DCT

1:23-cv-00347

VDF Futureceuticals Inc v. Applied Food Sciences Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00347, D. Colo., 02/06/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Colorado because Defendant maintains a regular and established place of business in the district, including physical office locations in Boulder and Longmont, and has committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s coffee fruit extract ingredients infringe six patents related to methods for producing low-mycotoxin coffee cherry products and the resulting products themselves.
  • Technical Context: The technology concerns processes for converting raw coffee cherries—a part of the coffee harvest traditionally discarded as waste—into safe, commercially viable food ingredients with low levels of naturally occurring toxins (mycotoxins).
  • Key Procedural History: The complaint notes that U.S. Patent Nos. 7,807,205, 7,815,959, and 7,754,263 each successfully underwent Ex Parte Reexamination at the U.S. Patent and Trademark Office. This post-grant review, in which the patent owner’s claims are re-evaluated against prior art, may be presented by the plaintiff to reinforce the patents' presumption of validity.

Case Timeline

Date Event
2003-04-16 Earliest Priority Date for all Patents-in-Suit
2005-01-01 Plaintiff VDF FutureCeuticals launched its CoffeeBerry® product line
2010-07-13 U.S. Patent No. 7,754,263 Issued
2010-10-05 U.S. Patent No. 7,807,205 Issued
2010-10-19 U.S. Patent No. 7,815,959 Issued
2013-07-11 Reexamination Certificate Issued for ’205 Patent
2013-07-17 Reexamination Certificate Issued for ’959 Patent
2013-07-25 Reexamination Certificate Issued for ’263 Patent
2013-12-03 U.S. Patent No. 8,597,710 Issued
2013-12-10 U.S. Patent No. 8,603,564 Issued
2013-12-10 U.S. Patent No. 8,603,563 Issued
2023-02-06 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,807,205 - "Methods for Coffee Cherry Products"

  • Patent Identification: U.S. Patent No. 7,807,205, entitled “Methods for Coffee Cherry Products,” issued on October 5, 2010 (’205 Patent).

The Invention Explained

  • Problem Addressed: The patent’s background section describes how coffee cherries—specifically the pulp, mucilage, and hull surrounding the coffee bean—have historically been discarded as waste products (Compl. ¶10; ’205 Patent, col. 2:10-20). This is because they tend to spoil rapidly in the presence of molds and fungi, leading to the production of significant levels of hazardous mycotoxins that make them “unusable, hazardous, or of negligible value” for consumption (Compl. ¶18; ’205 Patent, col. 2:30-33, col. 2:41-47).
  • The Patented Solution: The invention provides methods for creating safe, low-mycotoxin food products from coffee cherries. The core of the solution involves harvesting cherries at a specific “sub-ripe” stage and then “quick-drying” them to limit the growth of molds and fungi, thereby preventing mycotoxin formation (’205 Patent, Abstract; col. 3:20-30). This process transforms the coffee cherry from a hazardous waste stream into a stable, consumable food ingredient that retains beneficial nutrients like polyphenols (’205 Patent, col. 3:27-30).
  • Technical Importance: The invention created a method to unlock the nutritional value of a large-volume agricultural byproduct that was previously considered waste, paving the way for a new category of food ingredients (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims of the ’205 Patent (Compl. ¶45). Independent claim 1 is representative of the patent's method claims.
  • Independent Claim 1: A method of producing a food product, comprising:
    • Adding an extract of whole coffee cherries or portions thereof to a food product for human consumption;
    • Wherein the extract is prepared from comminuting whole coffee cherries or portions thereof and solvent extraction of the comminuted cherries; and
    • Wherein the coffee cherries or portions thereof have a mycotoxin level of less than 20 ppb for total aflatoxins, of less than 10 ppb for total ochratoxins, and of less than 5 ppm for total fumonisins.

U.S. Patent No. 8,597,710 - "Low-Mycotoxin Coffee Cherry Products"

  • Patent Identification: U.S. Patent No. 8,597,710, entitled “Low-Mycotoxin Coffee Cherry Products,” issued on December 3, 2013 (’710 Patent).

The Invention Explained

  • Problem Addressed: Similar to the ’205 Patent, this patent addresses the technical challenge of mycotoxin contamination in coffee cherry byproducts, which historically prevented their use in food products (Compl. ¶¶11-12; ’959 Patent, col. 2:32-51).
  • The Patented Solution: Rather than claiming a method of production, this patent family claims the end product itself: a food product or extract defined by its key safety characteristic—an extremely low concentration of specific mycotoxins (’710 Patent, Abstract). The specification teaches that this low-mycotoxin state is achieved by harvesting the cherries at a "sub-ripe" stage and using a "quick-dried" protocol that prevents microbial spoilage (’959 Patent, col. 3:40-62).
  • Technical Importance: This patent protects the novel food ingredient itself, defined by its quantified safety profile, which distinguishes it from prior art coffee cherry materials that were typically contaminated with high levels of mycotoxins (Compl. ¶¶12-13).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims of the ’710 Patent (Compl. ¶52). Because the text of the ’710 Patent is not provided, representative independent claim 1 from the closely related and provided U.S. Patent No. 7,815,959 is analyzed.

