Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA749060
`05/30/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92060593
`
`Defendant
`Tushar Madhu Goradia
`
`WENDY PETERSON
`NOT JUST PATENTS LLC
`PO BOX 18716
`MINNEAPOLIS, MN 55418
`UNITED STATES
`wsp@NJPLS.com
`
`Other Motions/Papers
`
`Wendy Peterson
`
`wsp@NJPLS.com
`
`/Wendy Peterson/
`
`05/30/2016
`
`MOTION FOR DISCOVERY UNDER FED. R. CIV. P. 56(D).pdf(81663 bytes )
`Affidavit in support of Motion for Discovery.pdf(29145 bytes )
`Exhibit A Petitioners Responses to First Set Of Interrogatories.pdf(983698 bytes
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`) E
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`xhibit B Petitioners Responses to Second Set of Interrogatories.pdf(2254923
`bytes )
`Exhibit C Petitioners Responses to First set of Requests for Admis-
`sions.pdf(157227 bytes )
`Exhibit D Petitioners Responses to Second Set of Admissions.pdf(1161131
`bytes )
`Exhibit E Petitioners Responses to Second Set of Requests for Produc-
`tion.pdf(1456103 bytes )
`Exhibit F Internet information regarding FDA classification of Transcutaneous
`electrical nerve stimulator for pain relief.pdf(2138404 bytes )
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation Proceeding 92060593
`
`In the matter of Trademark Registration No. 3341418
`
`
`
`For the mark: NERVANA
`
`Registration Date: Nov. 20, 2007
`
`Nervana, LLC v. Tushar Madhu Goradia
`
`MOTION FOR DISCOVERY UNDER FED. R. CIV. P. 56(D)
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`Registrant Tushar Goradia in accordance with Rule 56(d) of the Federal Rules of Civil
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`Procedure and TBMP 528.06, hereby moves to stay ruling on Petitioner’s Motion for Summary
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`Judgment and requests that the Board either (1) defer consideration of Petitioner’s Motion for
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`Summary Judgment and allow Registrant time to take additional discovery and follow up on
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`previous discovery; (2) deny it; or (3) issue any other appropriate order.
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`Timely and properly filed Rule 56(d) motions for discovery are generally granted as a
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`matter of course. “The summary judgment process presupposes the existence of an adequate
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`record. . . . This is particularly so when there are discovery requests outstanding or relevant facts
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`are under the control of the moving party.” Doe v. Abington Friends Sch., 480 F.3d 252, 257 (3d
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`Cir. 2007).
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`Courts generally require a Rule 56(d) movant to establish three things: (1) a description
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`of the particular discovery the movant intends to seek; (2) an explanation showing how that
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 1
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`discovery would preclude the entry of summary judgment; and (3) a statement justifying why
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`this discovery had not been or could not have been obtained earlier.
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`
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`1. DESCRIPTION OF THE PARTICULAR DISCOVERY REGISTRANT IS SEEKING
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`To determine if Petitioner has standing to bring the Motion for Summary Judgment:
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`Registrant moves the Board for an order:
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`(cid:1) Instructing Petitioner to provide complete responses without objection to Registrant's
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`Interrogatory Nos 24-34 (46 TTABVUE 24-27);
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`(cid:1) Permitting Registrant to depose Petitioner's CEO and others in Petitioner’s
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`organization about the facts of this matter generally, the topics regarding the validity
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`of Petitioner’s trademark application(s) and standing, the validity of Ami Brannon
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`being listed as an inventor on the patent application, what goods are intended to be
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`contained in the applications, the channels of trade used or intended to be used, the
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`manufacturing of the goods and where that manufacturing has or will take place,
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`whether or not the goods are medical devices or ‘intended for use in the diagnosis,
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`cure, mitigation, treatment, therapy, or prevention of disease in humans or other
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`animals’, the target market for the goods, the sophistication of the consumers, and the
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`sales process, Petitioner's marketing efforts; and,
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`(cid:1) Permitting Registrant to depose Petitioner’s CEO about her responses to specific
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`interrogatories.
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`All of the above are regarding Petitioner’s standing and Registrant’s related
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`affirmative defenses and potential affirmative defenses.
