-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
1/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 CV14-1649
M c ae J. W se, Bar No. [email protected] Sliger, Bar No. [email protected] J. Dueppen, Bar No. [email protected] COIELLP1888 Century Park E., Suite 1700Los Angeles, CA 90067-1721Telephone: 310.788.9900Facsimile: 310.788.3399
Attorneys for PlaintiffsFONTEM VENTURES B.V. andFONTEM HOLDINGS 1 B.V.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
FONTEM VENTURES B.V., aNetherlands company; and FONTEMHOLDINGS 1 B.V., a Netherlandscompany,
Plaintiffs,
v.
CB DISTRIBUTORS, INC., an Illinoiscorporation; DR DISTRIBUTORS, LLC,an Illinois limited liability company dba21ST CENTURY SMOKE, LLC, andDOES 1-5, Inclusive,
Defendants.
Case No. CV14-1649
COMPLAINT FOR PATENTINFRINGEMENT
DEMAND FOR JURY TRIAL
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
2/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -1- CV14-1649
For its Complaint against Defendant CB DISTRIBUTORS, INC. and
Defendant DR DISTRIBUTORS, LLC (together, the Defendants), Plaintiff
Fontem Ventures B.V. (Fontem Ventures) and Plaintiff Fontem Holdings 1 B.V.
(Fontem Holdings) allege as follows:
JURISDICTION AND VENUE
1. This is a civil action for patent infringement arising under the patentlaws of the United States, 35 U.S.C. 101, et seq., and in particular 271.
2. This Court has subject matter jurisdiction over this patent infringementaction under 28 U.S.C. 1331 and 1338(a).
3. This Court has personal jurisdiction over the Defendants because theysolicit and conduct business in California, including the provision of goods over the
Internet, derive revenue from goods sold in California and within this judicial
district, and have committed acts of infringement in this judicial district.
4. Venue lies in this judicial district pursuant to 28 U.S.C. 1391(b) and(c), and 1400(b).
PARTIES
5. Plaintiff Fontem Ventures is a company organized and existing underthe laws of the Netherlands, with its principal place of business at 12th Floor, 101
Barbara Strozzilaan, 1083 HN Amsterdam, The Netherlands. Fontem Ventures is
in the business of developing innovative non-tobacco products, including electronic
cigarettes.
6. Plaintiff Fontem Holdings is a company organized and existing underthe laws of the Netherlands, with its principal place of business at 12th Floor, 101
Barbara Strozzilaan, 1083 HN Amsterdam, The Netherlands.
7. Plaintiffs Fontem Ventures and Fontem Holdings (together, thePlaintiffs) are informed and believe that: Defendant CB DISTRIBUTORS, INC.
(CB) is a corporation organized and existing under the laws of the State of
Illinois, having its principal place of business at 2500 Kennedy Drive, Beloit,
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
3/18
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
4/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -3- CV14-1649
was filed in a related case.1 The Joint Status Report was reviewed and signed by
the Defendants counsel. The Defendants shall have additional knowledge of the
742 Patent as of the date of service for the present Complaint.
13. The Plaintiffs are informed and believe that: The Defendants havedirectly infringed the 742 Patent in violation of at least 35 U.S.C. 271(a) by,
themselves and/or through their agents, unlawfully and wrongfully making, using,
importing, offering to sell, and/or selling electronic cigarette products embodying
one or more of the inventions claimed in the 742 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette products that
directly infringe the 742 Patent include, but are not limited to, (1) 21st Century
Smoke Rechargeable Electronic Cigarettes as found in Electronic Cigarette Kits
such as the 21st Century Smoke Electronic Cigarette Super Kit Box (Super Kit),
the 21st Century Smoke Electronic Cigarette Express Kit Flip Top Box (Express
Kit - Flip Top), and the 21st Century Smoke Electronic Cigarette Express Kit
(Express Kit); (2) 21st Century Smoke Express Refill Electronic Cigarette
Cartridges for use with rechargeable 21st Century Smoke Batteries purchasedseparately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; (3) 21st
Century Smoke Rechargeable Universal Batteries; (4) 21st Century Smoke Soft Tip
Disposable Electronic Cigarettes; and (5) 21st Century Flavored Mist Disposable
Electronic Cigarettes. Such products infringe at least claims 2 and 3 of the 742
Patent.
