In the Matter of
`
`
`
`CERTAIN ELECTRONIC NICOTINE
`
`DELIVERY SYSTEMS AND COMPONENTS
`
`THEREOF
`
`Investigation No. 337-TA-1139
`
`
`
`Publication 5259
`
`
`
`February 2022
`
`
`
`U.S. International Trade Commission
`
`
`
`Washington, DC 20436
`
`JLI Ex. 2042, Page 1 of 372
`
`

`

`
`
`U.S. International Trade Commission
`
`COMMISSIONERS
`
`David S. Johanson, Chairman
`
`
`Rhonda K. Schmidtlein, Commissioner
`
`Jason E. Kearns, Commissioner
`
`
`Randolph J. Stayin, Commissioner
`Amy A. Karpel, Commissioner
`
`Address all communications to
`
`
`
`Secretary to the Commission
`
`
`United States International Trade Commission
`
`Washington, DC 20436
`
`JLI Ex. 2042, Page 2 of 372
`
`

`

`
`
`U.S. International Trade Commission
`
`Washington, DC 20436
`
`www.usitc.gov
`
`In the Matter of
`
`
`
`CERTAIN ELECTRONIC NICOTINE
`
`DELIVERY SYSTEMS AND COMPONENTS
`
`THEREOF
`
`
`
`Investigation No. 337-TA-1139
`
`
`
`Publication 5259
`
`
`
`February 2022
`
`JLI Ex. 2042, Page 3 of 372
`
`

`

`
`
`
`
`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`
`
`
`
`
`In the Matter of
`
`
`
`CERTAIN ELECTRONIC NICOTINE
`DELIVERY SYSTEMS AND
`COMPONENTS THEREOF
`
`
`
`
`
`
`Investigation No. 337-TA-1139
`
`
`Notice.
`
`ISSUANCE OF LIMITED EXCLUSION ORDER AND
`CEASE AND DESIST ORDERS; TERMINATION OF THE INVESTIGATION
`
`AGENCY: U.S. International Trade Commission.
`
`ACTION:
`
`SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
`determined to issue a limited exclusion order (“LEO”) and cease and desist orders (“CDOs”)
`directed to respondent Eonsmoke, LLC (“Eonsmoke”) and defaulted respondent XFire, Inc.
`(“XFire”) in the above-captioned investigation. The investigation is terminated in its entirety.
`
`FOR FURTHER INFORMATION CONTACT: Cathy Chen, Office of the General Counsel,
`U.S. International Trade Commission, 500 E Street SW, Washington, D.C. 20436, telephone
`202-205-2392. Copies of non-confidential documents filed in connection with this investigation
`may be viewed on the Commission’s electronic docket (EDIS) at https://edis.usitc.gov. For help
`accessing EDIS, please email EDIS3Help@usitc.gov. General information concerning the
`Commission may also be obtained by accessing its Internet server at
`https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
`be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
`
`SUPPLEMENTARY INFORMATION: On December 13, 2018, the Commission instituted
`this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337,
`based on a complaint filed on behalf of Juul Labs, Inc. (“JLI”) of San Francisco, California. 83
`FR 64156 (Dec. 13, 2018). The complaint, as amended and supplemented, alleges violations of
`section 337 based upon the importation into the United States, the sale for importation, and the
`sale within the United States after importation of certain electronic nicotine delivery systems and
`components thereof by reason of infringement of certain claims of U.S. Patent Nos.: 10,070,669
`(“the ’669 patent”); 10,076,139 (“the ’139 patent”); 10,045,568 (“the ’568 patent”); 10,058,130
`(“the ’130 patent”); and 10,104,915 (“the ’915 patent”) (collectively, “the Asserted Patents”). Id.
`The Commission’s notice of investigation named twenty-one respondents, including Eonsmoke
`of Clifton, New Jersey and XFire of Stafford, Texas. Id. at 64157. The Office of Unfair Import
`Investigations (“OUII”) is also a party to the investigation.
`
`
`JLI Ex. 2042, Page 4 of 372
`
`