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 2
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`2. INFORMATION OBTAINED FROM DISCOVERY WILL PRECLUDE THE
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`ENTRY OF SUMMARY JUDGMENT
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`
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`LACK OF INFORMATION TO DATE
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`Information from discovery will show that Petitioner doesn’t have standing to bring the
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`summary motion. The application(s) pleaded by Petitioner lack a bona fide intent to use in
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`commerce and are indefinite.
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`Registrant seeks further discovery, including testimony, regarding facts that pertain
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`directly to standing and to the validity of Petitioner’s applications as a basis for standing.
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`Petitioner’s responses to discovery are more noteworthy for the total lack of knowledge or
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`disclosure from Petitioner regarding what the goods from SN 86492131 and SN 86272051 are
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`going to be and their intended uses indicating that Petitioner has no bona fide intent to use the
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`goods in commerce and has no standing for this summary judgment motion.
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`Both of the applications that Petitioner is attempting to base its standing on have been
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`refused for indefiniteness. Petitioner brought this proceeding before answering the examiner’s
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`requirements to cure these indefiniteness claims. Registrant is entitled to discovery regarding the
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`intended use of the goods, just as the examiner made this requirements.
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`SN 86492131: “Applicant must further specify the goods by its common
`commercial name, such as “massage apparatus”, or “electrical nerve and muscle
`stimulators for providing transcutaneous electrical nerve stimulation, infrared heat and
`compression for medical or therapeutic purposes”.
`
`SN 86272051:“The wording “medical devices” in the identification of goods is
`indefinite and must be clarified because it does not specify the nature of the devices. See
`TMEP §1402.01. Applicant must amend the identification to specify the common
`commercial name of the goods. If there is no common commercial name, applicant must
`describe the product and its intended uses.”
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 3
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`Registrant has been so far unable to get Petitioner to clarify through interrogatories or
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`document requests the intended use of any of the goods and unable to clarity if any of the goods,
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`including those identified by the examiner as the overly broad “medical devices” have any
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`intended uses. Examples of interrogatories that have already been propounded that require a
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`further inquiry are:
`
`
`Interrogatory No. 23:
`Describe in detail and identify the intended uses of each of the goods in Petitioner's SN
`86492131 and SN 86272051 that are not devices under the definition: "Device" means any
`instrument, apparatus, implement, machine, contrivance, implant, in vitro reagent, or other
`similar or related article, including its components, parts, or accessories, which is: (a)
`Recognized in the current edition of the United States Pharmacopoeia and National Formulary,
`or any supplement thereof, (b) Intended for use in the diagnosis, cure, mitigation, treatment,
`therapy, or prevention of disease in humans or other animals, or (c) Intended to affect the
`structure or any function of the body of humans or other animals, and that does not achieve any
`of its principal intended purposes through chemical action within or on the body of humans or
`other animals and which is not dependent upon being metabolized for the achievement of any of
`its principal intended purposes.
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`Answer:
`NERVANA incorporates by reference its General Objections above as though set forth in
`response to this interrogatory. NERVANA objects to this interrogatory on the basis of relevance,
`the Scope Objection. This interrogatory is not relevant to any asserted claims or defenses of any
`party in this proceeding, not likely to lead to the discovery of admissible evidence in connection
`herewith, and is well outside the permissible scope of discovery under Fed. R.Civ.P. 26(b)(1).
`Vagueness Objection as to the words "intended uses" and "devices." Calls for Legal Conclusion.
`Objection as the interrogatory is a contention interrogatory in that the interrogatory requests that
`NERVANA to explain or articulate a legal reason for the contention. Privilege Objection and
`Harassment Objection. Compound Objection.
`
`Interrogatory No. 24:
`Describe in detail and identify the intended uses of each of the goods in Petitioner's SN
`86492131 and SN 86272051 that are devices under the definition: "Device" means any
`instrument, apparatus, implement, machine, contrivance, implant, in vitro reagent, or other
`similar or related article, including its components, parts, or accessories, which is: (a)
`Recognized in the current edition of the United States Pharmacopoeia and National Formulary,
`or any supplement thereof, (b) Intended for use in the diagnosis, cure, mitigation, treatment,
`therapy, or prevention of disease in humans or other animals, or (c) Intended to affect the
`structure or any function of the body of humans or other animals, and that does not achieve any
`of its principal intended purposes through chemical action within or on the body of humans or
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 4
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`other animals and which is not dependent upon being metabolized for the achievement of any of
`its principal intended purposes.
