DCT
1:17-cv-00613
VDF Futureceuticals Inc v. Coffeefruit Pure LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VDF Futureceuticals, Inc. (Illinois)
- Defendant: Coffeefruit Pure LLC (Hawaii) and Coffee Fruit Holdings PTY LTD (Australia)
- Plaintiff’s Counsel: McCorriston Miller Mukai MacKinnon LLP; Goldberg Kohn Ltd.
- Case Identification: 1:17-cv-00613, D. Haw., 08/30/2018
- Venue Allegations: Venue is asserted in the District of Hawaii based on Defendant Coffeefruit Pure LLC being a Hawaii company and both defendants allegedly transacting business, making and selling products, and engaging in infringing activities with contacts within the district.
- Core Dispute: Plaintiff alleges that Defendants’ coffee fruit extract products infringe patents related to methods for producing low-mycotoxin food products from coffee cherries and the resulting products themselves.
- Technical Context: The technology concerns processing coffee cherries—the fruit surrounding the coffee bean, traditionally a waste product prone to toxic mold—into safe, commercially viable food ingredients rich in antioxidants.
- Key Procedural History: The complaint alleges that a key individual for the Defendants, Mr. Muller, had pre-suit knowledge of the patents-in-suit via a 2015 notice letter sent to his prior employer. Additionally, U.S. Patent No. 7,807,205 was the subject of an Ex Parte Reexamination, with a certificate issuing in 2013 that confirmed the patentability of claims 1-16 and found amended and new claims patentable.
Case Timeline
| Date | Event |
|---|---|
| 2003-04-16 | Earliest Priority Date for all Patents-in-Suit |
| 2005-01-01 | Plaintiff launches its CoffeeBerry® line of products |
| 2010-10-05 | U.S. Patent No. 7,807,205 Issues |
| 2013-07-11 | Ex Parte Reexamination Certificate issued for '205 Patent |
| 2013-12-03 | U.S. Patent No. 8,597,710 Issues |
| 2013-12-10 | U.S. Patent No. 8,603,564 Issues |
| 2015-02-04 | Plaintiff sends notice letter to Defendants' alleged predecessor |
| 2016-02-01 | Defendants allegedly begin joint venture discussions |
| 2017-09-01 | Defendants market products at Supply Side West trade show |
| 2018-02-13 | U.S. Patent No. 9,888,702 Issues |
| 2018-08-30 | First Amended 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, "Methods for Coffee Cherry Products", issued October 5, 2010.
The Invention Explained
- Problem Addressed: The patent's background section explains that coffee cherries, particularly the pulp and husk surrounding the bean, rapidly spoil after harvest and almost always contain significant levels of hazardous mycotoxins, rendering them traditionally unusable as food products ( Compl. ¶¶ 36-38; ’205 Patent, col. 1:41-49). These byproducts were often viewed as "unusable, hazardous, or of negligible value" ('205 Patent, col. 2:20-22).
- The Patented Solution: The invention provides methods to process coffee cherries, especially "sub-ripe" cherries, into low-mycotoxin food products. A central element of the solution is "quick-drying" the whole cherries shortly after harvest to limit the growth of molds and fungi that produce mycotoxins, thereby creating a safe ingredient for human consumption (’205 Patent, Abstract; col. 4:55-65). Figure 3 of the patent illustrates a process flow for grinding the cherry, extracting it with a solvent, and then separating various components like polysaccharides and polyphenolic acids (’205 Patent, Fig. 3).
- Technical Importance: The invention created a way to safely utilize the entire coffee cherry, transforming what was an agricultural waste stream into a valuable source of nutrients like antioxidants for the food and supplement industries (Compl. ¶41).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" of the '205 Patent, with independent claims 1, 13, and 17 being method claims (Compl. ¶88).
- Independent Claim 1 (as reexamined) includes these essential elements:
- Adding an extract of whole coffee cherries or portions thereof (pulp, mucilage, hull) to a food product.