`

`On February 25, 2019, the ALJ granted JLI’s motion to amend the complaint and notice
`of investigation to change the name of respondent Bo Vaping of Garden City, New York to
`ECVD/MMS Wholesale LLC of Garden City, New York and the name of respondent MMS
`Distribution LLC of Rock Hill, New York to MMS/ECVD LLC of Garden City, New York. See
`Order No. 8 (Feb. 25, 2019), not rev’d by Comm’n Notice (Mar. 25, 2019).
`
`On February 28, 2019, the ALJ granted a motion to amend the complaint and notice of
`investigation to change the name of respondent Limitless Mod Co. of Simi Valley, California to
`Limitless MOD, LLC of Simi Valley, California. See Order No. 10 (Feb. 28, 2019), not rev’d by
`Comm’n Notice (Mar. 27, 2019).
`
`
`On May 21, 2019, the ALJ granted a motion to amend the complaint and notice of
`investigation to change the name of respondent Ziip Lab Co., Ltd. of Guangdong Province,
`China to SS Group Holdings of Guangdong Province, China. See Order No. 26 (May 21, 2019),
`not rev’d by Comm’n Notice (June 14, 2019).
`
`
`Before the evidentiary hearing, JLI settled with the following eight respondents: J Well
`France S.A.S. of Paris, France; ECVD/MMS Wholesale LLC; MMS/ECVD LLC; The Electric
`Tobacconist, LLC of Boulder, Colorado; ALD Group Limited of Guangdong Province, China;
`Flair Vapor LLC of South Plainfield, New Jersey; Shenzhen Joecig Technology Co., Ltd. of
`Guangdong Province, China; and Myle Vape Inc. of Jamaica, New York. See Order No. 13
`(Mar. 12, 2019), not rev’d by Comm’n Notice (Apr. 5, 2019); Order No. 16 (Mar. 21, 2019), not
`rev’d by Comm’n Notice (Apr. 4, 2019); Order No. 31 (July 30, 2019), not rev’d by Comm’n
`Notice (Aug. 23, 2019); Order No. 32 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23,
`2019); Order No. 33 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019); Order No.
`34 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019).
`
`In addition, the investigation terminated as to the following six respondents based on a
`consent order stipulation and the issuance of a consent order: Vapor Hub International, Inc. of
`Simi Valley, California; Limitless MOD, LLC; Asher Dynamics, Inc. of Chino, California; Ply
`Rock of Chino, California; Infinite-N Technology Limited of Guangdong Province, China; and
`King Distribution LLC of Elmwood Park, New Jersey. See Order No. 9 (Feb. 27, 2019), not
`rev’d by Comm’n Notice (Mar. 27, 2019); Order No. 11 (Feb. 28, 2019), not rev’d by Comm’n
`Notice (Mar. 26, 2019); Order No. 18 (Mar. 28, 2019), not rev’d by Comm’n Notice (Apr. 11,
`2019); Order No. 20 (Apr. 2, 2019), not rev’d by Comm’n Notice (Apr. 15, 2019).
`
`
`On April 23, 2019, the ALJ found respondent XFire in default pursuant to Commission
`Rule 210.16(b), 19 CFR 210.16(b). See Order No. 22 (Apr. 23, 2019), not rev’d by Comm’n
`Notice (May 16, 2019). At the time XFire was found in default, it was accused of infringing
`claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of the ’669 patent; claims 1, 2, 3, 4, 9, 10,
`11, 13, 14, 19, 20, 21, 24, 28, and 29 of the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19,
`20, 21, 22, 23, and 27 of the ’915 patent (collectively, “the Asserted XFire Claims”).
`
`Also, prior to the evidentiary hearing, the ALJ granted JLI’s motion for partial
`termination of the investigation with respect to allegations of infringement as to all asserted
`claims of the ’139 patent and certain asserted claims of the other Asserted Patents. See Order
`
`
`
`2
`
`JLI Ex. 2042, Page 5 of 372
`
`

