3)(A) – (a)(3)(C) through JLI’s and its contractors’

employment of plant and equipment, and labor and capital, towards design, manufacture,

regulatory compliance, customer support, sales, marketing, and administrative activities related

to the JUUL system, as well as its investments in research and development and engineering to

exploit the technology of the Asserted Patents by bringing the JUUL system to market.

222. JLI’s success has been extraordinary and classically American. Despite a slow

launch in 2015, the JUUL system (as of early September 2018) commands a market share by

volume of approximately 72% and in recent months has been responsible for over 95% of the

explosive growth in the ENDS pod refill market. Accordingly, JLI is poised to achieve its goal of

improving the lives of the world’s one billion smokers, and it is doing so through its significant

and substantial investments in the United States.

75

223. JLI made substantial investments in research, development, and engineering in the

United States through June 2016 to develop the JUUL system. Additional details regarding these

investments can be found in the Declaration of Tim Danaher. See Confidential Exhibit 17

(Danaher Decl.).

224. JLI also made and continues to make significant investments in the United States

in plant and equipment as well as labor and capital related to the JUUL system. JLI employs

several dozen individuals in the United States who manage the foreign and domestic

manufacturing activities for the JUUL system; these employees manage the installation and

validation of new manufacturing capacity on a weekly basis to cope with the escalating demand

for the JUUL system. JLI’s domestic manufacturing activities include substantial filling,

finishing, packaging, and quality checking of the JUULpods in the United States before they are

sold for customers to use with their JUUL systems. JLI has invested tens of millions of dollars in

equipment that is used in the United States for these activities—including certain key equipment

that was itself manufactured in the United States. This equipment allows JLI and its contractors

to fill millions of pods every month. These activities occur in domestic facilities that take up

hundreds of thousands of square feet and for which JLI and its contractors have invested millions

of dollars. Further details can be found in the Declaration of Tim Danaher. See Confidential

Exhibit 17 (Danaher Decl.).

225. Historically, JLI has supplied enough product to meet rapidly growing market

demand for its ENDS products, even when JLI’s sales increased by over 700% in 2017. Exhibit

176 at 2 (CNBC Article - E-Cigarette Maker Juul Is Raising $150 Million After Spinning Out of

Vaping Company). And both JLI and its contractors continue to invest in the United States to

ensure that capacity will grow along with demand into the future.

76

226. JLI directly employs hundreds of individuals in the United States—885 people as

of September 30, 2018, and continuing to grow—to support JLI’s R&D, manufacturing, clinical

research, customer support, sales, marketing, and administrative activities for the JUUL system,

and JLI is constantly hiring more employees to support its rapidly growing operations.

Confidential Exhibit 17 (Danaher Decl.) at ¶12, App. 7.

227. Representative claim charts, attached as Confidential Exhibits 177 (’669 Patent),

178 (’139 Patent), 179 (’568 Patent), and 180 (’130 Patent), demonstrate that the JUUL system

and the method of manufacturing the JUUL system—which is done under the direction and

control of JLI and as a condition of payment—falls within the scope of at least the following

claims:

U.S. Patent No. Domestic Industry Claims

’669 Patent 1-21

’139 Patent 1-4, 6-13, 15-37

’568 Patent 1-14, 16-20

’130 Patent 1-17, 19-27

228. Additional information related to the Domestic Articles is attached as Exhibit 181

(FAQ for the JUUL system).

X. RELATED LITIGATION

A. Domestic Litigation

229. On October 3, 2018, JLI filed suit against J Well France S.A.S., Bo Vaping, MMS

Distribution, and The Electric Tobacconist, LLC, in the United States District Court for the

Eastern District of New York for patent infringement of the ’669 Patent, ’139 Patent, ’568 Patent,

and ’130 Patent. The case is currently in its initial stages.

77

230. On October 3, 2018, JLI filed suit against Eonsmoke, LLC, and The Electric

Tobacconist, LLC, in the United States District Court for the District of New Jersey for patent

infringement of the ’669 Patent, ’139 Patent, ’568 Patent, and ’130 Patent. The case is currently

in its initial stages.

231. On October 3, 2018, JLI filed suit against ZLab S.A., Ziip Lab Co., Limited,

Shenzhen Yibo Technology Co., Ltd., and The Electric Tobacconist, LLC, in the United States

District Court for the Northern District of California for patent infringement of the ’669 Patent,

’139 Patent, ’568 Patent, and ’130 Patent. The case is currently in its initial stages.

232. On October 3, 2018, JLI filed suit against XFire, Inc., and ALD Group Limited in

the United States District Court for the Southern District of Texas for patent infringement of the

’669 Patent and ’139 Patent. The case is currently in its initial stages.

