KonaRed's patent fight with VDF FutureCeuticals has come to a critical juncture with the United States Patent and Trademark Office’s (USPTO’s) recent Advisory Actions confirming the invalidity of all patent claims of all three patents of VDF FutureCeuticals at issue. "This certainly vindicates our position of non-infringement," said KonaRed CEO Shaun Roberts.
The process of patent re-examination was initiated as a response to the unwarranted lawsuit that was filed in the U.S. District Court for the District of Hawai’i and served upon Sandwich Isles Trading Company, SITC, (KonaRed’s parent company) by VDF FutureCeuticals.
The sequence of legal events before the USPTO 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 great 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.
KonaRed looks forward to doing business with all its customers who 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. “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,” said Mr. Roberts.