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`Answer:
`See above answer to Interrogatory No. 23.
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`Exhibit B Petitioner’s Responses to the Second Set of Interrogatories
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`
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`The CEO of Petitioner’s organization, Ami Brannon (who answered the interrogatories),
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`should be deposed to see if the organization has sufficiently identified any and all of the goods.
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`Between the two applications it is a long list: SN 86272051 Medical devices and SN 86492131
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`Massage apparatus; Electronic therapy machines and apparatus; Electromedical rehabilitative
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`and pain management products for clinical and home use, namely, electrical nerve and muscle
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`stimulators; electrotherapy devices for providing transcutaneous and/or percutaneous electrical
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`nerve stimulation; apparatus for electrical muscle stimulation for therapeutic purposes;
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`apparatus for therapeutic stimulation of the body; apparatus for nerve stimulation; apparatus
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`for the stimulation of acupuncture points; electro-medical stimulation current apparatus for
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`stimulation of muscles and nerves; electro-stimulation apparatus for use in therapeutic treatment
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`of muscles and nerves; transcutaneous and/or percutaneous electrical nerve stimulation
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`electrodes; transcutaneous and/or percutaneous electrical nerve stimulation instruments;
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`massage appliances; vibration generating apparatus for massage; apparatus for the electrical
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`stimulation of groups of muscles for therapeutic and/or medical purposes.
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`Petitioner has not identified any trade channels for its goods. Registrant is entitled to
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`depose Petitioner to determine what these channels are. An example of a request regarding
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`channels of trade that requires further response from Petitioner:
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 5
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`Request for Production No. 36:
`Documents relating to any investigation into the targeted market for Petitioner's products
`bearing Petitioner's mark.
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`RESPONSE:
`PETITIONER incorporates by reference its General Objections above as though set forth
`in response to this request. Further, PETITIONER objects to Request No. 36 on the basis of
`Vagueness Objection as to the term "investigation," "targeted" and "market." Scope Objection
`and Objection for Legal Conclusion. Relevance objection. Legal Conclusion objection. Privilege
`Objection. For purposes of this response, Petitioner will assume that the word "investigation" is a
`formal inquiry or systematic study. Subject to and without waiving said objections, there are no
`documents responsive to this request.
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`Exhibit E Petitioner’s Responses to Requests for Production
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`
`
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`Petitioner has never identified what it plans to do with the mark NERVANA--Petitioner
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`seems ultimately just trying to make sure that nobody else can take advantage of the NERVANA
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`mark. Registrant is entitled to pursue the complete lack of evidence to support any intent to use
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`the NERVANA mark with one or any of the goods identified in the applications.
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`If Petitioner does not have a bona fide intent to use each and every one of the devices in
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`SN 86492131 and SN 86272051 Petitioner’s entire applications are void ab initio. W. Brand
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`Bobosky v. Adidas AG, 2011 U.S. Dist. LEXIS 149611, 14-20 (D. Or. Dec. 29, 2011). Registrant
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`is entitled to continue pursuing discovery regarding each and every good.
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`
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`CONTRADICTORY INFORMATION TO DATE
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`Information regarding the only good admitted by Petitioner to show any activity has been
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`elusive and contradictory. Registrant has a right to know what information is accurate regarding
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`Petitioner’s standing and application.
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 6
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`Ami Brannon is listed as one of the many inventors in Petitioner’s Motion amongst
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`Richard Cartledge, Daniel Cartledge, Kermit Falk, and/or Gregory L. Mayback.
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`The patent application disclosed by Petitioner reads in the field of the invention: “the
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`present disclosure relates to methods and devices that use transcutaneous and percutaneous
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`methods of stimulating nerves to cause an array of therapeutic benefits, including those
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`dependent upon where the stimulation is directed.”
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`The field of the invention disclosed by Petitioner on its face falls into the category of
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`‘device’ from the interrogatories ((b) Intended for use in the diagnosis, cure, mitigation,
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`treatment, therapy, or prevention of disease in humans or other animals)). The field of invention
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`directly contradicts the responses to discovery. Registrant is entitled to discovery to sort this
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`issue out.
