Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA458786
`ESTTA Tracking number:
`02/27/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054976
`Defendant
`VDF FutureCeuticals, Inc.
`
`VDF FUTURECEUTICALS INC
`819 NORTH DIXIE HIGHWAY
`MOMENCE, IL 60954
`UNITED STATES
`Other Motions/Papers
`Sharon D. Armstrong
`sbaird@winthrop.com, sarmstrong@winthrop.com, jrezac@winthrop.com,
`trademark@winthrop.com
`/sda/
`02/27/2012
`Response to Motion to Suspend and Certificate of Service.pdf ( 9 pages
`)(433588 bytes )
`VDF Exhibit1 Response to Motion to Suspend.pdf ( 54 pages )(4211832 bytes )
`VDF Exhibit2 Response to Motion to Suspend.pdf ( 29 pages )(85490 bytes )
`VDF Exhibit3 Response to Motion to Suspend.pdf ( 46 pages )(2194033 bytes )
`VDF Exhibit4 Response to Motion to Suspend.pdf ( 22 pages )(63832 bytes )
`VDF Exhibit5 Response to Motion to Suspend.pdf ( 32 pages )(85572 bytes )
`VDF Exhibit6 Response to Motion to Suspend.pdf ( 7 pages )(38977 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Sandwich Isles Trading Co., Inc.
`
`Petitioner,
`
`v.
`
`VDF FutureCeuticals, Inc.
`Respondent
`
`)
`
`5
`
`)
`
`I
`I
`
`MM
`
`Cancellation No. 92054976
`
`RESPONSE TO SANDWICH ISLES TRADING CO.’S MOTION TO SUSPEND
`
`Pursuant to TBMP 510 and 37 C.F.R. 2.117, Respondent VDF FutureCeuticals, Inc.
`
`(“VDF”) submits this response to Petitioner Sandwich Isles Trading Co.’s (“SITC”) Motion to
`
`Suspend. SITC filed its Motion to Suspend this proceeding pending the outcome of a civil action
`
`between the parties in the United States District Court for the District of Hawaii, captioned VDF
`
`FutureCeuticals, Inc. V. Sandwich Isles Trading Co. Inc., CV ll-00288 ACK/RLP (USDC,
`
`District of Hawaii) (the “Hawaii Civil Action”).
`
`SITC has filed its Amended Counterclaim in the Hawaii Civil Action and a Petition to
`
`Cancel (“Cancellation”) with the Trademark Trial and Appeal Board (“Board”), both of which
`
`cover identical claims for invalidation and cancellation of VDF’s nine (9) registrations for
`
`COFFEEBERRY® and COFFEEBERRY FORTE®.
`
`The Hawaii Civil Action has been
`
`administratively closed and stayed pending reexamination of the patents at issue in the litigation,
`
`and SITC seeks suspension of this Cancellation as well. Because the District Court will not
`
`address SITC’s Amended Counterclaim and the Court’s jurisdiction to hear SITC’s trademark
`
`counterclaims in the near future due to the stay, SITC’s Motion to Suspend is premature, and
`
`suspension of the Cancellation will severely prejudice VDF. VDF requests that the Board, in its
`
`discretion, deny the Motion to Suspend.
`
`

`
`I.
`
`BACKGROUND
`
`VDF filed its Complaint in the District of Hawaii on April 29, 2011, in which it set forth
`
`claims for patent infringement. A copy of the Complaint is attached hereto as Exhibit 1. SITC
`
`filed its original Counterclaim on June 14, 2011 seeking a declaratory judgment of non-
`
`infringement of VDF’s patents, invalidity of VDF’s patents, and invalidity of VDF’s trademarks
`
`on grounds of descriptiveness and/or genericness,
`
`as well
`
`as cancellation of VDF’s
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`COFFEEBERRY® registrations, and various state law claims. A copy of SITC’s original
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`Counterclaim is attached hereto as Exhibit 2. SITC argued that a demand letter sent by VDF to
`
`SITC’s licensee XOWii regarding XOWii’s use of the “KonaRed Coffee Cherry” mark and the
`
`terms “coffee berry” in connection with its products supported the “case or controversy”
`
`requirement for proper declaratory judgment jurisdiction. Li. at 11 35.
`
`On July 19, 2011, VDF filed a Motion to Dismiss in Part Defendant’s Counterclaim,
`
`including SlTC’s declaratory judgment of the invalidity of VDF’s trademarks on the grounds
`
`that, even taking all of SITC’s allegations as true, SITC had failed to allege a “case or
`
`controversy” required to confer declaratory judgment jurisdiction on the Court. Medlmmune,
`
`Inc. v. Genentech, Inc., 127 S. Ct. 764, 771 (2007) (no jurisdiction over a declaratory judgment
`
`claim unless, “under all the circumstances,
`
`there is a substantial controversy, between parties
`
`9? 66
`
`having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
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`declaratory judgment”). A copy of VDF’s Memorandum in Support of Motion to Dismiss is
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`attached hereto as Exhibit 3. On November 3, 2011, SITC filed a Motion to Stay the Hawaii
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`Civil Action pending the outcome of requests filed by SITC with the USPTO for reexamination
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`of three patents-in-suit. A copy of SlTC’s Motion to Stay Pending Reexamination and
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`Memorandum in Support of Motion is attached hereto as Exhibit 4.
`
`

