16
Nov
By John Presper

On November 12, 2021, ALJ MaryJoan McNamara issued the public version of her October 14, 2021 initial determination (“ID”) granting Complainant Juul Labs Inc.’s (“JLI”) motion for summary determination that the defaulting respondents in Certain Vaporizer Cartridges and Components Thereof (Inv. No. 337-TA-1211) violated section 337.

By way of background, this investigation was instituted on August 10, 2020 based on a complaint by JLI alleging violations of section 337 by 49 respondents in the importation and/or sale of certain vaporizer cartridges and components thereof that infringe U.S. Design Patent No. D842,536 (“the ’D536 patent”); U.S. Design Patent No. D858,870 (“the ’D870 patent”); U.S. Design Patent No. D858,869 (“the ’D869 patent”); and U.S. Design Patent No. D858,868 (“the ’D868 patent”).  ALJ McNamara found 18 respondents in default in Order Nos. 35, 62, 63, and 64.

According to the ID, JLI requested summary determination that the 18 defaulting respondents violated section 337, that the technical and economic prongs of the domestic industry requirement have been satisfied, and that the ALJ issue a recommended determination for entry of a general exclusion order (“GEO”) and cease-and-desist orders (“CDO”) against 12 defaulting respondents located in the U.S.  ALJ McNamara granted JLI’s motion and made the following findings of fact/rulings of law:

  1. JLI is a privately held corporation organized and existing under the laws of the state of Delaware, with its principal place of business at 1000 F Street, Washington, D.C. 20004.

  1. JLI has satisfied the requirements for subject matter jurisdiction because JLI has asserted and proven by a preponderance of evidence that the defaulting respondents have violated 19 U.S.C. §1337(a)(1)(B).

  1. JLI has satisfied the requirements for in rem jurisdiction pursuant to Section 337(a)(1)(B), which applies to the “[t]he importation into the United States, the sale for importation, or the sale within the United States after importation” of articles that infringe a valid and enforceable United States patent,” because JLI has proven that each of the defaulting respondents imports at least one accused product into the United States and sells for importation and/or after importation at least one accused product.

  1. JLI has proven by a preponderance of evidence that the accused products infringe each of the sole claims of the asserted patents in this investigation.

  1. JLI has proven under Section 337(a)(1)(B)(i) that each of the defaulting respondents has imported, sold for importation, or sold within the United States after importation, at least one item each of an infringing product or article.

  1. JLI has proven that the domestic industry product practices each of the sole claims of the asserted patents and that it satisfies the technical prong of the domestic industry requirement.

  1. JLI has proven that it satisfies the economic prong of the domestic industry requirement under 19 U.S.C. § 1337 (a)(3)(A) and (B).

  1. There is a widespread pattern of unauthorized use of the asserted patents such that a GEO is necessary to prevent circumvention of the relief granted in this case. This includes the activities of the 18 defaulting respondents as well as numerous other foreign companies whose activities plainly infringe the asserted patents and whose identities are difficult, if not impossible, to determine.

  1. JLI requests a bond in the amount of 100%.  This is the recommendation of this decision because no other measure will satisfactorily protect JLI from the harm by the defaulting respondents and the voluminous number of companies that are misusing JLI’s patents, copying them, and importing and/or selling them in the United States.
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