`

`No. 36 (Aug. 8, 2019), not rev’d by Comm’n Notice (Sep. 5, 2019). As a result, the following
`claims remain at issue in the investigation: claims 1, 2, and 13 of the ’669 patent; claims 12, 17,
`and 20 of the ’568 patent; claims 1, 2, and 4 of the ’130 patent; and claims 1, 6, and 21 of the
`’915 patent (collectively, “the Asserted Eonsmoke Claims”).
`
`JLI and the Commission were unable to serve respondent Keep Vapor Electronic Tech.
`Co., Ltd. of Shenzhen, China despite multiple attempts at service. The final ID states that JLI
`does not request any relief against this respondent. See ID at 2 n.1.
`
`Only five respondents participated in the evidentiary hearing: SS Group Holdings; ZLab
`S.A. of Punta del Este – Maldonado, Uruguay; Shenzhen Yibo Technology Co. Ltd. Of
`Guangdong Province, China (collectively, “the Ziip Respondents”); Vapor 4 Life Holdings, Inc.
`of Northbrook, Illinois (“V4L”); and Eonsmoke.
`
`On August 5, 2019, one day before the prehearing conference, the ALJ issued an ID
`(Order No. 35), granting JLI’s motion for summary determination of importation,
`infringement, and domestic industry. The ALJ found that JLI was entitled to summary
`determination of importation with respect to the Ziip Respondents and their accused products;
`Eonsmoke and its accused products; and V4L and certain V4L accused products. See Order
`No. 35 at 4-11 (Aug. 5, 2019). Citing to a stipulation between JLI and the Ziip Respondents,
`the ALJ stated in his infringement analysis with respect to the Ziip Respondents’ accused
`products that “the question of whether Ziip accused products contain or perform each
`limitation of asserted claims is moot.” Id. at 11. The ALJ did not specifically state whether
`summary determination of infringement as to the Ziip Respondents was denied or granted nor
`the reasoning supporting grant or denial of the motion as to this issue. Id.
`
`
`An evidentiary hearing was held from August 6-7, 2019.
`
`
`
`On September 4, 2019 the Commission reviewed Order No. 35 in part. Specifically,
`the Commission reviewed the ALJ’s analysis as to infringement and a statement regarding
`mootness on page 11 of the ID. The Commission remanded to the ALJ for clarification on
`this issue and as to whether the ID grants or denies summary determination that the Ziip
`Respondents infringe the Asserted Patents. See Comm’n Notice (Sep. 4, 2019).
`
`In response to the Commission’s September 4, 2019 Notice, the ALJ clarified that Order
`No. 35 denied summary determination of infringement as to the Ziip Respondents because that
`issue was moot in light of the stipulation between JLI and the Ziip Respondents. See Remand of
`Order No. 35 (Oct. 10, 2019).
`
`On November 19, 2019, the ALJ granted motions to terminate the investigation as to the
`Ziip Respondents and V4L based on settlement agreements. See Order Nos. 38 and 39 (Nov. 19,
`2019), not rev’d by Comm’n Notice (Dec. 16, 2019). Accordingly, only respondent Eonsmoke
`remains active in this investigation.
`
`
`
`
`
`3
`
`JLI Ex. 2042, Page 6 of 372
`
`

`

`On December 12, 2019, the ALJ granted JLI’s motion to strike portions of Eonsmoke’s
`posthearing brief. See Order No. 40 (Dec. 12, 2019). Specifically, these portions relate to the
`issue of invalidity of asserted claim 4 of the ’915 patent, which was not addressed by
`Respondents’ expert or in their prehearing briefings. Id. at 3-5.
`
`On December 13, 2019, the ALJ issued a combined final ID and recommended
`determination (“RD”), finding a violation of section 337 by respondent Eonsmoke. Specifically,
`the final ID finds, inter alia, that JLI satisfied the importation requirement as to Eonsmoke’s
`accused products; that JLI has shown Eonsmoke’s accused products infringe the Asserted
`Eonsmoke Claims; that JLI has satisfied the domestic industry requirement with respect to the
`’669, the ’568, the ’130, and the ’915 patents; and that the Asserted Eonsmoke Claims have not
`been shown to be invalid. In addition, in the event the Commission finds a violation of section
`337, the RD recommends that the Commission issue an LEO and CDOs directed at each of
`respondent Eonsmoke and defaulted respondent XFire, and impose a 100 percent bond during
`the period of Presidential review. No public interest submissions were filed in response to the
`Federal Register notice seeking such submissions, 85 FR 3720 (Jan. 22, 2020).
`
`No petitions for review were filed, which means each party has abandoned all issues
`decided adversely to that party. See 19 CFR 210.43(b)(4).
`
`On February 13, 2020, the Commission determined to sua sponte review the final ID in
`part. 85 FR 9803-06 (Feb. 20, 2020). Specifically, the Commission determined to review and,
`on review, declined to adopt the discussion of the validity of element [c] of claim 12 of the ’669
`patent on pages 50 and 55 of the final ID. The Commission also determined to review the
`discussion of Warranty and Customer Support and Regulatory Compliance on pages 265-266 of
`the final ID and the discussion of the quantitative significance of JLI’s contract manufacturers’
`investments in the last paragraph on page 272 of the final ID. The Commission determined not
`to review the remainder of the final ID, including the other portions of the ID’s domestic
`industry analysis, which were sufficient to support the final ID’s finding that JLI has satisfied the
`domestic industry requirement under subparagraphs 337(a)(3)(A) and (B) with respect to the
`’669, the ’568, the ’130, and the ’915 patents. Accordingly, the Commission’s determination
`resulted in finding a violation of section 337 by reason of Eonsmoke’s importation of electronic
`nicotine delivery systems and components thereof that infringe one or more of the Asserted
`Eonsmoke Claims. The Commission also determined that JLI is entitled to relief against
`defaulted respondent XFire pursuant to 19 U.S.C. 1337(g)(1). The parties were requested to file
`written submissions on remedy, the public interest, and bonding.
`
`On February 27, 2020 JLI and OUII submitted their briefs on remedy, the public interest,
`and bonding. JLI and OUII further filed response briefs on March 5, 2020.
`
`On review, the Commission has determined to affirm the discussion of Warranty and
`Customer Support and Regulatory Compliance as it concerns the economic prong of the
`domestic industry requirement on pages 265-66 of the final ID. The Commission has also
`determined to decline to adopt the discussion of the quantitative significance of JLI’s contract
`manufacturers’ investments as it concerns the economic prong of the domestic industry
`requirement in the last paragraph on page 272 of the final ID.
`
`
`
`4
`
`JLI Ex. 2042, Page 7 of 372
`
`

