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Ruyan Investment Holdings Ltd. v. Sottera, Inc.

United States District Court, C.D. California

January 8, 2020

RUYAN INVESTMENT HOLDINGS LIMITED, Plaintiff,
v.
SOTTERA, INC., et al., Defendants.

          CONSENT JUDGMENT AND PERMANENT INJUNCTION

         Fontem Holdings 1 B.V. (“Fontem Holdings”) and Fontem Ventures B.V. (Fontem Ventures”) (collectively, the “Fontem entities”), and Defendant, Nicotek LLC (collectively, the “Parties”), having considered the facts and applicable law, and having agreed to the entry of this Stipulated Consent Judgment and Permanent Injunction, it is found, adjudged, and decreed as follows:

         FINDINGS OF FACTS

         1. On June 22, 2012, the original plaintiff, Ruyan Investment Holdings Limited (“Ruyan”), filed this action, alleging that Defendant Nicotek LLC (k/n/a D&T Holdings III, LLC) (collectively, “Nicotek”) makes, uses, imports, offers to sell, and sells electronic cigarettes products that infringe U.S. Patent No. 8, 156, 944, and seeking a permanent injunction. See [Dkt. 1, CV 12-05477]. The accused products identified in the complaint are: “(1) the METRO Rechargeable Cigarette, alone and as found in the METRO Electronic Cigarette Platinum Kits and the METRO Electronic Cigarette Standard Starter Kits; and (2) the METRO Disposable Electronic Cigarette, ” (collectively, “Accused Products”). [Id., ¶ 9.]

         2. On August 17, 2012, Nicotek answered the complaint and filed declaratory judgment counterclaims for non-infringement and invalidity. See [Dkt. 12, CV 12-5477].

         3. On December 19, 2012, the Court consolidated this action for discovery purposes with other cases filed by Ruyan asserting infringement of the '944 patent. See [Dkt 17, CV 12-5477].

         4. After December 19, 2012, all case filings and Court orders were entered on the docket in the lead matter: Ruyan Investment Holdings Limited v. Sottera, Inc., No. 12-cv-05454-GAF-FFM (C.D. Cal.).

         5. On February 25, 2013, the Court administratively stayed this action pending reexamination of the '944 patent by the United States Patent and Trademark Office (“PTO”). See [Dkt. 46]. During the pendency of the stay:

(i) Ruyan assigned all right, title, and interest in and to the '944 patent to Fontem Holdings (including all causes of action and enforcement rights and the right to be substituted into this action). See [Dkt. 63], [63-1, Exs. A and D];
(ii) Fontem Holdings granted to Fontem Ventures an exclusive license to the '944 patent, including the right to sue for past, present and future infringement; and
(iii) Nicotek sold all its assets, stopped selling the Accused Products, and stopped conducting business in the electronic cigarette industry.

         6. The Patent Trial and Appeals Board (“PTAB”) stayed the '944 patent reexamination, sua sponte, in lieu of a separate inter partes review (“IPR”) instituted against the '944 Patent.

         7. Upon conclusion of the IPR, the PTAB determined that certain claims of the '944 Patent were unpatentable. See [Dkt. 78].

         8. On January 23, 2019, the PTO concluded the reexamination of the '944 patent, confirming the patentability of other claims.

         9. The Fontem entities are the real parties in interest based on the assignment from Ruyan, and they have reached an agreement with Nicotek to resolve the disputed issues with ...


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