- The extract is prepared by comminuting the cherries and performing a solvent extraction with an aqueous solvent.
- The starting coffee cherries have mycotoxin levels below specified limits (e.g., <20 ppb total aflatoxins).
- The cherries are optionally "quick-dried" within 48 hours of harvest to a residual water content of ≤ 20 wt%.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 8,597,710 - "Low-Mycotoxin Coffee Cherry Products"
- Patent Identification: U.S. Patent No. 8,597,710, "Low-Mycotoxin Coffee Cherry Products", issued December 3, 2013.
The Invention Explained
- Problem Addressed: As with the related ’205 Patent, this patent addresses the problem of mycotoxin contamination in coffee cherries, which historically prevented their use in food products (’710 Patent, col. 1:33-44).
- The Patented Solution: Rather than claiming only the method, this patent claims the resulting low-mycotoxin products. The invention is a food product (such as a nutritional supplement or beverage) that contains a preparation of quick-dried coffee cherry, where the preparation is characterized by having mycotoxin levels below specific, safe thresholds (’710 Patent, Abstract; col. 3:56-64). This provides protection for the composition itself, not just the process of making it.
- Technical Importance: This patent gives proprietary rights over the end-product—the low-mycotoxin coffee cherry ingredient—which is a key commercial deliverable for food and supplement manufacturers (Compl. ¶43).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the '710 Patent (Compl. ¶100).
- Independent Claim 1 includes these essential elements:
- A method of producing a food product by adding a low-mycotoxin extract of whole coffee cherries (specifically the pulp) to a solid food product, juice, or carbonated beverage.
- The extract is prepared by comminuting dried cherries and performing a solvent extraction.
- The final extract must have mycotoxin levels below specified limits (e.g., <20 ppb total aflatoxins, <5 ppb total ochratoxins) without needing a separate detoxification step.
- The complaint reserves the right to assert additional claims.
Multi-Patent Capsule: U.S. Patent No. 8,603,564 - "Low-Mycotoxin Coffee Cherry Products"
- Patent Identification: U.S. Patent No. 8,603,564, "Low-Mycotoxin Coffee Cherry Products", issued December 10, 2013.
- Technology Synopsis: This patent claims low-mycotoxin extracts and powders derived from coffee cherry pulp. The invention covers the extract itself, characterized by having specific low mycotoxin levels, and the process of making it, which involves drying the cherry pulp under a protocol that limits microbial growth to achieve the specified safety profile (’564 Patent, Claim 1).
- Asserted Claims: The complaint asserts "one or more claims," and the patent includes independent claims 1, 5, 8, and 9 (Compl. ¶112).
- Accused Features: The "Coffeefruit Powder" and "Coffeefruit Liquid" products are accused of being low-mycotoxin extracts made from coffee cherry pulp, directly reading on the claims of the ’564 patent (Compl. ¶¶ 53, 59, 69).
Multi-Patent Capsule: U.S. Patent No. 9,888,702 - "Low-Mycotoxin Coffee Cherry Products"
- Patent Identification: U.S. Patent No. 9,888,702, "Low-Mycotoxin Coffee Cherry Products", issued February 13, 2018.
- Technology Synopsis: This patent is directed to a "dry ingredient for a food product." The claims cover comminuted or ground portions of quick-dried coffee cherries (pulp, mucilage, and hull) that have a defined low-mycotoxin profile and a specified particle size suitable for inclusion in food products (’702 Patent, Claim 1).
- Asserted Claims: The complaint asserts "one or more claims," and the patent includes independent claims 1, 8, and 17 (Compl. ¶124).
- Accused Features: The "Coffeefruit Powder" is alleged to be a comminuted, dry ingredient made from coffee cherry portions, fitting the description of the claimed invention (Compl. ¶¶ 53, 63, 73).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Coffeefruit Powder" and "Coffeefruit Liquid" extracts (Compl. ¶53, fn. 1).