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`Do all of the goods fall under this patent disclosure or has Petitioner decided it is only
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`going to support that it has a bona fide intent for one good that is currently unidentified?
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`Registrant is entitled to discovery to sort this issue out.
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`Even if Petitioner’s goods do not require Petitioner to seek FDA preapproval and
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`premarket notification, they would require filing for an exemption. For products not requiring a
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`Premarket Approval that are not exempt from premarket notification ( 510(k) ), a 510(k)
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`submission is required whenever a medical device is introduced into commercial distribution in
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`the United States (See 21 CFR 807.81 in Exhibit F).
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`But Petitioner admits that it has not sought any government clearance to market and sell
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`any NERVANA goods and claims that it is not required.
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`REQUEST NO. 17.
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 7
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`Admit that at the time of application on May 5, 2014 for the mark NERVANA SN
`86272051, Nervana LLC had no FDA approval for any medical devices nor any FDA approval
`expected in 2015.
`
`Privilege Objection. Work Product Objection. Scope Objection to the lack of relevance.
`Vagueness Objection to the term “FDA approval” and “expected.” Objection based on the
`request having an improper premise. Subject to these objections, the request is admitted to the
`extent that FDA approval is not a prerequisite to the goods at issue.
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`Exhibit C Petitioner’s Responses to First Set of Requests for Admission
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`
`
`REQUEST NO. 41.
`Admit that Petitioner has not sought any governmental clearance to sell or market
`Petitioner's Products in the United States.
`Answer: Scope Objection to the lack of relevance. Vagueness Objection as to the term
`"sought," "governmental," "clearance," "sell," or "market." Objection based on an improper legal
`conclusion and improper premise implying that there is a requirement to seek any type of
`governmental clearance in the US or any other country. Subject to these objections, the request is
`admitted only to the extent that the request is directed towards the question of whether Petitioner
`filed papers to obtain a governmental clearance, but denied to the extent the request implies that
`there was no bona fide intent to use the mark in commerce. Petitioner has admitted that it has
`not made any government submissions.
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`Exhibit D Petitioner’s Responses to Second Set of Admissions
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`
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`Registrant needs discovery and testimony to identify Petitioner’s objective intent with
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`what appears to be its sole example of its bona fide intent.
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`The FDA regulation defines intended use according to the “objective intent” of the
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`manufacturer as expressed in promotional activity of the manufacturer, but then suggests that
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`other evidence, such as how the product is actually used by physicians/consumers, can also
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`determine intended use. With very limited exceptions (in cases with unusual facts), courts have
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`determined “intended use” by reference to the claims used by manufacturer to promote its
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`products. For example, as stated by the Fourth Circuit, “no court has ever found that a product is
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`‘intended for use’ … within the meaning of the FDCA absent manufacturer claims as to that
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 8
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`product’s use.” Brown & Williamson Tobacco Corp. v. FDA, 153 F.3d 155, 163 (4th Cir. 1998),
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`aff’d, 529 U.S. 120 (2000).
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`Petitioner’s disclosures to date fail to show its objective intent for each and every good.
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`Petitioner has admitted in response to interrogatory 21: “To the extent the interrogatory is
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`directed to the Consumer Electronics Show ("CES"), there exists three business cards (one for
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`Ami Brannon, one for Kermit Falk, and one for the company), a press kit, and photos taken
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`during CES. Petitioner further responds that as to the Trademark Application Serial No.
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`86/272,051, there are no goods displayed, used, sold, or offered at any time at the CES or any
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`time prior. As to the Trademark Application Serial No. 86/921,131, there were no goods sold or
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`offered for sale to anyone at any time either at the CES or prior to the CES.”
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`Without Petitioner identifying which good from 86492131 they are claiming to have
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`displayed at the CES we can only go by what the consumers have identified. The potential
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`consumers identified in Petitioner’s Motion for Summary Judgment perceive the single good
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`displayed to be headphones (“These nerve-stimulating headphones will supposedly give you a
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`dopamine high. . . a set of headphones” 36 TTABVUE 525-526).