////
1SeeJoint Status Report filed February 13, 2014 (Dkt. No. 63, Exh. A) in
Ruyan Investment Holdings Limited v. Sottera, Inc., Case No. CV 12-05454 GAF(FFMx) (C.D. Cal.), which is consolidated for purposes of discovery with Case
Nos. CV 12-05455 GAF (FFMx), CV 12-05456 GAF (FFMx), CV 12-05462 GAF(FFMx), CV 12-05466 GAF (FFMx), CV 12-05468 GAF (FFMx), CV 12-05472GAF (FFMx), CV 12-05477 GAF (FFMx), CV 12-05482 GAF (FFMx), and CV12-06268 GAF (FFMx).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
5/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -4- CV14-1649
14. The Plaintiffs are informed and believe that: The Defendants havecontributed to the infringement of the 742 Patent in violation of at least 35 U.S.C.
271(c) by, themselves and/or through their agents, contributing to the direct
infringement of the 742 Patent by their customers by unlawfully and wrongfully
making, using, importing, offering to sell, and/or selling electronic cigarette
components having no substantially non-infringing use, which, when purchased
and/or used by their customers, result in direct infringement of one or more
embodiments of the inventions claimed in the 742 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette components
that have no substantial noninfringing uses and that contribute to the direct
infringement of the 742 Patent include, but are not limited to, (1) 21st Century
Smoke Express Refill Electronic Cigarette Cartridges (21st Century E-Cig
Cartridges) for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; and (2)
21st Century Smoke Rechargeable Universal Batteries (21st Century E-Cig
Batteries).15. The Plaintiffs are informed and believe that: Having knowledge of the
742 Patent, the Defendants have been aware that 21st Century E-Cig Cartridges
and 21st Century E-Cig Batteries, when purchased and/or used by their customers,
result in direct infringement of one or more embodiments of the inventions claimed
in the 742 Patent. The Defendants state on their website that 21st Century E-Cig
Cartridges are [c]ompatible with all rechargeable 21st Century Smoke batteries
and are designed for use with the 21st Century Smoke Express or Super Kit.2
The Defendants also instruct users to [s]crew new cartridge/atomizer onto battery
and [i]f battery has an atomizer already, [to] remove it then screw new
2See, e.g., http://www.21stcenturysmoke.com/Express-Refill-Cartridge-3-
Pack-Regular-1-6-p/38-115r.htm (last visited March 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
6/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -5- CV14-1649
cartridge/atomizer onto battery.3 The Defendants also state on their website that
[t]he Universal Battery is a rechargeable battery that works with all 21st Century
Smoke atomizers, cartridges with atomizers (cartomizers) and chargers and can
be used as a backup or replacement for all 21st Century Smoke Kits.4 Moreover,
according to the Defendants website, [o]nce the components are put together, the
21st Century Smoke electronic cigarette physically resembles a traditional cigarette
in both width and length.5 As such, the Defendants know that 21st Century E-Cig
Cartridges and 21st Century E-Cig Batteries that are sold separately from their
Electronic Cigarette Kits have no substantial non-infringing uses other than to
provide users with the ability to assemble and use an electronic cigarette that
infringes at least claims 2 and 3 of the 742 Patent, and therefore that they are
especially made or adapted for use in infringement of the 742 Patent.
16. As a direct and proximate result of the foregoing acts of theDefendants, the Plaintiffs have suffered, and are entitled to, monetary damages in
an amount not yet determined. The Plaintiffs are also entitled to their costs of suit
and interest.
17. The Defendants continuing infringement has inflicted and, unlessrestrained by this court, will continue to inflict great and irreparable harm upon the
Plaintiffs. The Plaintiffs have no adequate remedy at law. The Plaintiffs are
entitled to preliminary and permanent injunctions enjoining the Defendants from
engaging in further acts of infringement.
////
////
3See, e.g., Express Refill Cartridge 3 Pack Instructions, found at
http://www.21stcenturysmoke.com/v/vspfiles/images/38-115R.pdf (last visitedMarch 5, 2014).