`
`On December 27, 2011, the Court granted VDF’s Motion to Dismiss in Part Defendant’s
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`Counterclaim without prejudice as it pertained to SITC’s declaratory judgment of the invalidity
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`of VDF’s trademarks and its requested relief for cancellation of VDF’s registrations. A copy of
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`the Court’s Order Granting in Part and Denying in Part Plaintiffs Motion to Dismiss in Part
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`Defendant’s Counterclaim is attached hereto as Exhibit 5. The Court stated that SlTC’s
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`Counterclaim did not “reflect any threat of action against Sandwich Isles based on VDF’s
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`trademarks that might give rise to a reasonable apprehension of liability.” _I__(L at 25. Specifically,
`
`the Court noted that SlTC’s reliance on a single letter sent by VDF to one of SITC’s licensees
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`was insufficient to create the required “case or controversy” for declaratory judgment jurisdiction
`
`and that SITC’s Counterclaim contained “no allegations that Sandwich Isles itself has ever used,
`
`or has any intention to use, the phrase ‘coffee berry’ in selling or marketing its products.” I_d.
`
`On the same day, the Court granted SlTC’s Motion to Stay. A copy of the Court’s Order
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`Staying Proceedings and Administratively Closing the Case is attached hereto as Exhibit 6. The
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`Court ordered that the lawsuit he stayed pending the reexamination of the patents by the USPTO
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`and administratively closed the case, prohibiting any further activity with an exception for the
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`filing of SITC’s Amended Counterclaim and VDF’s response thereto.
`
`1_d_. at 5-6. The Court
`
`further ordered that it will not enter any decision on SITC’s Amended Counterclaim until the
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`stay is lified. Li. at 6. SITC also filed its Petition to Cancel that day.
`
`On January 26, 2012, SITC filed its First Amended Counterclaim (“Amended
`
`Counterclaim”) against VDF, reasserting its claims — identical
`
`to that filed in the original
`
`Counterclaim - for declaratory judgment of the invalidity of VDF’s registrations and seeking
`
`cancellation of the same. See Petition to Cancel, Exhibit A.
`
`In addition to alleging facts
`
`regarding the letter that VDF sent to SITC’s licensee XOWii, SITC also alleged facts regarding a
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`

`
`demand letter that VDF sent to SITC in May 2009 regarding SITC’s then-pending — and now-
`
`abandoned — federal trademark application for the mark HAWAII COFFEE CHERRY, Ser. No.
`
`77/603,076. Li. at 73.
`
`On February 6, 2012, SITC filed a motion to suspend the Cancellation on the grounds
`
`that the outcome of the Hawaii Civil Action may have a bearing on the Cancellation.
`
`II.
`
`ARGUMENT
`
`The power of the Board to suspend an opposition or cancellation pending before it is
`
`discretionary. TBMP 510.02(a); Trademark Rule 2.117 (proceedings before the Board may be
`
`suspended until final determination of the civil action). While “it is generally the Board’s policy
`
`to suspend when the parties are engaged in such a civil action...suspension is not the necessary
`
`result in all cases.” Boyds Collection, Ltd. v. Herrington & C0,, 65 U.S.P.Q.2d 2017, 2003 WL
`
`152427, *2 (TTAB 2003).
`
`In the present action, suspension is neither necessary nor appropriate. SITC’s Motion to
`
`Suspend was filed solely to cause delay of these proceedings and to postpone resolution of
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`VDF’s rights in its nine (9) registrations incorporating the COFFEEBERRY® mark. SITC’s
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`Motion should be denied because Applicant will be severely prejudiced by the continued delay
`
`of resolution of its rights in the COFFEEBERRY® registrations.
`
`First, SITC filed its Motion to Suspend with full knowledge that the Hawaii Civil Action
`
`will likely not be resolved for years. On average, patent reexamination at the USPTO alone
`
`takes over two years. Biomet Biologics, LLC v. Bio Rich Medical, Inc., Case No. SACV 10-1582
`
`DOC (PJWX), *5 (C.D. Cal., Sept. 26, 2011)
`
`(“The PTO’s own statistics show that
`
`reexamination proceedings, on average, take over two years to complete”). As the Hawaii Civil
`
`Action is administratively closed — save for SlTC’s filing of its Amended Complaint and VDF’s
`
`