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`There is no application for NERVANA headphones pleaded by Petitioner. Because of
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`Petitioner’s evasive responses to discovery, testimony appears to be the only solution to finding
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`out the basis for Petitioner’s threshold claim of standing.
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`Petitioner’s use of terms such as “bona fide intent to do so in the future” and “focusing”
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`(Exhibit D Interrogatory 44) beg explanation that would be very difficult to achieve without a
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`deposition. Petitioner’s vague allusions to future plans to use the mark demonstrate that
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`Petitioner objectively lacks the requisite bona fide intent. SmithKline Beecham Corp. v.
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`Omnisource DDS LLC, 97 USPQ2d 1300, 1304-05 (TTAB 2010); Saul Zaentz Co. v. Bumb, 95
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 9
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`USPQ2d 1723, 1726-30 (TTAB 2010); and Research In Motion Limited v. NBOR Corp., 92
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`USPQ2d 1926, 1930-31 (TTAB 2009).
`
`REQUEST NO. 44.
`Admit that Petitioner is presently not an active entity, and thus not performing any
`business services or otherwise operating as a functioning business entity manufacturing or selling
`medical devices.
`
`Answer: Vagueness Objection and Legal Conclusion Objection to the terms "presently,"
`"active entity," "operating," "functioning." Relevance objection. Objection as request implies a
`legal requirement. Subject to these objections, Petitioner denies that it is not an active entity and
`not in business or functioning as a business. Subject to these objections, Petitioner admits that
`at the present time it is not manufacturing or selling medical devices, but has a bona fide
`intent to do so in the future, but at the present time is focusing on manufacturing and
`selling goods described within Trademark Application Serial No. 86/492,131. (emphasis
`added)
`
`
`Exhibit D Interrogatory 44
`
`
`PETITIONER PERSISTENT EVASIVENESS INDICATES THAT IT BELIEVES IT
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`HAS NO OBLIGATIONS TO PROVE STANDING IN THIS PROCEEDING
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`Petitioner has made a flurry of remarks such as those in responses to even the earliest
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`requests for admission that indicate that Petitioner believes that it does not have to prove its own
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`standing. When asked the very same questions that Petitioner asked Registrant in discovery,
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`Petitioner responded with evasion and objection.
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`Interrogatory No. 15:
`Identify the annual sales and advertising figures, stated in round numbers, for a Petitioner's
`goods under all NERVANA marks for the years 2013, 2014, 2015.
`
`Answer: NERVANA incorporates by reference its General Objections above as though set forth
`in response to this interrogatory. Vagueness Objection to the terms "annual sales" "advertising
`figures," "round numbers." Scope Objection; Burden Objection and Harassment Objection.
`NERVANA further objects to this interrogatory because it is overly broad and therefore seeking
`material that is well outside the permissible scope of discovery under Fed. R. Civ. P. 26(b)(1),
`and not reasonably calculated to lead to discoverable evidence and therefore seeks information
`that is not relevant to this proceeding. This interrogatory has no bearing on the claims of
`fraud, nonuse and abandonment in Petitioner's Cancellation against Respondent and this
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 10
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`interrogatory is harassing in that Respondent is trying to tum this into a case against
`Petitioner when there are no counterclaims against Petitioner.
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`Exhibit A Petitioner’s Responses to First Set of Interrogatories
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`
`
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`3. THIS DISCOVERY COULD NOT HAVE BEEN OBTAINED EARLIER
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`Petitioner responses to the second set of interrogatories 21-34 were served on Registrant
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`March 17, 2016 (Exhibit B) after the filing of the Motion for Summary Judgment on March 4,
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`2016. The responses to the second set of requests for admissions were served on Registrant
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`shortly before filing the Motion on February 1, 2016 (Exhibit D). The responses to the second set
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`of Requests for Production were also served on Registrant shortly before filing the Motion on
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`February 1 (Exhibit E). There has been no time for Registrant to follow-up on Petitioner’s
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`responses or to depose Petitioner regarding the vague and evasive responses, contradictions and
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`omissions and possible perjury by Ami Brannon.