4See, e.g., http://www.21stcenturysmoke.com/21st-Century-Smoke-
Universal-Battery-p/38-401.htm (last visited March 5, 2014).5See, e.g., http://www.21stcenturysmoke.com/How-21st-Century-E-
Cigarettes-Work-s/1822.htm (last visited March 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
7/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -6- CV14-1649
SECONDCAUSEOFACTION
(Infringement of U.S. Patent No. 8,375,957)
18. The Plaintiffs incorporate by reference the allegations contained inparagraphs 1-9 above.
19. Fontem Holdings is the owner of the entire right, title, and interest inand to United States Patent No. 8,375,957 (the 957 Patent) and Fontem Ventures
is the exclusive licensee of the 957 Patent. The 957 Patent was duly and legally
issued by the United States Patent Office on February 19, 2013 and is valid,
subsisting, and in full force and effect. A copy of the 957 Patent is attached to the
Complaint as Exhibit B.
20. The Plaintiffs are informed and believe that: The Defendants have hadknowledge of the 957 Patent, and of the Plaintiffs rights therein, at least as of
February 13, 2014. On that date, a Joint Status Report containing an assignment
document identifying Plaintiff Fontem Holdings as the owner of the 957 Patent
was filed in a related case.6 The Joint Status Report was reviewed and signed by
the Defendants counsel. The Defendants shall have additional knowledge of the
957 Patent as of the date of service for the present Complaint.21. The Plaintiffs are informed and believe that: The Defendants have
directly infringed the 957 Patent in violation of at least 35 U.S.C. 271(a) by,
themselves and/or through their agents, unlawfully and wrongfully making, using,
importing, offering to sell, and/or selling electronic cigarette products embodying
one or more of the inventions claimed in the 957 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
6SeeJoint Status Report filed February 13, 2014 (Dkt. No. 63, Exh. A) in
Ruyan Investment Holdings Limited v. Sottera, Inc., Case No. CV 12-05454 GAF(FFMx) (C.D. Cal.), which is consolidated for purposes of discovery with Case
Nos. CV 12-05455 GAF (FFMx), CV 12-05456 GAF (FFMx), CV 12-05462 GAF(FFMx), CV 12-05466 GAF (FFMx), CV 12-05468 GAF (FFMx), CV 12-05472GAF (FFMx), CV 12-05477 GAF (FFMx), CV 12-05482 GAF (FFMx), and CV12-06268 GAF (FFMx).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
8/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -7- CV14-1649
do so unless enjoined by this Court. Examples of electronic cigarette products that
directly infringe the 957 Patent include, but are not limited to, (1) 21st Century
Smoke Rechargeable Electronic Cigarettes as found in Electronic Cigarette Kits
such as the 21st Century Smoke Electronic Cigarette Super Kit Box (Super Kit),
the 21st Century Smoke Electronic Cigarette Express Kit Flip Top Box (Express
Kit - Flip Top), and the 21st Century Smoke Electronic Cigarette Express Kit
(Express Kit); (2) 21st Century Smoke Express Refill Electronic Cigarette
Cartridges for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; and (3)
21st Century Smoke Rechargeable Universal Batteries. Such products infringe at
least claims 1, 10, and 23 of the 957 Patent.
22. The Plaintiffs are informed and believe that: The Defendants havecontributed to the infringement of the 957 Patent in violation of at least 35 U.S.C.
271(c) by, themselves and/or through their agents, contributing to the direct
infringement of the 957 Patent by their customers by unlawfully and wrongfully
making, using, importing, offering to sell, and/or selling electronic cigarette
components having no substantially non-infringing use, which, when purchasedand/or used by their customers, result in direct infringement of one or more
embodiments of the inventions claimed in the 957 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette components
that have no substantial noninfringing uses and that contribute to the direct
infringement of the 957 Patent include, but are not limited to, (1) 21st Century
Smoke Express Refill Electronic Cigarette Cartridges (21st Century E-Cig
Cartridges) for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; and (2)
21st Century Smoke Rechargeable Universal Batteries (21st Century E-Cig
Batteries).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
9/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -8- CV14-1649
23. The Plaintiffs are informed and believe that: Having knowledge of the957 Patent, the Defendants have been aware that 21st Century E-Cig Cartridges
and 21st Century E-Cig Batteries, when purchased and/or used by their customers,
result in direct infringement of one or more embodiments of the inventions claimed
in the 957 Patent. The Defendants state on their website that 21st Century E-Cig
Cartridges are [c]ompatible with all rechargeable 21st Century Smoke batteries
and are designed for use with the 21st Century Smoke Express or Super Kit.7
The Defendants also instruct users to [s]crew new cartridge/atomizer onto battery
and [i]f battery has an atomizer already, [to] remove it then screw new
cartridge/atomizer onto battery.8 The Defendants also state on their website that
[t]he Universal Battery is a rechargeable battery that works with all 21st Century
Smoke atomizers, cartridges with atomizers (cartomizers) and chargers and can
be used as a backup or replacement for all 21st Century Smoke Kits.9 Moreover,
according to the Defendants website, [o]nce the components are put together, the
21st Century Smoke electronic cigarette physically resembles a traditional cigarette
in both width and length.10
As such, the Defendants know that 21st Century E-Cig
Cartridges and 21st Century E-Cig Batteries that are sold separately from theirElectronic Cigarette Kits have no substantial non-infringing uses other than to
provide users with the ability to assemble and use an electronic cigarette that
infringes at least claims 1, 10, and 23 of the 957 Patent, and therefore that they are
especially made or adapted for use in infringement of the 957 Patent.