`

`
`The Commission has further determined that the appropriate remedy in this investigation
`is: (1) an LEO directed to a) respondent Eonsmoke prohibiting the unlicensed importation of
`nicotine vaporizer devices and the associated pods sold for use with the devices, and components
`thereof that infringe one or more of the Asserted Eonsmoke Claims and b) respondent XFire
`prohibiting the unlicensed importation of nicotine vaporizer devices and the associated pods sold
`for use with the devices, and components thereof that infringe one or more of the Asserted XFire
`Claims; and (2) CDOs prohibiting respondents Eonsmoke and XFire from further importing,
`selling, and distributing infringing products in the United States. The Commission has also
`determined that the public interest factors enumerated in paragraphs 337(d)(1), (f)(1), and (g)(1)
`(19 U.S.C. 1337(d)(1), (f)(1), and (g)(1)), do not preclude issuance of these remedial orders.
`Finally, the Commission has determined that the bond during the period of Presidential review
`pursuant to 19 U.S.C. 1337(j) shall be in the amount of 100 percent of the entered value of the
`imported articles. The Commission’s order was delivered to the President and to the United
`States Trade Representative on the day of its issuance. The investigation is hereby terminated.
`
`While temporary remote operating procedures are in place in response to COVID-19, the
`Office of the Secretary is not able to serve parties that have not retained counsel or otherwise
`provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules
`201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the
`Complainant complete service for any party without a method of electronic service noted on the
`attached Certificate of Service and shall file proof of service on the Electronic Document
`Information System (EDIS).
`
`The authority for the Commission’s determination is contained in section 337 of the
`Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in Part 210 of the Commission’s Rules of
`Practice and Procedure, 19 CFR Part 210.
`
`By order of the Commission.
`
`Issued: April 20, 2020
`
`
`
`
`Lisa R. Barton
`Secretary to the Commission
`
`
`
`5
`
`JLI Ex. 2042, Page 8 of 372
`
`

