United States District Court, W.D. Washington
RESPECTIVELY SUBMITTED DAVID A. LOWE TIMOTHY BILLICK JONES
PLLC Attorneys for Plaintiff.
KUNDU MATTHEW CUNNINGHAM KUNDU PLLC Attorneys for Defendants.
P. Donohue United States Magistrate Judge.
James P. Donohue Pursuant to Local Civil Rule
("LCR") 16(h) and this Court's scheduling order
(Dkt. 185), Plaintiff Eko Brands, LLC ("Eko") and
Defendants Adrian Rivera Maynez Enterprises, Inc. and Adrian
Rivera (collectively "ARM") respectively submit
their Joint Pretrial Statement.
court has subject matter jurisdiction over this dispute
pursuant to 28 U.S.C. §§ 1331 (Federal Question),
1338(a) (Patent) and § 2201 (Declaratory Judgments). The
Court also has subject matter jurisdiction over this dispute
pursuant to 28 U.S.C. § 1332 as there is diversity of
citizenship and the amount in controversy exceeds $75, 000,
exclusive of costs.
CLAIMS AND DEFENSES
seeks a determination that a number of products sold by ARM
directly infringe claim 8 of U.S. Patent No. 8, 707, 855
("the 855 patent") under 35 U.S.C. § 271(a),
specifically the following ARM products: ECO-FILL DELUXE 2.0
(or ECO-FILL 2.0); ECO-FILL DELUXE (or ECO-FILL 2 PACK
DELUXE), which was sold by ARM in packs of 2; and ECO-FLOW
(Original) "vl" and ECO-FLOW (New) "v2"
("Accused Products"). As used herein, original
claim 9 and amended claim 8 of the 855 patent are understood
as being the same claim and are jointly referred to as
"Amended claim 8." For purposes of this trial, the
parties have stipulated that ARM's Accused Products
directly infringe Amended claim 8. (See Dkt. 208
matter also includes a claim for declaratory judgment of
patent invalidity arising under the Federal Declaratory
Judgment Act, 28 U.S.C. § 2201, et seq. and
under the Patent Laws of the United States, 35 U.S.C § 1
et seq. Eko seeks a declaratory judgment that claims
8 and 19 of ARM's U.S. Patent No. 8, 720, 320 ("the
320 patent") patent are invalid as obvious under 35
seeks an award of damages adequate to compensate it for the
infringement that has occurred, but in no event less than a
reasonable royalty for the use made of the invention by ARM,
together with the prejudgment interest from the date
infringement of the 855 patent issued.
seeks increased damages as permitted under 35 U.S.C. §
seeks a finding that this case is exceptional and a further
award of its attorney's fees and costs as provided in 35
U.S.C. § 285.
seeks a permanent injunction prohibiting ARM's further
infringement of the 855 patent as provided in 35 U.S.C.
seeks a determination that ARM's infringement of the 855
patent has been willful.
an affirmative defense, ARM seeks a determination that its
Accused Products do not directly infringe Amended claim 8 of
disputes the reasonable royalty and the amount of damages
including increased damages that Eko seeks under 35 U.S.C.
denies that this case is exceptional and denies that Eko is
entitled to attorney's fees and costs under 35 U.S.C.
denies that Eko can establish that any direct infringement by
ARM has been willful.
denies that Eko can satisfy the requirements applicable to
its request for injunctive relief.
denies that Eko can satisfy the requirements for obtaining
damages under 35 U.S.C. § 287.
denies that Eko can establish liability for direct
infringement against Mr. Rivera.
Provisional patent application U.S. App. No. 61/484, 150 was
filed on May 9, 2011.
App. No. 13/467, 792 was filed on May 9, 2012, claiming
priority to U.S. App. No. 61/484, 150. This application later
issued as U.S. Patent No. 8, 707, 855 on April 29, 2014, and
lists Mr. Ronald DeMiglio as the first-named inventor.
is the owner of the 855 patent.
Patent Application No. 11/777, 831, which led to the 320
patent was filed on July 13, 2007.
Patent No. 8, 720, 320 issued on May 13, 2014 and names Mr.
Adrian Rivera as the inventor.
Rivera is the owner of the 320 patent.
Accused Products are designed to be used in single-serve
brewing machines such as Keurig machines.
April 19, 2016 ARM filed for ex parte reexamination
of original claims 8, 9, 12, and 13 of the 855 patent in an
effort to invalidate those claims based on ARM's U.S.
Patent No. 8, 720, 320 and U.S. Patent Application No.
the conclusion of the reexamination, claim 8 was amended to
incorporate the content of claim 9 in order to be deemed
patentable over ARM's 320 ...