7See, e.g., http://www.21stcenturysmoke.com/Express-Refill-Cartridge-3-
Pack-Regular-1-6-p/38-115r.htm (last visited March 5, 2014).8See, e.g., Express Refill Cartridge 3 Pack Instructions, found at
http://www.21stcenturysmoke.com/v/vspfiles/images/38-115R.pdf (last visitedMarch 5, 2014).
9See, e.g., http://www.21stcenturysmoke.com/21st-Century-Smoke-
Universal-Battery-p/38-401.htm (last visited March 5, 2014).10
See, e.g., http://www.21stcenturysmoke.com/How-21st-Century-E-Cigarettes-Work-s/1822.htm (last visited March 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
10/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -9- CV14-1649
24. As a direct and proximate result of the foregoing acts of theDefendants, the Plaintiffs have suffered, and are entitled to, monetary damages in
an amount not yet determined. The Plaintiffs are also entitled to their costs of suit
and interest.
25. The Defendants continuing infringement has inflicted and, unlessrestrained by this court, will continue to inflict great and irreparable harm upon the
Plaintiffs. The Plaintiffs have no adequate remedy at law. The Plaintiffs are
entitled to preliminary and permanent injunctions enjoining the Defendants from
engaging in further acts of infringement.
THIRDCAUSEOFACTION
(Infringement of U.S. Patent No. 8,393,331)
26. The Plaintiffs incorporate by reference the allegations contained inparagraphs 1-9 above.
27. Fontem Holdings is the owner of the entire right, title, and interest inand to United States Patent No. 8,393,331 (the 331 Patent) and Fontem Ventures
is the exclusive licensee of the 331 Patent. The 331 Patent was duly and legally
issued by the United States Patent Office on March 12, 2013 and is valid,subsisting, and in full force and effect. A copy of the 331 Patent is attached to the
Complaint as Exhibit C.
28. The Plaintiffs are informed and believe that: The Defendants have hadknowledge of the 331 Patent, and of the Plaintiffs rights therein, at least as of
February 13, 2014. On that date, a Joint Status Report containing an assignment
document identifying Plaintiff Fontem Holdings as the owner of the 331 Patent
was filed in a related case.11
The Joint Status Report was reviewed and signed by
11SeeJoint Status Report filed February 13, 2014 (Dkt. No. 63, Exh. A) in
Ruyan Investment Holdings Limited v. Sottera, Inc., Case No. CV 12-05454 GAF(FFMx) (C.D. Cal.), which is consolidated for purposes of discovery with Case
Nos. CV 12-05455 GAF (FFMx), CV 12-05456 GAF (FFMx), CV 12-05462 GAF(FFMx), CV 12-05466 GAF (FFMx), CV 12-05468 GAF (FFMx), CV 12-05472
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
11/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -10- CV14-1649
the Defendants counsel. The Defendants shall have additional knowledge of the
331 Patent as of the date of service for the present Complaint.
29. The Plaintiffs are informed and believe that: The Defendants havedirectly infringed the 331 Patent in violation of at least 35 U.S.C. 271(a) by,
themselves and/or through their agents, unlawfully and wrongfully making, using,
importing, offering to sell, and/or selling electronic cigarette products embodying
one or more of the inventions claimed in the 331 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette products that
directly infringe the 331 Patent include, but are not limited to, (1) 21st Century
Smoke Rechargeable Electronic Cigarettes as found in Electronic Cigarette Kits
such as the 21st Century Smoke Electronic Cigarette Super Kit Box (Super Kit),
the 21st Century Smoke Electronic Cigarette Express Kit Flip Top Box (Express
Kit - Flip Top), and the 21st Century Smoke Electronic Cigarette Express Kit
(Express Kit); (2) 21st Century Smoke Express Refill Electronic Cigarette
Cartridges for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; (3) 21stCentury Smoke Rechargeable Universal Batteries; (4) 21st Century Smoke Soft Tip
Disposable Electronic Cigarettes; and (5) 21st Century Flavored Mist Disposable
Electronic Cigarettes. Such products infringe at least claims 1 and 2 of the 331
Patent.
