The pair are at odds over the validity of three patents awarded to VDF FutureCeuticals in 2010 covering its Coffeeberry line of antioxidant-packed coffee fruit ingredients.
The patents - which KonaRed claims are “flawed and invalid” - are at the center of a patent infringement case filed by VDF against KonaRed’s parent company Sandwich Isles Trading Company.
The lawsuit was temporarily put on hold after KonaRed successfully petitioned to get all three patents re-examined by the USPTO.
KonaRed: This certainly vindicates our position
Last week, however, things moved on again as the USPTO issued advisory actions indicating that all three patents were invalid, but gave VDF leave to appeal the decision.
KonaRed immediately issued a press release entitled ‘KonaRed Prevails in Patent Fight Against VDF FutureCeuticals’ and said it hoped the news would reassure customers that were “waiting for the outcome of the litigation before purchasing KonaRed ingredients for their products, many of which were already in formulation when the litigation began”.
CEO Shaun Roberts added: "This certainly vindicates our position of non-infringement. We believe the market is very strong for quality, Hawai’i-originated KonaRed ingredients, and we will aggressively pursue the enormous opportunities that await us.”
Meanwhile, KonaRed may now pursue 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”, he added.
VDF FutureCeuticals: We have every intention of taking our partial victory to a complete victory in the next round
However, bosses at VDF FC insisted they were “confident that informed third parties will understand that this process is by no means completed”.
General manager John Hunter added:“We are not overly disappointed that we did not achieve complete victory during this first roundof governmental review; in fact, we are extremely satisfied that the USPTO accepted importantparts of our analysis, and that it agreed to withdraw some of its bases for rejection.”
There is a well-established process for USPTO re-examination review, he noted, “and we certainly do not intend to stop at this juncture after having made real progress”.
Contrary to its press release, KonaRed has in no way ‘prevailed’
He added: “We have every intention of taking our partial victory to a complete victory in the next round. When that occurs, we fully intend to enforce all patent rights affirmed by the USPTO against all infringers, including those who contribute to infringement.
“Contrary to its press release, KonaRed has in no way ‘prevailed’ and its position regarding ‘non-infringement’ is at best uncertain.”
The patents in question
KonaRed Coffee Fruit beverages contain a blend of antioxidant-packed Hawaiian Kona coffee fruit and other fruits.
VDF FC makes a wide range of fruit-, vegetable-, bean- and grain-based nutraceuticals including its proprietary CoffeeBerry range of ingredients derived from the fruit of the coffee plant.
The patents which are the subject of the lawsuit, are:
#7,754,263 : Methods for Coffee Cherry Products, issued in July 2010.
#7,807,205 : Methods for Coffee Cherry Products, issued in October 2010.
#7,815,959 : Low-Mycotoxin Coffee Cherry Products, issued in October 2010.