Functionality and Market Context
The complaint alleges these products are coffee fruit extracts manufactured from whole coffee cherries or their pulp (Compl. ¶¶ 59, 69). The manufacturing process is alleged to involve quick processing and drying after harvest to prevent decay and mycotoxin formation (Compl. ¶¶ 65, 75). A screenshot provided in the complaint from the Defendants' marketing materials states, "CoffeeFruit Pure is immediately processed before the fruit is allowed to ferment and decay, which can produce harmful mycotoxins" (Compl. Ex. 8). The complaint further alleges the process uses a "water-based extraction process" (Compl. ¶¶ 66, 76). The products are marketed as antioxidant ingredients for dietary supplements, functional foods, beverages, and skin care products (Compl. ¶58). A screenshot from the Defendants' website shows the products advertised as being "free of mycotoxins" (Compl. Ex. 5). The complaint alleges that its own testing of a sample of the "CoffeeFruit Powder" confirmed mycotoxin levels below the thresholds specified in the patents-in-suit (Compl. ¶62).
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,807,205 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| adding an extract of whole coffee cherries or portions thereof to a food product for human consumption; wherein the portion of the coffee cherry is selected from the group consisting of pulp, mucilage, and hull | Defendants are alleged to make, use, and sell coffee fruit extracts ("Coffeefruit Powder" and "Coffeefruit Liquid") derived from whole coffee cherries and/or the pulp for use in food and beverage products. | ¶¶ 53, 58, 59, 69 | col. 15:35-47 |
| wherein the extract is prepared from comminuting whole coffee cherries or portions thereof and solvent extraction... with an aqueous solvent | Defendants' process allegedly involves comminuting the coffee fruit and using a "water-based extraction process," where water is an aqueous solvent. | ¶¶ 63, 66, 73, 76 | col. 15:38-42 |
| wherein the whole coffee cherries or portions thereof are optionally quick-dried within 48 hours after harvest to a residual water content of equal or less than 20 wt % | Defendants are alleged to dry and/or process the coffee fruit "quickly, including within 48 hours after harvest." | ¶¶ 65, 75 | col. 15:48-51 |
| 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 | Defendants' products are advertised as "free of mycotoxins," and Plaintiff's own testing allegedly confirmed mycotoxin levels below the claimed thresholds. | ¶¶ 61, 62, 71, 72 | col. 15:42-45 |
U.S. Patent No. 8,597,710 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of producing a food product, comprising: adding a low-mycotoxin extract of whole coffee cherries or portions thereof to a food product... wherein the food product is a solid food product or a juice or a carbonated beverage | Defendants' extracts are intended for combination with food products, including dietary supplements (solid) and beverages. | ¶58 | col. 12:15-24 |
| wherein the low-mycotoxin extract is prepared from comminuting dried whole coffee cherries or portions thereof and solvent extraction from a suspension... and an aqueous solvent; wherein the portion of the coffee cherry is pulp of the coffee cherry | The accused process allegedly uses dried coffee cherry pulp, which is comminuted and extracted with water, an aqueous solvent. | ¶¶ 59, 63, 64, 66, 69 | col. 12:20-33 |
| wherein the low-mycotoxin extract has mycotoxin level without further mycotoxin detoxification of less than 20 ppb for total aflatoxins, of less than 5 ppb for total ochratoxins, and of less than 5 ppm for total fumonisins | Defendants' marketing materials claim the products are "free of mycotoxins," and Plaintiff's testing allegedly confirms the levels are below the claimed thresholds. | ¶¶ 61, 62, 71, 72 | col. 12:25-30 |
- Identified Points of Contention:
- Scope Questions: A potential issue is whether the term "extract," as used in the patents, reads on the Defendants' "Coffeefruit Powder." While the complaint alleges the powder is an extract, Defendants may argue it is simply a dried, ground fruit product, raising a question of claim scope. A product specification for the accused liquid product is cited as evidence that filtration occurred, which may support the "extract" characterization (Compl. Ex. 11).