30. The Plaintiffs are informed and believe that: The Defendants havecontributed to the infringement of the 331 Patent in violation of at least 35 U.S.C.
271(c) by, themselves and/or through their agents, contributing to the direct
infringement of the 331 Patent by their customers by unlawfully and wrongfully
making, using, importing, offering to sell, and/or selling electronic cigarette
GAF (FFMx), CV 12-05477 GAF (FFMx), CV 12-05482 GAF (FFMx), and CV12-06268 GAF (FFMx).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
12/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -11- CV14-1649
components having no substantially non-infringing use, which, when purchased
and/or used by its customers, result in direct infringement of one or more
embodiments of the inventions claimed in the 331 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette components
that have no substantial noninfringing uses and that contribute to the direct
infringement of the 331 Patent include, but are not limited to, (1) 21st Century
Smoke Express Refill Electronic Cigarette Cartridges (21st Century E-Cig
Cartridges) for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; and (2)
21st Century Smoke Rechargeable Universal Batteries (21st Century E-Cig
Batteries).
31. The Plaintiffs are informed and believe that: Having knowledge of the331 Patent, the Defendants have been aware that 21st Century E-Cig Cartridges
and 21st Century E-Cig Batteries, when purchased and/or used by their customers,
result in direct infringement of one or more embodiments of the inventions claimed
in the 331 Patent. The Defendants state on their website that 21st Century E-CigCartridges are [c]ompatible with all rechargeable 21st Century Smoke batteries
and are designed for use with the 21st Century Smoke Express or Super Kit.12
The Defendants also instruct users to [s]crew new cartridge/atomizer onto battery
and [i]f battery has an atomizer already, [to] remove it then screw new
cartridge/atomizer onto battery.13
The Defendants also state on their website that
[t]he Universal Battery is a rechargeable battery that works with all 21st Century
Smoke atomizers, cartridges with atomizers (cartomizers) and chargers and can
12See, e.g., http://www.21stcenturysmoke.com/Express-Refill-Cartridge-3-
Pack-Regular-1-6-p/38-115r.htm (last visited March 5, 2014).13
See, e.g., Express Refill Cartridge 3 Pack Instructions, found athttp://www.21stcenturysmoke.com/v/vspfiles/images/38-115R.pdf (last visitedMarch 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
13/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -12- CV14-1649
be used as a backup or replacement for all 21st Century Smoke Kits.14
Moreover,
according to the Defendants website, [o]nce the components are put together, the
21st Century Smoke electronic cigarette physically resembles a traditional cigarette
in both width and length.15
As such, the Defendants know that 21st Century E-Cig
Cartridges and 21st Century E-Cig Batteries that are sold separately from their
Electronic Cigarette Kits have no substantial non-infringing uses other than to
provide users with the ability to assemble and use an electronic cigarette that
infringes at least at least claims 1 and 2 of the 331 Patent, and therefore that they
are especially made or adapted for use in infringement of the 331 Patent.
32. As a direct and proximate result of the foregoing acts of theDefendants, the Plaintiffs have suffered, and are entitled to, monetary damages in
an amount not yet determined. The Plaintiffs are also entitled to their costs of suit
and interest.
33. The Defendants continuing infringement has inflicted and, unlessrestrained by this court, will continue to inflict great and irreparable harm upon the
Plaintiffs. The Plaintiffs have no adequate remedy at law. The Plaintiffs are
entitled to preliminary and permanent injunctions enjoining the Defendants fromengaging in further acts of infringement.