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`
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`CONCLUSION
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`Registrant is entitled to depose Petitioner’s CEO and others to get definite goods
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`identified, their intended use and channels of trade and to identify if a bona fide intent to use
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`exists for each of the goods identified in the application(s). The mere pendency of Petitioner's
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`intent-to use applications is not sufficient to dispose of the matter of its standing. Salacuse v.
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`Ginger Spirits Inc., 44 USPQ2d 1415, 1419 (TTAB 1997). It would be inequitable to find
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`otherwise.
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`To be in a position to properly rebut the position asserted by Petitioner that it has met the
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`threshold issue of standing, Registrant requests that the Board either (1) defer consideration of
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`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 11
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`Registrant’s Motion for Summary Judgment and allow Petitioner time to take additional
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`discovery and follow up on previous discovery; (2) deny it; or (3) issue any other appropriate
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`
`
`
`
`order.
`
`
`
`Submitted By: /Wendy Peterson/
`
`
`
`
`
`
`
`Date: May 30, 2016
`
`Wendy Peterson, Attorney for Tushar Madhu
`Goradia, Registrant
`Not Just Patents LLC
`PO Box 18716
`Minneapolis, MN 55418
`wsp@NJPLS.com
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on May 30,
`2016, the foregoing was served
`upon Petitioner by email:
`trademarks@mayback.com,
`choffman@mayback.com
`
`By: /Wendy Peterson/
`Date: May 30, 2016
`Wendy Peterson, Attorney for
`Tushar Madhu Goradia, Registrant
`
`
`
`
`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 12
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation Proceeding 92060593
`
`In the matter of Trademark Registration No. 3341418
`
`
`
`For the mark: NERVANA
`
`Registration Date: Nov. 20, 2007
`
`Nervana, LLC v. Tushar Madhu Goradia
`
`DECLARATION OF WENDY PETERSON IN SUPPORT OF MOTION UNDER
`FED. R.CIV.P. 56(D)
`
`I, Wendy Peterson, hereby declare as follows:
`
`1. I am an attorney with the law firm Not Just Patents LLC in the above referenced cancellation
`
`proceeding representing the Registrant. I submit this declaration and attached exhibits in support
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`of Registrant’s motion under Fed. R. Civ. P. 56(d). I make the following statements based on
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`personal knowledge.
`
`2. Attached hereto as Exhibits A and B are true and correct copies of the first and second set of
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`interrogatories served on Petitioner and Petitioner’s responses to these interrogatories from
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`Registrant. Ami Brannon signed the interrogatories as CEO.
`
`
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 1
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`3. Attached hereto as Exhibits C and D are true and correct copies of the first and second set of
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`requests for admissions served on Petitioner and Petitioner’s responses to these requests from
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`Registrant.
`
`4. Attached hereto as Exhibit E is a true and correct copy of the second set of requests for
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`production of documents and Petitioner’s responses.
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`5. Attached hereto as Exhibit F are true and correct copies of statutes and articles downloaded
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`from the internet dealing with Transcutaneous Electrostimulators and their uses and FDA
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`statutes. 21 CFR 882.5890 covers TITLE 21--SUBCHAPTER H--MEDICAL DEVICES, PART
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`882 -- NEUROLOGICAL DEVICES, Subpart F--Neurological Therapeutic Devices, Sec.
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`882.5890 Transcutaneous electrical nerve stimulator for pain relief. This FDA statute identifies
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`that a transcutaneous electrical nerve stimulator for pain relief is a device used to apply an
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`electrical current to electrodes on a patient's skin to treat pain and is classified under Class II.
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`These documents taken with the device identified in the Petitioner’s patent application
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`(“SUMMARY OF THE INVENTION: [ ] One benefit provided by such transcutaneous
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`measures includes instances where surgical implantation is impractical and/or could not be
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`predicted as a future need, such as pain mitigation for an injured soldier”) indicate that
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`Petitioner’s good would require FDA preapproval or would at least require filing for an
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`exemption with the FDA.
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`6. Registrant is unable to respond to the motion for summary judgment regarding Petitioner’s
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`threshold right to bring this Motion without deposing Ami Brannon, Richard Cartledge, Daniel
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`Cartledge, Kermit Falk, and/or Gregory L. Mayback regarding each good as identified in the
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`patent application and in both trademark applications, the intended uses of Petitioner’s goods,
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`and the intended channels of trade. Without a bona fide intent to use the application(s), Petitioner
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`has no standing in this proceeding to bring the summary motion. Petitioner has no other standing
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`other than these applications which to date Petitioner has never definitively identified.
