The long-running patent infringement lawsuit between Sandwich Isles Trading Company, maker of KonaRed coffee fruit beverages, and VDF FutureCeuticals appears to be nearing an end. The United States Patent and Trademark Office (USPTO) recently made its final ruling that VDF’s patent claims against KonaRed – related to coffee fruit production methods and technologies marketed by VDF – are invalid. VDF now has until September to appeal the USPTO’s decision.
Shaun Roberts, the founder and CEO of KonaRed, called VDF’s lawsuit baseless and frivolous and expressed relief at the USPTO’s ruling.
“We not in violation of anything and never were,” Roberts said. “We’ve offered to settle numerous times and start working together, and they’ve been unwilling to do that. And I’m not just going to lay down.”
Roberts said that KonaRed is now moving 20,000 cases of its coffee fruit drinks in major retailers including Ralph’s, Safeway, and Albertson’s throughout Hawaii, Southern California, as well as along the West Coast and New York. He expects that number to double in three months with new distribution in over 1,000 new stores.
Here is KonaRed’s press release regarding the USPTO’s recent ruling on VDF’s patent claims:
KALAHEO, Hawaii — The United States Patent and Trademark Office (USPTO) ruled VDF FurtureCeuticals‘s patent claims against KonaRed were invalid. The process of patent re-examination was initiated as a response to the lawsuit that was filed in the U.S. District Court for the District of Hawaii and served upon Sandwich Isles Trading Company, SITC, (KonaRed’s parent company) by VDF FutureCeuticals.
The sequence of legal events before the USPTO were as follows:
- October 2011: A SITC Request for Reexamination was filed against VDF Patent Nos. 7,807,205; 7,754,263; and 7,815,959.
- January 2012: The USPTO issued an Office Action in each of the three reexaminations rejecting all claims in regards to all three VDF patents based on both lack of novelty and obviousness.
- February 2012: VDF responded to the three Office Actions and added amended claims to each patent that it claimed were narrower than the rejected claims.
- May 2012: The USPTO nevertheless issued a Final Office Action rejecting all claims in all three VDF patents, including the newly amended claims.
- June 2012: VDF objected to the three Final Office Actions, contending that the finality of the rejections was premature. VDF also further amended its claims.
- June 2012: The USPTO issued Advisory Actions affirming the finality of the Office Actions and requiring VDF to file an appeal of the USPTO’s decisions or face cancellation of all three VDF patents.
In contrast with the USPTO’s invalidation of VDF’s patents, which casts doubt on the validity of VDF’s claims of patent infringement in the Hawaii court action, KonaRed may pursue its counterclaims against VDF for tortious interference with its business, and seek restitution of its legal expenses in light of VDF’s threats and protracted litigation based upon three invalid patents.