  • Independent Claim 1 (of ’959 Patent): An extract for use in combination with a food product for human use, prepared by the steps of:

    • Harvesting a plurality of whole coffee cherries and drying them under a protocol that limits microbial growth;
    • Such that the dried cherries exhibit mycotoxin levels below specified limits (20 ppb for total aflatoxins, 5 ppm for total fumonisins, 5 ppm for total vomitoxins, and 5 ppb for ochratoxins);
    • Comminuting the whole dried coffee cherries;
    • Combining the comminuted cherries with a solvent to form an extraction mixture; and
    • Filtering the extraction mixture to produce an extract.

  • Multi-Patent Capsule: U.S. Patent No. 8,603,564

    • Patent Identification: U.S. Patent No. 8,603,564, "Low-Mycotoxin Coffee Cherry Products," issued December 10, 2013 (’564 Patent) (Compl. ¶24).
    • Technology Synopsis: This patent claims methods of making low-mycotoxin coffee cherry products and the resulting compositions, focusing on processing steps such as harvesting and drying to achieve specific, safe mycotoxin levels without a separate detoxification step.
    • Asserted Claims: One or more claims (Compl. ¶59).
    • Accused Features: The AFS Extract is accused of being a product made by the claimed methods and possessing the claimed low-mycotoxin characteristics (Compl. ¶¶34-41).

  • Multi-Patent Capsule: U.S. Patent No. 7,815,959

    • Patent Identification: U.S. Patent No. 7,815,959, "Low-Mycotoxin Coffee Cherry Products," issued October 19, 2010 (’959 Patent) (Compl. ¶25).
    • Technology Synopsis: This patent claims an extract for human consumption defined by the process used to make it, which includes harvesting and drying coffee cherries under a protocol that limits microbial growth to achieve specified low levels of mycotoxins.
    • Asserted Claims: One or more claims (Compl. ¶65).
    • Accused Features: The AFS Extract is accused of being made according to the claimed process steps, resulting in a product with the claimed low-mycotoxin profile (Compl. ¶¶34-41).

  • Multi-Patent Capsule: U.S. Patent No. 7,754,263

    • Patent Identification: U.S. Patent No. 7,754,263, "Methods For Coffee Cherry Products," issued July 13, 2010 (’263 Patent) (Compl. ¶27).
    • Technology Synopsis: This patent claims methods of producing food products that involve adding an extract made from comminuted, optionally quick-dried whole coffee cherries that meet specific mycotoxin limits.
    • Asserted Claims: One or more claims (Compl. ¶71).
    • Accused Features: The AFS Extract is accused of being an extract made and intended for use in food products in a manner that infringes the claimed methods (Compl. ¶¶33-34, 45).

  • Multi-Patent Capsule: U.S. Patent No. 8,603,563

    • Patent Identification: U.S. Patent No. 8,603,563, "Methods For Coffee Cherry Products," issued December 10, 2013 (’563 Patent) (Compl. ¶29).
    • Technology Synopsis: This patent claims methods for producing a powder or extract from coffee cherries by processing them in a way that achieves low mycotoxin levels without requiring a separate, affirmative mycotoxin detoxification step.
    • Asserted Claims: One or more claims (Compl. ¶77).
    • Accused Features: The AFS Extract is accused of being manufactured by the claimed methods (Compl. ¶¶34-41).

III. The Accused Instrumentality

Product Identification

  • The accused products are Defendant’s coffee fruit extracts, sold under the names “CoffeeFruit Cascara Coffee Cherry Extract” and “CoffeeNectar Cascara Superfruit,” collectively identified as the “AFS Extract” (Compl. ¶32).

Functionality and Market Context

  • The AFS Extract is marketed as a food ingredient for a “wide range of product applications” including juices, snacks, baked goods, and beverages (Compl. ¶33). The complaint alleges it is manufactured from “whole coffee cherries or portions thereof,” specifically an “extract of the outer coffee cherry skin, pulp and mucilage” (Compl. ¶34). Plaintiff alleges the manufacturing process involves comminuting the coffee fruit, using a solvent for extraction, and then filtering and dehydrating the mixture to produce a powder (Compl. ¶¶37-40). A central allegation is that the AFS Extract meets specific low-mycotoxin limitations because the source coffee fruit was dried using a protocol that limits microbial growth (Compl. ¶¶35-36). A table from the accused product's specification sheet details its mycotoxin limits for various substances, including aflatoxins and ochratoxins (Compl. ¶35).