`
`responsive pleading thereto — the Court will likely not make any decision regarding the validity
`
`of VDF’s marks for at least two years.
`
`Deferment of resolution regarding the validity of VDF’s registrations will irreparably
`
`harm VDF in its ability to protect and police its mark. Of VDF’s nine (9) registrations
`
`incorporating the COFFEEBERRY® mark, seven (7) have or will be eligible for filing Section 8
`
`and 15 declarations of continuing use and incontestability — U.S. Reg. Nos. 3,420,510;
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`3,155,232; 3,155,231; 3,155,230; 3,160,267; 3,163,412; and 3,165,945 — between the date that
`
`SITC filed its original Counterclaim and 2014. SITC has curiously brought two actions to
`
`invalidate and cancel VDF’s trademark registration but now wishes to freeze any and all action
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`on its claims for the present and near future, all to the detriment of VDF.
`
`Second, suspension is inappropriate where the District Court has not confirmed that it has
`
`jurisdiction to hear SITC’s trademark claims. SITC filed its Petition to Cancel the same day it
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`learned that the District Court did not have jurisdiction to hear its declaratory judgment claim
`
`regarding the invalidity of VDF’s trademarks as alleged in its original Counterclaim. SITC then
`
`filed its Motion to Suspend knowing that, due to the administrative closure of the case, the
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`District Court will not determine whether SITC’s new allegations support jurisdiction over
`
`SITC’s identical trademark claim and request for cancellation of VDF’s trademarks for what is
`
`likely to be a few years. While “it is generally the Board’s policy to suspend when the parties
`
`are engaged in such a civil action,” here the parties are not actively engaged in a civil action, as
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`the Court has not ruled and will not rule on whether it will hear SlTC’s trademark claims until
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`the patents are reexamined, likely in over two years. Boyds Collection, 2003 WL 152427 at *2.
`
`In addition, VDF filed its Partial Motion to Dismiss the Amended Counterclaim on
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`February 27, 2012 on grounds that (1) SITC has not alleged facts sufficient to confer declaratory
`
`

`
`judgment jurisdiction on the District Court and (2) the determination of the validity of VDF’s
`
`marks should be made by the Board. VDF expects to prevail on this motion, but the Court will
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`not rule on this motion until the case is administratively reopened.
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`In light of these facts, SITC’s
`
`Motion to Suspend is premature.
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`Finally, SITC will not be prejudiced by maintaining adjudication of this case with the
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`Board. As an initial matter, SITC admits that its claims regarding VDF’s trademarks in the
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`Hawaii Civil Action and the Cancellation are identical. Pet. to Cancel at 4 (“In the Hawaii Civil
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`Action, at Count V of the Amended Counterclaim, pursuant to 15 U.S.C. § 1119, SITC seeks an
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`order from the Court cancelling the VDF Registrations on these grounds — just as SITC asserts in
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`this cancellation proceeding.
`
`In both the Hawaii Civil Action and this Board proceeding, SITC
`
`contends that Respondent’s ‘COFFEEBERRY’ Mark is at least descriptive as to Respondent’s
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`goods and, therefore, the Registrations must be cancelled”). As the claims in front of the
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`District Court are no more and no less than what is in front of the Board, no harm would come to
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`SITC by adjudication of SITC’s claims by the Board.
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`Further, as SITC’s has limited its Amended Counterclaim to the validity of VDF’s
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`COFFEEBERRY® registrations and cancellation thereto — at no time has SITC pled a claim for
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`non-infringement of VDF’s COFFEEBERRY® marks ~ they should be determined by the Board
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`rather than by the Court. “Congress has confided the registration of trade-marks to the Patent
`
`Office of the United States. The courts of the United States have no jurisdiction over registration
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`proceedings except that appellate jurisdiction given then by the Trade-Mark Act.” Homemakers,
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`Inc. v. Chicago Home for the Friendless, 313 F.Supp. 1087, 1088 (N.D.
`
`Ill. 1970). A
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`cancellation to invalidate a party’s mark presents “the right of the party to have its trade-mark
`
`registered,” and therefore should properly be brought to the Board before resorting to the courts.
`
`