`

`CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
`AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1139
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS
`upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties
`as indicated, on April 20, 2020.
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants Juul Labs, Inc.:
`Daniel E. Yonan, Esq.
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005
`Email: dyonan@sternekessler.com
`
`On Behalf of Respondents Eonsmoke, LLC:
`Stephen M. Lobbin, Esq.
`SML AVVOCATI P.C.
`7538 Draper Avenue
`San Diego, California 92037
`Email: sml@smlavvocati.com
`
`Respondent:
`
`XFire, Inc.
`820 Summer Park Dr., Suite 700
`Stafford, TX 77477
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification of
`Availability for Download
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification of
`Availability for Download
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by
`Complainants
`
`JLI Ex. 2042, Page 9 of 372
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`
`
`
`In the Matter of
`
`CERTAIN ELECTRONIC NICOTINE
`DELIVERY SYSTEMS AND
`COMPONENTS THEREOF
`
`Investigation No. 337-TA-1139
`
`LIMITED EXCLUSION ORDER
`
`The Commission has determined that there is a violation of section 337 of the Tariff Act
`
`
`
`
`
`
`
`
`
`of 1930, as amended (19 U.S.C. § 1337), in the unlawful importation, sale for importation, or the
`
`sale within the United States after importation by Eonsmoke, LLC (“Eonsmoke”) and XFire, Inc.
`
`(“XFire”) (collectively, “Respondents”) of certain nicotine vaporizer devices and the associated
`
`pods sold for use with the devices, and components thereof that infringe one or more claims of
`
`U.S. Patent Nos. 10,070,669 (“the ’669 patent”); 10,045,568 (“the ’568 patent”); 10,058,130
`
`(“the ’130 patent”); 10,104,915 (“the ’915 patent”); and 10,076,139 (“the ’139 patent”).
`
`
`
`Having reviewed the record of this investigation, including the written submissions of the
`
`parties, the Commission has made its determination on the issues of remedy, the public interest,
`
`and bonding. The Commission has determined that the appropriate form of relief includes a
`
`limited exclusion order prohibiting the unlicensed entry of infringing nicotine vaporizer devices
`
`and the associated pods sold for use with the devices, and components thereof manufactured
`
`abroad by or on behalf of, or imported by or on behalf of, the Respondents or any of their
`
`affiliated companies, parents, subsidiaries, or other related business entities, or their successors
`
`or assigns.
`
`
`
`
`1
`
`JLI Ex. 2042, Page 10 of 372
`
`

`

`
`
`The Commission has determined that the public interest factors enumerated in 19 U.S.C.
`
`§§ 1337(d)(1) and (g)(1) do not preclude issuance of the limited exclusion order, and that the
`
`bond during the period of Presidential review shall be in the amount of 100 percent of the
`
`entered value of the infringing articles.
`
`
`
`Accordingly, the Commission hereby ORDERS that:
`
`1.
`
`Nicotine vaporizer devices and the associated pods sold for use with the devices,
`
`and components thereof that infringe one or more of claims 1, 2, and 13 of the ’669 patent;
`
`claims 12, 17 and 20 of the ’568 patent; claims 1, 2 and 4 of the ’130 patent; and claims 1, 6 and
`
`21 of the ’915 patent that are manufactured abroad by or on behalf of, or imported by or on
`
`behalf of, Eonsmoke or any of its affiliated companies, parents, subsidiaries, or other related
`
`business entities, or their successors or assigns, are excluded from entry for consumption into the
`
`United States, entry for consumption from a foreign trade zone, or withdrawal from a warehouse
`
`for consumption, for the remaining term of the patent, except under license of the patent owner
`
`or as provided by law.
`
`2.
`
`Nicotine vaporizer devices and the associated pods sold for use with the devices,
`
`and components thereof that infringe one or more of infringing claims 1, 2, 4, 5, 7, 8, 10, 12, 13,
`
`16, 17, 20, and 21 of the ’669 patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and
`
`29 of the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27 of the ’915
`
`patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, XFire or
`
`any of its affiliated companies, parents, subsidiaries, or other related business entities, or their
`
`successors or assigns, are excluded from entry for consumption into the United States, entry for
`
`consumption from a foreign trade zone, or withdrawal from a warehouse for consumption, for
`
`the remaining term of the patent, except under license of the patent owner or as provided by law.
`
`
`
`
`2
`
`JLI Ex. 2042, Page 11 of 372
`
`

