fontem ventures et. al. v. cb distributors et. al

8/12/2019 Fontem Ventures et. al. v. CB Distributors et. al.

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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


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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,


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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).


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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


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).


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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).


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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


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,









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111971-0003.0003/LEGAL29626680.1 -7- CV14-1649








Cartridges for use with rechargeable 21st Century Smoke Batteries purchased


21st Century Smoke Rechargeable Universal Batteries. Such products infringe at

least claims 1, 10, and 23 of the 957 Patent.





components having no substantially non-infringing use, which, when purchasedand/or used by their customers, result in direct infringement of one or more










Batteries).


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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








cartridge/atomizer onto battery.8 The Defendants also state on their website that



be used as a backup or replacement for all 21st Century Smoke Kits.9 Moreover,



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


infringes at least claims 1, 10, and 23 of the 957 Patent, and therefore that they are



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).


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).


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111971-0003.0003/LEGAL29626680.1 -9- CV14-1649



and interest.





THIRDCAUSEOFACTION





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.




was filed in a related case.11

The Joint Status Report was reviewed and signed by



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


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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


Electronic Cigarettes. Such products infringe at least claims 1 and 2 of the 331

Patent.





GAF (FFMx), CV 12-05477 GAF (FFMx), CV 12-05482 GAF (FFMx), and CV12-06268 GAF (FFMx).


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and/or used by its customers, result in direct infringement of one or more










Batteries).




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




cartridge/atomizer onto battery.13

The Defendants also state on their website that




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).


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111971-0003.0003/LEGAL29626680.1 -12- CV14-1649

be used as a backup or replacement for all 21st Century Smoke Kits.14

Moreover,



in both width and length.15

As such, the Defendants know that 21st Century E-Cig




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.



and interest.



entitled to preliminary and permanent injunctions enjoining the Defendants fromengaging in further acts of infringement.

FOURTHCAUSEOFACTION









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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.




was filed in a related case.16

The Joint Status Report was reviewed and signed by








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










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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


Electronic Cigarettes. Such products infringe at least claims 1, 7, and 8 of the 628

Patent.






and/or used by their customers, result in direct infringement of one or more




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





Batteries).






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cartridge/atomizer onto battery.18

The Defendants also state on their website that



be used as a backup or replacement for all 21st Century Smoke Kits.19

Moreover,



in both width and length.20 As such, the Defendants know that 21st Century E-Cig




infringes at least claims 1, 7, and 8 of the 628 Patent, and therefore that they are




and interest.



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).





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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.


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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.

fontem ventures et. al. v. cb distributors et. al

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