`
`Li. Only after the Board has determined a party’s right to registration may a disappointed litigant
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`appeal
`
`the Board’s decision for review; seeking initial
`
`review from the courts on the
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`registrability of a mark “short-cut[s]” the appropriate administrative process put into place by the
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`Lanham Act. 6 J.Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:55
`
`(4th ed.
`
`l996) (a party that “has an opportunity to challenge a federal trademark registration
`
`should not be allowed to short-cut the administrative process by raising that challenge in the
`
`federal courts by way of declaratory judgment. If that is the sole basis of a claim for declaratory
`
`judgment,
`
`the court should dismiss the case and relegate the party to the administrative
`
`process.”) As the sole basis of SITC’s claim for declaratory relief in connection with VDF’s
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`trademarks is its invalidity claim — a direct challenge to the registrability of VDF’s
`
`COFFEEBERRY® trademarks — this claim and SITC’s requested relief of cancellation belong
`
`squarely with the TTAB. See also Wham-0, Inc. v. Manley Toys, Ltd., 2009 WL 6361387 *3, 92
`
`U.S.P.Q.2d 1750 (C.D. Cal. 2009) (“Although federal courts may determine the validity of
`
`trademark registrations that are otherwise before them, e.g., in an infringement dispute, the
`
`courts do not have ‘jurisdiction under the Declaratory Judgment Act to determine the validity of
`
`[a] trademark where there is no issue of infringement”).
`
`A close review of the pleadings filed in the Hawaii Civil Action reveals that the Board is
`
`the appropriate body to hear SITC’s claims and that suspension of the Cancellation will prejudice
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`VDF. Combined with SITC’s desire effectively to freeze any action on its validity claim and
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`thereby to frustrate VDF’s ability to protect and police its marks appropriately, consideration of
`
`the balance of equities confirms that SITC’s claims should be heard by the Board. Therefore,
`
`VDF respectfully requests that the Board exercise its discretion to deny SITC’s Motion to
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`Suspend.
`
`

`
`Respectfully submitted,
`
`WINTHROP & WEINSTINE, P.A.
`
`
`
`
`
`'~
`
`:* : {;/~f
`
`
`tephen R. Baird
`
`Sharon D. Armstrong
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`
`Attorneys for Respondent
`VDF FutureCeutica1s, Inc.
`
`6700430v2
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration Nos.: 3,165,945 issued October 31, 2006;
`3,155,232 issued October 10, 2006;
`3,420,510 issued April 29, 2008;
`3,643,304 issued June 23, 2009;
`
`3,646,701 issued June 30, 2009;
`3,163,412 issued October 24, 2006;
`3,155,230 issued October 10, 2006;
`3,155,231 issued October 10, 2006; and
`
`3,160,267 issued October 17, 2006
`For the marks: COFFEEBERRY; COFFEEBERRY & Design, and COFFEEBERRY FORTE
`
`Sandwich Isles Trading Co., Inc.,
`
`Petitioner,
`
`V.
`
`VDF FutureCeutica1s, Inc.,
`
`Registrant.
`
`&/%%$/\—/\/\./%/\I‘~/
`
`Cancellation No. 92054976
`
`CERTIFICATE OF SERVICE BY FIRST CLASS MAIL
`
`Sharon D. Armstrong declares that on the 27th day of February, 2012, she mailed by United
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`States mail, first class postage thereon prepaid, a true and correct copy of:
`
`1.
`
`Response to Sandwich Isles Trading Co.’s Motion to Suspend
`
`in the above-captioned action to the following address identified in the TTABVUE database to-
`
`wit:
`
`Martin E Hsia
`
`CADES SCHUTTE LLP
`
`1000 Bishop Street, 12th Floor
`Honolulu, Hi 96813
`
`6703190v1
`
`/jSharon D. Armstrong
`
`