`

`3.
`
`Notwithstanding paragraphs 1 and 2 of this Order, the aforesaid nicotine vaporizer
`
`devices and the associated pods sold for use with the devices, and components thereof (“covered
`
`articles”) are entitled to entry into the United States for consumption, entry for consumption
`
`from a foreign-trade zone, or withdrawal from a warehouse for consumption under bond in the
`
`amount of one hundred (100) percent of the entered value of the products, pursuant to subsection
`
`(j) of Section 337 (19 U.S.C. § 1337(j)) and the Presidential Memorandum for the United States
`
`Trade Representative of July 21, 2005 (70 Fed. Reg. 43,251), from the day after this Order is
`
`received by the United States Trade Representative until such time as the United States Trade
`
`Representative notifies the Commission that this Order is approved, disapproved, or no action is
`
`taken but, in any event, not later than sixty (60) days after the date of receipt of this Order. All
`
`entries of covered articles made pursuant to this paragraph are to be reported to U.S. Customs
`
`and Border Protection (“CBP”), in advance of the date of the entry, pursuant to procedures CBP
`
`establishes.
`
`4.
`
`At the discretion of CBP and pursuant to procedures that it establishes, persons
`
`seeking to import nicotine vaporizer devices and the associated pods sold for use with the
`
`devices, and components thereof that are potentially subject to this Order may be required to
`
`certify that they are familiar with the terms of this Order, that they have made appropriate
`
`inquiry, and thereupon state that, to the best of their knowledge and belief, the products being
`
`imported are not excluded from entry under paragraphs 1 and 2 of this Order. At its discretion,
`
`CBP may require persons who have provided the certification described in this paragraph to
`
`furnish such records or analyses as are necessary to substantiate the certification.
`
`
`
`
`3
`
`JLI Ex. 2042, Page 12 of 372
`
`

`

`5.
`
`In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not
`
`apply to covered articles imported by and for the use of the United States, or imported for, and to
`
`be used for, the United States with the authorization or consent of the Government.
`
`6.
`
`The Commission may modify this Order in accordance with the procedures
`
`described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R.
`
`§ 210.76).
`
`7.
`
`The Secretary shall serve copies of this Order upon each party of record in this
`
`investigation that has retained counsel or otherwise provided a point of contact for electronic
`
`service and upon CBP. While temporary remote operating procedures are in place in response to
`
`COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
`
`or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
`
`Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
`
`orders that the Complainant complete service of this Order for any party without a method of
`
`electronic service noted on the attached Certificate of Service and shall file proof of service on
`
`the Electronic Document Information System (EDIS).
`
`8.
`
`Notice of this Order shall be published in the Federal Register.
`
`
`
`
`
`
`
`By order of the Commission.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Issued: April 20, 2020
`
`
`
`
`
` Lisa R. Barton
`Secretary to the Commission
`
`
`
`
`4
`
`JLI Ex. 2042, Page 13 of 372
`
`

`

`CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
`AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1139
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
`upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties as
`indicated, on April 20, 2020.
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants Juul Labs, Inc.:
`Daniel E. Yonan, Esq.
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005
`Email: dyonan@sternekessler.com
`
`On Behalf of Respondents Eonsmoke, LLC:
`Stephen M. Lobbin, Esq.
`SML AVVOCATI P.C.
`7538 Draper Avenue
`San Diego, California 92037
`Email: sml@smlavvocati.com
`
`Respondent:
`
`XFire, Inc.
`820 Summer Park Dr., Suite 700
`Stafford, TX 77477
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification of
`Availability for Download
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification of
`Availability for Download
`
`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Service to Be
`Completed by
`Complainants
`
`JLI Ex. 2042, Page 14 of 372
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`
`
`
`In the Matter of
`
`CERTAIN ELECTRONIC NICOTINE
`DELIVERY SYSTEMS AND
`COMPONENTS THEREOF
`
`Investigation No. 337-TA-1139
`
`
`CEASE AND DESIST ORDER
`
`IT IS HEREBY ORDERED THAT RESPONDENT XFire, Inc., 820 Summer Park
`
`
`
`
`
`Dr., Suite 700, Stafford, TX 77477 (“Respondent”), cease and desist from conducting any of the
`
`following activities in the United States: importing, selling, marketing, advertising, distributing,
`
`transferring (except for exportation), and soliciting United States agents or distributors for, or
`
`aiding and abetting other entities in the importation, sale for importation, sale after importation,
`
`transfer (except for exportation), or distribution of nicotine vaporizer devices and the associated
`
`pods sold for use with the devices, and components thereof that infringe one or more of claims 1,
`
`2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of U.S. Patent No. 10,070,669 (“the ’669 patent”);
`
`claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of U.S. Patent No. 10,076,139 (“the
`
`’139 patent”); and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27 of U.S. Patent No.
`
`10,104,915 (“the ’915 patent”) (collectively, “the Asserted Patents”) in violation of section 337
`
`of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
`
`
`
`1
`
`JLI Ex. 2042, Page 15 of 372
`
`