FOURTHCAUSEOFACTION
(Infringement of U.S. Patent No. 8,490,628)
34. The Plaintiffs incorporate by reference the allegations contained inparagraphs 1-9 above.
35. Fontem Holdings is the owner of the entire right, title, and interest inand to United States Patent No. 8,490,628 (the 628 Patent) and Fontem Ventures
is the exclusive licensee of the 628 Patent. The 628 Patent was duly and legally
14See, e.g., http://www.21stcenturysmoke.com/21st-Century-Smoke-
Universal-Battery-p/38-401.htm (last visited March 5, 2014).15
See, e.g., http://www.21stcenturysmoke.com/How-21st-Century-E-Cigarettes-Work-s/1822.htm (last visited March 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
14/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -13- CV14-1649
issued by the United States Patent Office on July 23, 2013 and is valid, subsisting,
and in full force and effect. A copy of the 628 Patent is attached to the Complaint
as Exhibit D.
36. The Plaintiffs are informed and believe that: The Defendants have hadknowledge of the 628 Patent, and of the Plaintiffs rights therein, at least as of
February 13, 2014. On that date, a Joint Status Report containing an assignment
document identifying Plaintiff Fontem Holdings as the owner of the 628 Patent
was filed in a related case.16
The Joint Status Report was reviewed and signed by
the Defendants counsel. The Defendants shall have additional knowledge of the
628 Patent as of the date of service for the present Complaint.
37. The Plaintiffs are informed and believe that: The Defendants havedirectly infringed the 628 Patent in violation of at least 35 U.S.C. 271(a) by,
themselves and/or through their agents, unlawfully and wrongfully making, using,
importing, offering to sell, and/or selling electronic cigarette products embodying
one or more of the inventions claimed in the 628 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette products thatdirectly infringe the 628 Patent include, but are not limited to, (1) 21st Century
Smoke Rechargeable Electronic Cigarettes as found in Electronic Cigarette Kits
such as the 21st Century Smoke Electronic Cigarette Super Kit Box (Super Kit),
the 21st Century Smoke Electronic Cigarette Express Kit Flip Top Box (Express
Kit - Flip Top), and the 21st Century Smoke Electronic Cigarette Express Kit
(Express Kit); (2) 21st Century Smoke Express Refill Electronic Cigarette
16SeeJoint Status Report filed February 13, 2014 (Dkt. No. 63, Exh. A) in
Ruyan Investment Holdings Limited v. Sottera, Inc., Case No. CV 12-05454 GAF(FFMx) (C.D. Cal.), which is consolidated for purposes of discovery with Case
Nos. CV 12-05455 GAF (FFMx), CV 12-05456 GAF (FFMx), CV 12-05462 GAF(FFMx), CV 12-05466 GAF (FFMx), CV 12-05468 GAF (FFMx), CV 12-05472GAF (FFMx), CV 12-05477 GAF (FFMx), CV 12-05482 GAF (FFMx), and CV12-06268 GAF (FFMx).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
15/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -14- CV14-1649
Cartridges for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; (3) 21st
Century Smoke Rechargeable Universal Batteries; (4) 21st Century Smoke Soft Tip
Disposable Electronic Cigarettes; and (5) 21st Century Flavored Mist Disposable
Electronic Cigarettes. Such products infringe at least claims 1, 7, and 8 of the 628
Patent.
38. The Plaintiffs are informed and believe that: The Defendants havecontributed to the infringement of the 628 Patent in violation of at least 35 U.S.C.
271(c) by, themselves and/or through their agents, contributing to the direct
infringement of the 628 Patent by their customers by unlawfully and wrongfully
making, using, importing, offering to sell, and/or selling electronic cigarette
components having no substantially non-infringing use, which, when purchased
and/or used by their customers, result in direct infringement of one or more
embodiments of the inventions claimed in the 628 Patent, within and/or from the
United States without permission or license from the Plaintiffs, and will continue to
do so unless enjoined by this Court. Examples of electronic cigarette components
that have no substantial noninfringing uses and that contribute to the directinfringement of the 628 Patent include, but are not limited to, (1) 21st Century
Smoke Express Refill Electronic Cigarette Cartridges (21st Century E-Cig
Cartridges) for use with rechargeable 21st Century Smoke Batteries purchased
separately or as part of a Super Kit, Express Kit - Flip Top, or Express Kit; and (2)
21st Century Smoke Rechargeable Universal Batteries (21st Century E-Cig
Batteries).