`
`EXHIBIT 1
`
`m*%%%°g:?§ £§£M.
`
`'
`
`
`
`MCCORRISTON MILLER MUKAI MACKINNON LLP
`
`ROBERT G. KLEIN
`
`#l 192-0
`
`klein m4law.com
`
`Five Waterfront Plaza, 4th Floor
`
`500 Ala Moana Boulevard
`
`Honolulu, Hawai‘i 96813
`
`Tel. No.:
`Fax No.:
`
`(808) 529-7300
`(808) 524-8293
`
`SIDLEY AUSTIN LLP
`
`J. RANDAL WEXLER (Pro Hac Vice Motion to be filed)
`jwexler@sidley.c.om
`One South Dearborn St
`
`Chicago, Illinois 60603-2302
`Tel. No.:
`(312) 853-7000
`Fax. No.: (312)853-7036
`
`FISH & ASSOCIATES, PC
`
`ROBERT D. FISH
`rfish
`fishi
`law.com
`
`(Pro Hac Vice Motion to be filed)
`
`(Pro Hac Vice Motion to be filed)
`
`MEI TSANG
`mtsang@f1shiplaw.com
`JOSEPH A. ANDELIN (Pro Hac Vice Motion to be filed)
`jandelin@fishiplaw.com
`2603 Main Street, Suite 1000
`
`Irvine, California 92614-4271
`
`Tel. No.:
`Fax No.:
`
`(949) 943-8300
`(949) 943-8358
`
`Attorneys for Plaintiff
`VDF FUTURECEUTICALS, INC.
`
`59879/246615.!
`
`A-1-me Copy 5 -
`SUE BEITIA
`Clerk. United States Dime;
`Cou
`istrict
`W if
`By
`7.
`
`Deputy
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF HAWAI‘I
`
`CIVIL NO.€fi”
`
`ii
`
`if Q E
`
`I A
`
`
`COMPLAINT; EXHIBITS “A” — “F”; E I?
`
`CORPORATE DISCLOSURE
`
`STATEMENT; DEMAND FOR JURY
`TRIAL; SUMMONS
`
`) ) ) 3 )
`
`) ) ) )
`
`) )
`
`VDF FUTURECEUTICALS, INC.,
`
`Plaintiff,
`
`vs.
`
`SANDWICH ISLES TRADING CO.
`
`INC., D/B/A KONA RED, INC. AND
`JOHN DOES 1-10,
`
`Defendants.
`
`COMPLAINT
`
`COMES NOW VDF Futureceuticals, Inc. (“VDF”), by and through its
`
`attorneys McCorriston Miller Mukai MacKinnon LLP, Sidley Austin LLP, and
`
`Fish & Associates, PC, and alleges and avers a complaint against the above-named
`
`Defendant as follows:
`
`PARTIES
`
`1.
`
`Plaintiff VDF FUTURECEUTICALS, INC. is a corporation
`
`organized and existing under the laws of the State of Illinois, with a place of
`
`business at 300 West Sixth Street, Momence, IL 60954. VDF is a research,
`
`development, production and marketing company with a proprietary line of
`
`CoffeeBerry® Whole Coffee Fruit Products, which it sells both as a whole powder
`
`and as a concentrated extract.
`
`~
`
`59879/2466! 5.1
`
`2
`
`

`
`2.
`
`Upon information and belief, Defendant SANDWICH ISLES
`
`TRADING CO. INC., D/B/A KONA RED, lNC., (hereinafter “SITC” or
`
`“Defendant”) is a corporation organized and existing under the laws of the State of
`
`Hawai‘i, with its principal place of business at 4310 Kalaheo Drive, Kalaheo,
`
`Hawai‘i 96741-9558.
`
`3.
`
`Upon information and belief, SITC makes, uses, offers to sell, and
`
`sells within the United States, including this judicial district in the State of
`
`Hawai‘i, products including but not limited to a line of “KonaRed Wellness
`
`Beverages,” including “3oz Concentrated Shots,” “RTD [Ready to Drink] 1602
`
`Beverages,” and “Convenient, on-the—go Stick Packs.”
`
`4.
`
`Upon information and belief, SITC intends to sell its line of
`
`“KonaRed Wellness Beverages” in states other than Hawai‘i, including California,
`
`Nevada, Texas, Washington, and New York.
`
`5.
`
`Upon information and belief, SITC also offers a “generic” version of a
`
`whole powder and a liquid extract containing “KonaRed Coffee Fruit” for use “as
`
`an antioxidant enhancement to other companies’ products.”
`
`6.
`
`JOHN DOES 1-10 are sued herein under fictitious names for the
`
`reason that their true names, identifies and/or responsibilities to VDF are currently
`
`unknown except that they were in some manner involved in the conduct alleged
`
`herein and/or are somehow related to or in some other manner responsible for the
`
`59879/246615.}
`
`3
`
`

`
`damages alleged herein by way of their patent infringement, and/or other fault.
`
`Said JOHN DOES 1-10 may include, but are not limited to, individuals and/or
`
`business entities, their principals, agents, and/or employees who have dealt with
`
`SITC.
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has jurisdiction over the subject matter of this action
`
`pursuant to 28 US. C. 591338 (a) (action arising under an Act of Congress relating
`
`to patents) and 28 US. C. § 1331 (federal question).
`
`8.
`
`This Court has personal jurisdiction over SITC because SITC resides
`
`in this judicial district, conducts business in this judicial district within the State of
`
`Hawai‘i, and has and continues to commit acts of patent infringement in this
`
`judicial district (in the United States).
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 US. C. §§
`
`]5’_9](b), 1391(0) and 1400(1)).
`
`FACTUAL BACKGROUND AND ALLEGATIONS
`
`A.
`
`VDF’s Patents
`
`10.
`
`VDF is the assignee and owner of all rights, title and interest in United
`
`States Patent No. US 7,754,263 (“the ‘263 Patent”), entitled “Methods For Coffee
`
`Cherry Products,” which was duly and legally issued to Dusan Miljkovic, Brad
`
`Duell, and Vukosava Miljkovic on July 13, 2010 by the United States Patent and
`
`59879/246615.!
`
`4
`
`