233. On October 3, 2018, JLI filed suit against Flair Vapor LLC and Shenzhen Joecig

Technology Co., Ltd. in the United States District Court for the District of New Jersey for patent

infringement of the ’669 Patent and ’139 Patent. The case is currently in its initial stages.

234. On October 3, 2018, JLI filed suit against Myle Vape Inc. and The Electric

Tobacconist, LLC, in the United States District Court for the Eastern District of New York for

patent infringement of the ’669 Patent and ’139 Patent. The case is currently in its initial stages.

235. On October 3, 2018, JLI filed suit against Vapor Hub International, Inc., Limitless

Mod Co., Infinite-N Technology Limited, and The Electric Tobacconist, LLC, in the United

States District Court for the Central District of California for patent infringement of the ’669

Patent, ’139 Patent, ’568 Patent, and ’130 Patent. The case is currently in its initial stages.

236. On October 3, 2018, JLI filed suit against King Distribution LLC and Keep Vapor

Electronic Technology Co., Ltd. in the United States District Court for the District of New Jersey

78

for patent infringement of the ’669 Patent, ’568 Patent, and ’130 Patent. The case is currently in

its initial stages.

237. On October 4, 2018, JLI will file suit against Electric Tobacconist, LLC in the

United States District Court for the District of Colorado for patent infringement of the ’669

Patent, ’139 Patent, ’568 Patent, and ’130 Patent.

B. Foreign Litigation

238. Foreign patents that share a common priority claim with the Asserted Patents are

or will be the subject of various foreign proceedings, discussed below.

239. On or about September 28, 2018, Juul Labs UK Holdco Limited filed a Saisie-

Contrefacon against J Well alleging infringement of European Patent No. EP 3 086 671 B1,

which shares a common priority claim with the Asserted Patents here, in the Tribunal de Grande

Instance de Paris, in France. The court has issued seizure orders, some or all of which are

expected to be executed on October 3, 2018.

240. On or about October 3, 2018, Juul Labs UK Holdco Limited and Juul Labs UK

Limited filed Particulars of Claim against J Well France SAS for infringement of European

Patent No. EP 3 086 671 B1 and UK patent nos. GB Patent No. 2 558 805 and GB Patent No. 2

558 807, all of which share a common priority claim with the Asserted Patents here, in the High

Court of Justice Business and Property Court of England and Wales, Intellectual Property List

(ChD), Patents Court, in the United Kingdom.

XI. RELIEF REQUESTED

241. WHEREFORE, by reason of the foregoing, Complainant Juul Labs, Inc., requests

that the United States International Trade Commission:

A. Institute an immediate investigation under Section 337 of the Tariff Act of 1930,

as amended, 19 U.S.C. § 1337, with respect to Respondents’ violations of § 1337(a)(1)(B) based

79

on the unlawful importation into the United States, the sale for importation into the United

States, and/or the sale within the United States after importation of certain electronic nicotine

delivery systems (“ENDS”) and components thereof that infringe one or more claims of the

Asserted Patents or that are made by a process covered by one or more claims of the Asserted

Patents;

B. Schedule and conduct an evidentiary hearing on permanent relief under 19 U.S.C.

§§ 1337(d) and (f) of the Tariff Act of 1930, as amended;

C. Determine that each Respondent has violated Section 337;

D. Issue a limited exclusion order under 19 U.S.C. § 1337(d) specifically directed to

each named Respondent barring and excluding from entry into the United States all ENDS and

components thereof that infringe one or more claims of the Asserted Patents or that are made by

a process covered by one or more claims of the Asserted Patents;

E. Issue permanent cease and desist orders under 19 U.S.C. § 1337(f) prohibiting

any and all Respondents and their affiliates, subsidiaries, successors, or assigns, from importing,

selling for importation, marketing, demonstrating, distributing, repairing, refurbishing, offering

for sale, selling after importation, or transferring, including moving or shipping inventory in the

United States, all ENDS and components thereof that infringe one or more claims of the Asserted

Patents or that are made by a process covered by one or more claims of the Asserted Patents;

F. Impose a bond upon Respondents who continue to import infringing ENDS or

components thereof during the 60-day Presidential review period per 19 U.S.C. § 1337(j);

G. Issue such other and further relief as the Commission deems just and proper under

the law based upon the facts determined by the Investigation and the authority of the

Commission; and

STERNE KESSLER OOLDSTEIN & FOX DANIEL E. YONAN … · 10/3/2018 · U.S. International Trade...

Documents

Transcript of STERNE KESSLER OOLDSTEIN & FOX DANIEL E. YONAN … · 10/3/2018 · U.S. International Trade...