IV. Analysis of Infringement Allegations

’205 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of producing a food product, comprising: adding an extract of whole coffee cherries or portions thereof to a food product for human consumption... The AFS Extract is intended for use as an ingredient in food products and beverages. ¶33 col. 15:13-16
wherein the extract is prepared from comminuting whole coffee cherries or portions thereof... AFS allegedly manufactures its extract by comminuting coffee fruit to facilitate the extraction process. ¶37 col. 7:6-8
and solvent extraction of the comminuted coffee cherries or portions thereof with an aqueous solvent... AFS allegedly uses a solvent, evidenced by its product being called an "extract," which involves contacting the comminuted cherries with a solvent. ¶38 col. 7:16-19
wherein the coffee cherries or portions thereof have a mycotoxin level of less than 20 ppb for total aflatoxins, of less than 10 ppb for total ochratoxins, and of less than 5 ppm for total fumonisins... AFS’s specification sheet allegedly shows mycotoxin levels that meet these claimed limitations. ¶35 col. 4:50-56

’959 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An extract...prepared by the steps of: harvesting a plurality of whole coffee cherries and drying the whole coffee cherries under a protocol that limits microbial growth... The complaint alleges that the coffee fruit used to make the AFS Extract was dried under a protocol that limits microbial growth. ¶36 col. 5:10-16
to an extent such that the dried whole coffee cherries exhibit mycotoxin levels that are below 20 ppb for total aflatoxins, below 5 ppm for total fumonisins, below 5 ppm for total vomitoxins, and below 5 ppb for ochratoxins; AFS’s product specification sheet allegedly demonstrates that the resulting extract meets these mycotoxin limits. ¶35 col. 5:12-16
comminuting the whole dried coffee cherries... AFS allegedly comminutes the coffee fruit to facilitate extraction. ¶37 col. 8:12-14
and combining the comminuted dried coffee cherries with a solvent to form an extraction mixture; and AFS allegedly uses a solvent in its process, which is inherent in creating an "extract." ¶38 col. 8:14-19
filtering the extraction mixture to produce an extract... The complaint alleges that AFS filters the mixture as part of the process to create a powder extract. ¶40 col. 8:3-4
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint makes several inferential allegations about Defendant's manufacturing process (e.g., that it was "dried under a protocol that limits microbial growth," that it is "filtered") without providing direct evidence of the actual steps performed (Compl. ¶¶36, 40). A primary point of dispute may be what evidence exists to substantiate these claims about an otherwise proprietary process.
    • Scope Questions: The complaint alleges the AFS Extract meets the claimed limit for vomitoxins ("below 5 ppm") based on a general marketing claim that the product is "void of microbial contaminants" (Compl. ¶35). This raises the question of whether a qualitative marketing statement can satisfy a specific quantitative claim limitation, or if this represents a failure of proof for that element.

V. Key Claim Terms for Construction

  • The Term: "protocol that limits microbial growth" (’959 Patent, claim 1)
  • Context and Importance: This term is a critical functional limitation defining the required drying process. Infringement depends on whether Defendant's undisclosed drying method performs this function. Practitioners may focus on this term because its construction will determine whether any drying process that results in low mycotoxins infringes, or only processes with specific parameters (e.g., time, temperature) designed to prevent microbial growth.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent defines "quick-dried" functionally, as drying "under a protocol that limits growth of molds, fungi, and/or yeast to an extent such that the dried coffee cherry will exhibit" the claimed low mycotoxin levels (’205 Patent, col. 5:10-16). This language could support a construction where any process achieving the specified low-mycotoxin result meets the limitation.
    • Evidence for a Narrower Interpretation: The specification provides specific examples of what "quick-drying" entails, including drying "within 0-48 hours" of harvest to a specific residual water content, or using a "dry air drier at about 140° F." (’205 Patent, col. 5:16-21; col. 6:62-65). This could support a narrower construction limited to processes involving rapid, active drying rather than any method that ultimately produces a low-mycotoxin product.

VI. Other Allegations

  • Indirect Infringement: For the method patents (’205, ’263, and ’563 Patents), the complaint alleges infringement under 35 U.S.C. § 271(g) (Compl. ¶¶46, 72, 78). This provision covers the importation, sale, or use of a product made by a process patented in the United States. The allegation suggests Plaintiff may believe the AFS Extract is manufactured outside the U.S. using the patented methods.
  • Willful Infringement: The complaint alleges that Defendant "has long had knowledge of the Patents-In-Suit" and knew or should have known of the high likelihood of infringement (Compl. ¶¶47, 54, 60, 66, 73, 79). This assertion of pre-suit knowledge forms the basis for the willfulness claim, though the complaint does not specify how or when Defendant allegedly became aware of the patents.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of process verification: what factual evidence can Plaintiff obtain and present to demonstrate that Defendant's proprietary manufacturing process includes the specific steps of comminution, solvent extraction, filtering, and—most critically—a drying "protocol that limits microbial growth" as required by the asserted claims?
  • A key evidentiary question will be one of proof of composition: does the allegation regarding vomitoxin levels, which is inferred from a general marketing statement rather than from the product's own technical specification sheet, create a gap in the evidence required to show that the accused product meets every quantitative mycotoxin limitation of the claims?
  • For the asserted method claims, the dispute may turn on an issue of extraterritorial application: if the accused AFS Extract is manufactured abroad, can Plaintiff establish that the foreign process incorporates all steps of the patented U.S. methods, which is the necessary predicate for infringement under 35 U.S.C. § 271(g)?