`
`Trademark Office. A true and correct copy of the ‘263 Patent is attached hereto as
`
`Exhibit A.
`
`1 1. VDF is the assignee and owner of all rights, title and interest in United
`
`States Patent No. US 7,807,205 (“the ‘205 Patent”), entitled “Methods For Coffee
`
`Cherry Products,” which was duly and legally issued to Dusan Miljkovic, Brad
`
`Duell, and Vukosava Miljkovic on October 5, 2010 by the United States Patent and
`
`Trademark Office. A true and correct copy of the ‘205 Patent is attached hereto as
`
`Exhibit B.
`
`12. VDF is the assignee and owner of all rights, title and interest in United
`
`States Patent No. US 7,815,959 (“the ‘959 Patent”), entitled “Low—Mycotoxin
`
`Coffee Cherry Products,” which was duly and legally issued to Dusan Miljkovic,
`
`Brad Duell, and Vukosava Miljkovic on October 19, 2010 by the United States
`
`Patent and Trademark Office A true and correct copy of the ‘959 Patent is
`
`attached hereto as Exhibit C.
`
`13.
`
`The ‘263 Patent, the ‘205 Patent and the ‘959 Patent are hereinafter
`
`referred to as the “VDF’s Patents” or “Patents—In-Suit.”
`
`14. VDF has marketed, sold, and continues to market and sell, the
`
`patented product and products made from the patented processes under the
`
`trademark “COFFEEBERRY®.”
`
`59879/24661 5.1
`
`5
`
`

`
`15.
`
`On March 19, 2009, counsel for VDF sent a letter addressed to SITC,
`
`Hawai‘i Coffee Cherry, c/o Shaun Roberts, CEO, regarding notice of VDF’s
`
`pending applications under 35 USC. §154(d) (the “March 19, 2009 VDF Letter”).
`
`The pending applications that were published and disclosed in the March 19, 2009
`
`VDF Letter to SITC were (1) US Serial No. 10/552,945, which resulted in the ‘959
`
`Patent; (2) US Serial No. 10/552,944, which resulted in the ‘205 Patent and is the
`
`parent of the ‘263 Patent; and (3) US Serial No. 10/599,663, which is still pending.
`
`A true and correct copy of the March 19, 2009 VDF Letter is attached hereto as
`
`Exhibit D.
`
`16.
`
`On May 1 1, 2009, SITC through its counsel sent a letter back to
`
`VDF’s counsel responding to the March 19, 2009 VDF Letter (the “May 1 1, 2009
`
`SITC Letter”). In its letter, SITC requested further information regarding VDF’s
`
`pending applications. A true and correct copy of the May 11, 2009 SITC Letter is
`
`attached hereto as Exhibit E.
`
`17.
`
`On June 2, 2009, VDF through its counsel sent another letter to SITC
`
`addressing the issues in the May 1 1, 2009 SITC Letter and directed SITC to VDF’s
`
`published applications via a publicly available source, PAIR (the “June 2, 2009
`
`VDF Letter”). A true and correct copy of the June 2, 2009 VDF Letter is attached
`
`hereto as Exhibit F.
`
`59879/2466151
`
`6
`
`

`
`18.
`
`As early as March 19, 2009, SITC had notice of VDF’s 959 Patentand
`
`‘205 Patent.
`
`COUNT ONE
`
`INFRINGEMENT OF THE ‘263 PATENT
`
`19. VDF re—alleges and incorporates herein the allegations of paragraphs
`
`l~ 18 as if fully set forth herein.
`
`20.
`
`Upon information and belief, in violation of 35 US. C. 59 271, SITC,
`
`inter alia, has infringed, is currently infringing, and/or inducing the infringement
`
`of, and will continue to infringe, either directly or indirectly and by literal
`
`infringement or infringement under the doctrine of equivalents, at least claims 1,
`
`l3, and 17 of the ‘263 Patent, by making, using, offering for sale, and/or selling
`
`and/or importing into the United States products, manufactured by methods
`
`claimed by the ‘263 Patent, including but not limited to a line of “KonaRed
`
`Wellness Beverages,” including “3oz Concentrated Shots,” “RTD [Ready to
`
`Drink] 16oz Beverages,” and “Convenient, on—the-go Stick Packs” and a line of
`
`generic products including whole powder and a liquid extract containing
`
`“KonaRed Coffee Fruit.”
`
`21.
`
`As a direct and proximate result of SITC’s acts of infringement as
`
`alleged herein, VDF has and will continue to suffer damages in an amount
`
`according to proof at trial, and thus VDF is entitled to recover damages adequate to
`
`compensate it for such infringement, but in no event less than a reasonable royalty.
`
`59879/246615.!
`
`7
`
`