`

`I.
`Definitions
`
`As used in this order:
`
`(A)
`
`(B)
`
`“Commission” shall mean the United States International Trade Commission.
`
`“Complainant” shall mean Juul Labs, Inc., 560 20th Street, San Francisco, CA
`
`94107.
`
`(C)
`
`“Respondent” shall mean XFire, Inc., 820 Summer Park Dr., Suite 700, Stafford,
`
`TX 77477.
`
`(D)
`
`“Person” shall mean an individual, or any non-governmental partnership, firm,
`
`association, corporation, or other legal or business entity other than Respondent
`
`or its majority-owned or controlled subsidiaries, successors, or assigns.
`
`(E)
`
`“United States” shall mean the fifty States, the District of Columbia, and Puerto
`
`Rico.
`
`(F)
`
`The terms “import” and “importation” refer to importation for entry for
`
`consumption under the Customs laws of the United States.
`
`(G)
`
`The term “covered products” shall mean nicotine vaporizer devices and the
`
`associated pods sold for use with the devices, and components thereof that
`
`infringe one or more of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of
`
`the ’669 patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of
`
`the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27
`
`of the ’915 patent. Covered products shall not include articles for which a
`
`provision of law or license avoids liability for infringement.
`
`2
`
`
`
`
`
`
`
`JLI Ex. 2042, Page 16 of 372
`
`

`

`II.
`Applicability
`
`The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
`
`
`
`principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
`
`by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
`
`and to each of them, insofar as they are engaging in conduct prohibited by section III, infra, for,
`
`with, or otherwise on behalf of, Respondent.
`
`III.
`Conduct Prohibited
`
`The following conduct of Respondent in the United States is prohibited by this Order.
`
`For the remaining term of the Asserted Patents, Respondent shall not:
`
`(A)
`
`import or sell for importation into the United States covered products;
`
`(B) market, distribute, sell, or otherwise transfer (except for exportation)
`
`(C)
`
`(D)
`
`(E)
`
`imported covered products;
`
`advertise imported covered products;
`
`solicit U.S. agents or distributors for imported covered products; or
`
`aid or abet other entities in the importation, sale for importation, sale
`
`after importation, transfer, or distribution of covered products.
`
`IV.
`Conduct Permitted
`
`Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
`
`
`
`
`
`
`
`by the terms of this Order shall be permitted if:
`
`(A)
`
`in a written instrument, the owner of the Asserted Patents licenses or
`
`authorizes such specific conduct; or
`
`
`
`3
`
`JLI Ex. 2042, Page 17 of 372
`
`

`

`(B)
`
`such specific conduct is related to the importation or sale of covered
`
`products by or for the United States.
`
`V.
`Reporting
`
`For purposes of this requirement, the reporting periods shall commence on January 1 of
`
`
`
`each year and shall end on the subsequent December 31. The first report required under this
`
`section shall cover the period from the date of issuance of this order through December 31, 2020.
`
`This reporting requirement shall continue in force until such time as Respondent has truthfully
`
`reported, in two consecutive timely filed reports, that it has no inventory of covered products in
`
`the United States.
`
`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
`
`the Commission: (a) the quantity in units and the value in dollars of covered products that it has
`
`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
`
`and (b) the quantity in units and value in dollars of reported covered products that remain in
`
`inventory in the United States at the end of the reporting period.
`
`When filing written submissions, Respondent must file the original document
`
`electronically on or before the deadlines stated above and submit eight (8) true paper copies to
`
`the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
`
`Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
`
`to the investigation number (“Inv. No. 337-TA-1139”) in a prominent place on the cover pages
`
`and/or the first page. (See Handbook for Electronic Filing Procedures,
`
`https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
`
`regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
`
`document to the Commission in confidence, it must file the original and a public version of the
`
`
`
`4
`
`JLI Ex. 2042, Page 18 of 372
`
`

`

`original with the Office of the Secretary and must serve a copy of the confidential version on
`
`Complainant’s counsel.1
`
`Persons filing written submissions must file the original document electronically on or
`
`before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
`
`210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
`
`(March 19, 2020).
`
`Any failure to make the required report or the filing of any false or inaccurate report shall
`
`consti