39. The Plaintiffs are informed and believe that: Having knowledge of the628 Patent, the Defendants have been aware that 21st Century E-Cig Cartridges
and 21st Century E-Cig Batteries, when purchased and/or used by their customers,
result in direct infringement of one or more embodiments of the inventions claimed
in the 628 Patent. The Defendants state on their website that 21st Century E-Cig
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
16/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -15- CV14-1649
Cartridges are [c]ompatible with all rechargeable 21st Century Smoke batteries
and are designed for use with the 21st Century Smoke Express or Super Kit.17
The Defendants also instruct users to [s]crew new cartridge/atomizer onto battery
and [i]f battery has an atomizer already, [to] remove it then screw new
cartridge/atomizer onto battery.18
The Defendants also state on their website that
[t]he Universal Battery is a rechargeable battery that works with all 21st Century
Smoke atomizers, cartridges with atomizers (cartomizers) and chargers and can
be used as a backup or replacement for all 21st Century Smoke Kits.19
Moreover,
according to the Defendants website, [o]nce the components are put together, the
21st Century Smoke electronic cigarette physically resembles a traditional cigarette
in both width and length.20 As such, the Defendants know that 21st Century E-Cig
Cartridges and 21st Century E-Cig Batteries that are sold separately from their
Electronic Cigarette Kits have no substantial non-infringing uses other than to
provide users with the ability to assemble and use an electronic cigarette that
infringes at least claims 1, 7, and 8 of the 628 Patent, and therefore that they are
especially made or adapted for use in infringement of the 628 Patent.
40. As a direct and proximate result of the foregoing acts of theDefendants, the Plaintiffs have suffered, and are entitled to, monetary damages in
an amount not yet determined. The Plaintiffs are also entitled to their costs of suit
and interest.
41. The Defendants continuing infringement has inflicted and, unlessrestrained by this court, will continue to inflict great and irreparable harm upon the
17See, e.g., http://www.21stcenturysmoke.com/Express-Refill-Cartridge-3-
Pack-Regular-1-6-p/38-115r.htm (last visited March 5, 2014).18
See, e.g., Express Refill Cartridge 3 Pack Instructions, found athttp://www.21stcenturysmoke.com/v/vspfiles/images/38-115R.pdf (last visitedMarch 5, 2014).
19See, e.g., http://www.21stcenturysmoke.com/21st-Century-Smoke-
Universal-Battery-p/38-401.htm (last visited March 5, 2014).20
See, e.g., http://www.21stcenturysmoke.com/How-21st-Century-E-Cigarettes-Work-s/1822.htm (last visited March 5, 2014).
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
17/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
Complaint For Patent Infringement
111971-0003.0003/LEGAL29626680.1 -16- CV14-1649
Plaintiffs. The Plaintiffs have no adequate remedy at law. The Plaintiffs are
entitled to preliminary and permanent injunctions enjoining the Defendants from
engaging in further acts of infringement.
PRAYERFORRELIEF
The Plaintiffs request entry of judgment that:
A. The 742 Patent, the 957 Patent, the 331 Patent, and the 628 Patentare valid and enforceable;
B. The Defendants are liable for infringement of the 742 Patent, the 957Patent, the 331 Patent, and the 628 Patent under at least the provisions of 35
U.S.C. 271(a) and/or (c);
C. The Defendants and all affiliates, subsidiaries, officers, employees,agents, representatives, licensees, successors, assigns, and all those acting in
concert with, or for or on behalf of the Defendants, shall be enjoined from
infringing the 742 Patent, the 957 Patent, the 331 Patent, and the 628 Patent;
D. The Defendants shall pay damages to the Plaintiffs resulting fromDefendants patent infringement pursuant to 35 U.S.C. 284;
E. The Plaintiffs be entitled to prejudgment interest and post-judgmentinterest on the damages; and
F. The Plaintiffs be awarded such other and further relief, in law or inequity, as the Court deems just, equitable or appropriate.
DATED: March 5, 2014 Respectfully submitted,
PERKINS COIELLP
By: /s/Michael J. WiseMichael J. Wise
Attorneys for PlaintiffFONTEM VENTURES B.V. andFONTEM HOLDINGS 1 B.V.
-
8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.
18/18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
111971-0003 0003/LEGAL29626680 1 -17- CV14-1649
DEMAND FOR JURY TRIAL
Plaintiffs Fontem Ventures and Fontem Holdings hereby demand a trial by
jury of all issues triable by a jury.
DATED: March 5, 2014 PERKINS COIELLP
By:/s/Michael J. WiseMichael J. Wise
Attorneys for PlaintiffFONTEM VENTURES B.V. andFONTEM HOLDINGS 1 B.V.