`
`22. Unless SITC is enjoined by this Court from continuing its
`
`infringement of the ‘263 Patent in violation of VDF’s exclusive rights, VDF will
`
`suffer additional irreparable harm and impairment of the value of its patent rights.
`
`Thus, VDF is entitled to an injunction against further infringement.
`
`23. Upon information and belief, SITC’s infringement has occurred with
`
`knowledge of the ‘263 Patent and is and has been in deliberate and willful
`
`violation of 35 US. C. § 284, entitling VDF to increased damages, and making this
`
`case exceptional within the meaning of 35 US. C. § 285.
`
`COUNT TWO
`
`INFRINGEMENT OF THE ‘205 PATENT
`
`24. VDF re—alleges and incorporates herein the allegations of paragraphs
`
`1- 23 as if fully set forth herein.
`
`25. Upon information and belief, in violation of 35 US. C. § 271, SITC,
`
`inter alia, has infringed, is currently infringing and/or inducing the infringement
`
`of, and will continue to infringe, either directly or indirectly and by literal
`
`infringement or by infringement under the doctrine of equivalents, at least claims
`
`1, 13, and 17 of the ‘205 Patent, by making, using, offering for sale, and/or selling
`
`and/or importing into the United States products, manufactured by methods
`
`claimed by the ‘205 Patent, including but not limited to a line of “KonaRed
`
`Wellness Beverages,” including “3oz Concentrated Shots,” “RTD [Ready to
`
`Drink] 16oz Beverages,” and “Convenient, on—the-go Stick Packs” and a line of
`
`59879/2466151
`
`8
`
`

`
`generic products including whole powder and a liquid extract containing
`
`“KonaRed Coffee Fruit.”
`
`26.
`
`As a direct and proximate result of SITC’s acts of infringement as
`
`alleged herein, VDF has and will continue to suffer damages in an amount
`
`according to proof at trial, and thus VDF is entitled to recover damages adequate to
`
`compensate it for such infringement, but in no event less than a reasonable royalty.
`
`27. Unless SITC is enjoined by this Court from continuing its
`
`infringement of the ‘205 Patent in violation of VDF’s exclusive rights, VDF will
`
`suffer additional irreparable harm and impairment of the value of its patent rights.
`
`Thus, VDF is entitled to an injunction against further infringement.
`
`28. Upon information and belief, SITC has had actual notice of the
`
`existence of the ‘Z05 Patent at least as of March 19, 2009 when VDF sent the
`
`March 19, 2009 VDF Letter to SITC informing SITC of VDF’s then-pending
`
`applications. VDF also sent its June 2, 2009 VDF Letter to SITC providing
`
`additional information on VDF’s then pending applications that would become
`
`VDF’s Patents.
`
`29. Upon information and belief, SITC’s infringement has occurred with
`
`knowledge of the ‘Z05 Patent and is and has been in deliberate and willful in
`
`violation of 35 US. C. § 284, entitling VDF to increased damages, and making this
`
`case exceptional within the meaning of 35 US. C. § 285.
`
`59879/2466l5.l
`
`9
`
`

`
`COUNT THREE
`
`INFRINGEMENT OF THE ‘959 PATENT
`
`30. VDF re-alleges and incorporates herein the allegations of paragraphs
`
`1- 29 as if fully set forth herein.
`
`3 1. Upon information and belief, in violation of 35 US. C. § 2 71, SITC,
`
`inter alia, has infringed, is currently infringing, and will continue to infringe, either
`
`directly or indirectly and by literal infringement or by infringement under the
`
`doctrine of equivalents and/or inducing the infringement of, at least claims 1 and 5
`
`of the ‘959 Patent, by making, using, offering for sale, and/or selling and/or
`
`importing into the United States products, manufactured by methods claimed by
`
`the "959 Patent, including but not limited a line of “KonaRed Wellness Beverages,
`
`including but not limited to “3oz Concentrated Shots,” “RTD [Ready to Drink]
`
`l6oz Beverages,” and “Convenient, on-the-go Stick Packs” and a line of generic
`
`products including whole powder and a liquid extract containing “Kona Red
`
`Coffee Fruit.”
`
`32.
`
`As a direct and proximate result of SITC’s acts of infringement as
`
`alleged herein, VDF has and will continue to suffer damages in an amount
`
`according to proof at trial, and thus VDF is entitled to recover damages adequate to
`
`compensate it for such infringement, but in no event less than a reasonable royalty.
`
`33. Unless SITC is enjoined by this Court from continuing its
`
`infringement of the ‘959 Patent in violation of VDF’s exclusive rights, VDF will
`
`59879/24661 5.1
`
`10
`
`