- Technical Questions: The infringement allegations rely heavily on Defendants' marketing statements (e.g., processing "quickly," "free of mycotoxins"). A key factual question will be what the accused manufacturing process entails in practice. Discovery will be needed to determine if the actual processing times, temperatures, and methods align with the limitations of the asserted claims, or if there is a technical mismatch between the patented methods and the accused process.
V. Key Claim Terms for Construction
The Term: "quick-dried"
Context and Importance: This term is fundamental to the patents' core inventive concept of preventing mycotoxin formation by rapidly removing moisture. The definition of "quick-dried" will be critical for determining whether the Defendants' process, which is allegedly performed "quickly" and "within 48 hours," infringes the method and product-by-process claims (Compl. ¶¶ 65, 75).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '205 patent defines the term 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 specified low mycotoxin levels ('205 Patent, col. 4:55-62). This could support an interpretation where any process achieving the claimed low-mycotoxin result qualifies as "quick-dried."
- Evidence for a Narrower Interpretation: The specification also provides specific time and moisture parameters, stating that "quick-dried coffee cherries are typically dried within 0-48 hours (and more preferably between 6-24 hours) of the harvest such that the residual water content is no higher than 20% (wt/wt), and more typically no higher than 6-12% (wt/wt)" ('205 Patent, col. 4:62-65). This language may support a narrower construction requiring satisfaction of these specific temporal or moisture-content conditions.
The Term: "sub-ripe coffee cherry"
Context and Importance: The specifications of the patents-in-suit repeatedly emphasize the advantages of using "sub-ripe" cherries to achieve a low-mycotoxin product with desirable properties ('205 Patent, col. 4:4-8). While not all independent claims are explicitly limited to "sub-ripe" cherries, the construction of this term is important to the overall context of the invention and may become a point of dispute if Defendants' process uses cherries of a different ripeness. Practitioners may focus on this term because it is a non-standard term of art defined with both functional and physical characteristics.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '205 patent offers a functional definition: "a coffee cherry that has not yet reached the ripe stage, which is generally characterized by susceptibility to or presence of a fungal infection and/or presence of mycotoxins" ('205 Patent, col. 4:25-29). This suggests any pre-ripe cherry could qualify.
- Evidence for a Narrower Interpretation: The same patent provides a specific physical description: a sub-ripe cherry will "typically exhibit at least some green color (at least 5%, more typically at least 10%)" ('205 Patent, col. 4:42-44). This could support an argument that a specific, visually verifiable amount of green color is a required characteristic.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement.
- Willful Infringement: The complaint alleges willful infringement for all patents-in-suit. The basis for pre-suit willfulness is the allegation that a key employee of the Defendants, Mr. Muller, was previously employed by Konaberry LLC, a company that received a notice letter from the Plaintiff regarding its coffee fruit patents in February 2015. The complaint alleges that Mr. Muller's knowledge is imputed to the Defendants' joint venture, which began after the notice was sent (Compl. ¶¶ 81-84). Post-suit willfulness is based on notice from the filing of the lawsuit itself (Compl. ¶85).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof versus marketing claims: Can the Plaintiff develop factual evidence through discovery to prove that Defendants' actual manufacturing process meets the specific time, temperature, and procedural limitations of the asserted method claims, or will the case turn on the interpretation of Defendants' advertising slogans like "immediately processed"?
- A second key question will be one of claim construction and scope: Will the court adopt the functional, results-oriented definitions for terms like "quick-dried" found in the patent specifications, or will it require adherence to the specific time and physical-attribute parameters described in the preferred embodiments, potentially narrowing the scope of the claims?
- Finally, the willfulness claim will raise a significant legal question of imputed knowledge: Can knowledge of patents, allegedly obtained by an individual (Mr. Muller) while at a predecessor company, be legally imputed to a new and separate joint venture to establish pre-suit knowledge and willful infringement from the venture's inception?