United States District Court, W.D. Washington, Seattle
Davis
Wright Tremaine LLP Attorneys for Defendant Washington State
University Stuart R. Dunwoody, WSBA #13948
Wilson
Sonsini Goodrich & Rosati Attorneys for Plaintiff
Phytelligence, Inc. Barry M. Kaplan, WSBA #8661
PERMANENT INJUNCTION AND ORDER ON THE COUNTERCLAIM OF
WASHINGTON STATE UNIVERSITY
RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE
Pursuant
to the stipulation of the parties, the Court enters this
Permanent Injunction and Order on the claims for relief
asserted in the Counterclaim of Defendant Washington State
University (Dkt No. 1-2 at 5-14).
1. As
used in this Permanent Injunction and Order, the term
“Enjoined Persons” refers to (a) Plaintiff
Phytelligence, Inc., (“Phytelligence”); (b) the
officers, agents, servants, and employees of Phytelligence;
and (c) other persons who are in active concert or
participation with the persons described in (a) and (b).
2. As
used in this Permanent Injunction and Order, the term
“WA 38” refers to the apple cultivar described
and claimed in United States Plant Patent No. 24, 210.
3.
Effective immediately, except to the extent permitted by
Paragraph 5 of this Permanent Injunction and Order, the
Enjoined Persons are permanently enjoined from (a) asexually
reproducing WA 38 plants throughout the United States; (b)
using, offering for sale, or selling asexually reproduced WA
38 plants, or any of their parts, throughout the United
States; and (c) importing asexually reproduced WA 38 plants,
or any parts thereof, into the United States. The
restrictions imposed by this Paragraph 3 shall cease upon
expiration of United States Plant Patent No. 24, 210.
4.
Notwithstanding Paragraph 3 of this Permanent Injunction and
Order, an Enjoined Person may engage in any conduct with
respect to WA 38 plants that is permitted: (a) pursuant to
the terms of a license granted by the owner of United States
Plant Patent No. 24, 210; (b) pursuant to the terms of a
sublicense granted by a licensee or sublicensee of United
States Plant Patent No. 24, 210 that has authority to grant
such a sublicense; or (c) to be performed by any member of
the general public without a license. In addition,
Phytelligence may continue to retain possession of WA 38
plants and plant parts that are currently in its possession
until Phytelligence is required to return or destroy such WA
38 plants and plant parts pursuant to Paragraph 7 of this
Permanent Injunction and Order.
5.
Effective immediately, except to the extent permitted by
Paragraph 6 of this Permanent Injunction and Order, the
Enjoined Persons are permanently enjoined from using the term
COSMIC CRISP, or any term confusingly similar to that term,
as a trademark or service mark in connection with the sale,
offering for sale, distribution, or advertising of any goods
or services.
6.
Notwithstanding Paragraph 5 of this Permanent Injunction and
Order, an Enjoined Person may use the term COSMIC CRISP, or
any term confusingly similar to that term, to the extent such
use is permitted: (a) pursuant to the terms of a license
granted by the owner of United States Trademark Registration
No. 5, 330, 199; (b) pursuant to the terms of a sublicense
granted by a licensee or sublicensee of United States
Trademark Registration No. 5, 330, 199 that has authority to
grant such a sublicense; or (c) by any member of the general
public without a license, including under the doctrine of
nominative fair use.
7. If
the Court's Order Granting Defendant's Motion for
Summary Judgment (Dkt. No. 96) is affirmed in all respects on
appeal, within 14 days after all appeals from the Order
Granting Defendant's Motion for Summary Judgment have
been exhausted, Phytelligence shall (a) destroy or return to
Washington State University all WA 38 plants and plant parts
in its possession, custody, or control; and (b) file with the
Court a statement signed under penalty of perjury by a
managing agent of Phytelligence stating Phytelligence has
complied with the requirements of Paragraph 7 of this
Permanent Injunction and Order.
8. The
Parties' Stipulation Regarding Handling of WA 38 Plants
and Parts During Litigation (Dkt. No. 21) shall remain in
effect until further order of the Court.
9.
Washington State University has waived its request for an
award of damages on its Counterclaim against Phytelligence.
Accordingly, no damages are awarded to Washington State
University on its Counterclaim.
10.
Subject to the reservation of Phytelligence's right to
contest jurisdiction on appeal, this Court shall retain
jurisdiction over the subject matter and parties for the
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