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`In several discovery responses Petitioner claims that their medical devices (‘051) are not subject
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`to FDA approval (Exhibit C, RFA 17). Inherent in this response is knowledge of FDA
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`regulations and the intended use of the goods.
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`Petitioner also admits that the other devices from the application SN 86492131 are not medical
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`devices. Inherent in this response is knowledge of FDA regulations and the intended use of the
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`goods. Under the FDA, transcutaneous electrical nerve stimulators are for pain relief.
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`The intended use of a product determines whether it meets the definition of a drug, device, or
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`other regulated product under the Federal Food, Drug, and Cosmetic Act (FDCA) and thus may
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`be regulated by FDA. Someone in Petitioner’s list of inventors and founders not only knows the
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`intended uses but must also be thoroughly familiar with the concept of intended use yet they
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`claim that they are confused by the requests regarding intended use. More interrogatories are not
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`the answer. Deposing Petitioner appears to be the only way to determine if Petitioner meets the
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`threshold for bringing a Motion for Summary Judgment (and bringing this proceeding).
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`7. Registrant is entitled to depose Ami Brannon regarding her role as a listed inventor in light of
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`the fact that Ms. Brannon could not answer any of the interrogatories regarding Petitioner’s
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`invention. According to Ms. Brannon, the interrogatories from Registrant contained an improper
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`legal conclusion and improper premise implying that there is a requirement to seek any type of
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`governmental clearance in the US or any other country. Yet the field of the invention and
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`summary of the invention description and the claims in the patent application supplied by
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`Petitioner read otherwise as devices to mitigate pain.
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`Petitioner is entitled to discovery to determine if Ms. Brannon’s name as an inventor on the
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`patent application is fraudulent (she has no knowledge of the devices) or if the information given
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`in the interrogatory was perjury or if there is some other reasonable explanation for Ms. Brannon
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`having no knowledge of what the invention was intended to do. Further interrogatories would be
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`a very difficult way to pursue this line of questioning and a deposition would be necessary.
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`Amending the Answer to include an affirmative defense of Fraud on the USPTO or unclean
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`hands would be a possible outcome from being allowed to continue discovery.
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`7. Registrant requires responses to lines of questioning regarding Petitioner’s goods, intended
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`uses and channels of trade and to depose one of more of Petitioner’s organization in order to
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`respond to Petitioner's summary judgment motion.
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`I declare under penalty of perjury that the foregoing statements are true and correct.
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`Executed on this date of May 30, 2016.
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`/Wendy Peterson/
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`Wendy Peterson, Attorney for Tushar Madhu Goradia, Registrant
`Not Just Patents LLC
`PO Box 18716
`Minneapolis, MN 55418
`wsp@NJPLS.com
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 4
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`Submitted By: /Wendy Peterson/
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`Date: May 30, 2016
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`Wendy Peterson, Attorney for Tushar Madhu
`Goradia, Registrant
`Not Just Patents LLC
`PO Box 18716
`Minneapolis, MN 55418
`wsp@NJPLS.com
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`CERTIFICATE OF SERVICE
`I hereby certify that on May 30,
`2016, the foregoing was served
`upon Petitioner by email:
`trademarks@mayback.com,
`choffman@mayback.com
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`By: /Wendy Peterson/
`Date: May 30, 2016
`Wendy Peterson, Attorney for
`Tushar Madhu Goradia, Registrant
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`Nervana, LLC, Petitioner v. Tushar Madhu Goradia, Registrant Proceeding 92060593
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`Page 5
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation Proceeding 92060593
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`In the matter of Trademark Registration No. 3341418
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`For the mark: NERVANA
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`Registration Date: Nov. 20, 2007
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`Nervana, LLC v. Tushar Madhu Goradia
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`REGISTRANT ’S FIRST SET OF INTERROGATORIES
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`TO PETITIONER
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`Pursuant to Rule 33 of the Federal Rules of Civil Procedure and Section 2.120 of the Trademark
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`Rules of Practice of the Unit