`
`suffer additional irreparable harm and impairment of the value of its patent rights.
`
`Thus, VDF is entitled to an injunction against further infringement.
`
`34. Upon information and belief, SITC has had actual notice of the
`
`existence of the ‘205 Patent at least as of March 19, 2009 when VDF sent the
`
`March 19, 2009 VDF Letter to SITC informing SITC of VDF’s then~pending
`
`applications. VDF also sent its June 2, 2009 VDF Letter to SITC providing
`
`additional information on VDF’s then pending applications that would become
`
`VDF ’s Patents.
`
`35. Upon information and belief, SITC’s infringement has occurred with
`
`knowledge of the ‘959 Patent and is and has been in deliberate and willful in
`
`violation of 35 US. C. 59 284, entitling VDF to increased damages, and making this
`
`case exceptional within the meaning of 35 US. C. 59 285.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, VDF requests that the Court:
`
`A)
`
`Order trial by jury on all issues so triable;
`
`Render judgment that the Patents-In—Suit are valid and enforceable;
`
`Render judgment that SITC has infringed the ‘263, ‘205 and ‘959
`
`B)
`
`C)
`
`patents;
`
`D)
`
`Find that SITC’s infringement was willfillg
`
`59879/2466151
`
`1 1
`
`

`
`E)
`
`Issue a permanent injunction preventing SITC, and those in active
`
`concert with SITC, from further infringement or inducement of infringement of the
`
`‘263, ‘205 and ‘959 patents;
`
`F)
`
`Award compensatory damages in an amount to be determined at trial;
`
`G)
`
`Award treble damages pursuant to 35 U.S.C § 284;
`
`H)
`
`Award interest as allowed by law;
`
`I)
`
`Declare that this case is exceptional pursuant to 35 US. C. § 285,
`
`award costs and reasonable attorneys fees incurred in connection with this action;
`
`and
`
`J)
`
`Grant such other and further relief as the Court and the jury deem just
`
`and proper.
`
`DATED: Honolulu, Hawai‘i, April 29, 201 1.
`
`ROBERT G. KLEIN
`
`LISA W. CATALDO
`
`JORDON J. KIMURA
`
`Attorneys for Plaintiff
`VDF FUTURECEUTICALS, INC.
`
`59879/246615.]
`
`12
`
`

`
`IlllllllllllllllIllllllfllllllllllllIlllllllllllllllllllllllllllllllll
`
`US007754263B2
`
`(12) United States Patent
`Miljkovic et al.
`
`(10) Patent No.:
`
`(45) Date of Patent:
`
`US 7,754,263 B2
`Jul. 13, 2010
`
`(54) METHODS FOR COFFEE CHERRY
`PRODUCTS
`
`(75)
`
`Inventors: Dusan Mlljkovlc, San Diego, CA (US);
`Brad Duell, Kailua Kona, HI (US);
`Vukosava Miljkovic, San Diego, CA
`(US)
`
`(73) Assignee: VDF FutureCenticals, lnc., Momence,
`IL (US)
`
`( "‘ ) Notice:
`
`Subject to any disclaimer, the term ofthis
`patent is extended or adjusted under 35
`U.S.C. l54(b) by 0 days.
`
`(21) Appl.No.: I2/640,412
`
`(22) Filed:
`
`Dec. 17, 2009
`
`(65)
`
`Prior Pnbllcatlon Data
`
`US 2010/0080885 Al
`
`Apr. 1, 2010
`
`(58) Field of Classification Search ..................... ,. None
`See application file for complete search history.
`
`(56)
`
`References Cited
`
`U.S. PATENT DOCUMENTS
`
`8/I979 Bustamente
`4,165,752 A
`............ .. 426/594
`6/2003 Drunenetal.
`6,572,915 B1 "
`l2/2002 Miljkovic :1 al.
`2002/0187239 Al
`FOREIGN PATENT DOCUMENTS
`1533371
`7/1968
`
`FR
`
`OTHER PUBLICATIONS
`
`Sivetz, Michael andNorman W. Desrosier. Coflfee Technology. 1979,
`AV! Publishing Company. pp. 74-82, 86. 127-128.‘
`EP 1 593, 735 Al Bodmer et al. Abstract translated. May 7, 2004.‘
`‘ cited by examiner
`
`Primmy Examiner-—--Jennifer C McNeil
`Assistant Examiner——Hong Mehta
`(74) Attorney, Agent, or Firm—F