PROPOSED PRETRIAL ORDER
JAMES P. DONOHUE, Magistrate Judge.
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.
I. JURISDICTION
This 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.
II. CLAIMS AND DEFENSES
1. Eko 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) "v1" 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 (Stipulation)).
2. This 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 U.S.C. § 103.
3. Eko 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.
4. Eko seeks increased damages as permitted under 35 U.S.C. § 284.
5. Eko 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.
6. Eko seeks a permanent injunction prohibiting ARM's further infringement of the 855 patent as provided in 35 U.S.C. § 283.
7. Eko seeks a determination that ARM's infringement of the 855 patent has been willful.
8. As an affirmative defense, ARM seeks a determination that its Accused Products do not directly infringe Amended claim 8 of the 855 patent.
9. ARM disputes the reasonable royalty and the amount of damages including increased damages that Eko seeks under 35 U.S.C. § 284.
10. ARM denies that this case is exceptional and denies that Eko is entitled to attorney's fees and costs under 35 U.S.C. § 285.
11. ARM denies that Eko can establish that any direct infringement by ARM has been willful.
12. ARM denies that Eko can satisfy the requirements applicable to its request for injunctive relief.
13. ARM denies that Eko can satisfy the requirements for obtaining damages under 35 U.S.C. § 287.
14. ARM denies that Eko can establish liability for direct infringement against Mr. Rivera. No individual liability is sought by Eko against Mr. Rivera in his individual capacity. JPD.
III. ADMITTED FACTS
1. Provisional patent application U.S. App. No. 61/484,150 was filed on May 9, 2011.
2. U.S. 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.
3. Eko is the owner of the 855 patent.
4. U.S. Patent Application No. 11/777,831, which led to the 320 patent was filed on July 13, 2007.
5. U.S. Patent No. 8,720,320 issued on May 13, 2014 and names Mr. Adrian Rivera as the inventor.
6. Mr. Rivera is the owner of the 320 patent.
7. The Accused Products are designed to be used in single-serve brewing machines such as Keurig machines.
8. On 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. 2013/0017303.
9. At 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 patent, as well as the 303 application to Robert Vu.
10. The Patent Office issued its reexamination certificate on February 21, 2017.
11. In the reexamination certificate the Patent Office stated that "Claim 8 is determined to be patentable as amended," with the amendments made to claim 8 printed in italics.
12. For purposes of this trial, the parties have stipulated that ARM's Accused Products directly infringe Amended claim 8. (See Dkt. 208 (Stipulation)). ARM reserves its rights and intends to appeal the issue of direct infringement to the Federal Cicuit Court of Appeals.
13. A person having an ordinary level of skill in the art with respect to the field of the invention in Application No. 11/777,831 would be a person having education and training in engineering and food science. This person would have a background in the design of mechanical and hydraulic systems/machines, understanding of materials from the perspective of food safety as well as mechanical properties and manufacturability, and understanding of the nuances of extraction of flavor, caffeine and color from brewable materials such as coffee or tea. One example of such a person would be someone trained as design engineer or engineering designer. The knowledge of brewable materials would typically be found in a person trained in beverage product development or food science. Industry experience of five years or more in the detailed design and development of beverage brewing and dispensing machines would be equivalent to the formal education described above.
14. The scope and content of the prior art related to the 320 patent includes the following references:
a. U.S. Patent No. 3,878,772 to Nordskog ("Nordskog")
b. U.S. Patent No. 6,079,315 to Beaulieu et al. ("Beaulieu")
c. U.S. Patent No. 5,840,189 to Sylvan ("Sylvan")
d. U.S. Patent No. 6,658,989 to Sweeney et al. ("Sweeney")
e. U.S. Patent No. 6,606,938 to Taylor ("Taylor")
f. World Intellectual Property Organization Application WO 2005/092160 Illy Caffe's PCT ("Illy-Caffe's")
IV. ISSUES OF LAW
The following are the issues of law to be determined by the court:
1. Whether claim 8 of ARM's 320 patent is invalid as being obvious under 35 U.S.C. § 103. The parties dispute whether the Court or the jury will make the ultimate determination of obviousness. Eko submits that while the jury may be asked about questions of fact underlying the ultimate question of obviousness, it is not allowed to make the ultimate determination of obviousness, which is a question of law solely for the Court. ARM submits that it is well established that while obviousness is a question of law, the factual underpinnings of obviousness are questions of fact for the jury.
2. Whether claim 19 of ARM's 320 patent is invalid as being obvious under 35 U.S.C. § 103. The parties dispute whether the Court or the jury will make the ultimate determination of obviousness. Eko submits that while the jury may be asked about questions of fact underlying the ultimate question of obviousness, it is not allowed to make the ultimate determination of obviousness, which is a question of law solely for the Court. ARM submits that it is well established that while obviousness is a question of law, the factual underpinnings of obviousness are questions of fact for the jury.
V. EXPERT WITNESSES
Each party shall be limited to one expert witness each on the issues of infringement and validity of the 855 patent (to the extent not foreclosed by the Court's summary judgment order (Dkt. 161)). Each party shall be limited to one expert witness each on the issue of damages.
Expert Contact Information Content of Testimony Will May
Witness Testify Testify
Dr. Laurens BelleQuant Engineering, In his capacity as an expert,
Howle PLLC Dr. Howle will testify as to all X
7813 Dairy Ridge Rd. matters disclosed in his report,
Mebane, NC 27302 supplemental report, rebuttal
report, matters raised on cross-examination
not otherwise
excluded by this Court.
Mr. Drew Alvarez & Marshall, LLC In his capacity as an expert,
Voth 1201 3rd Ave #800 Mr. Voth will testify as to all X
Seattle, WA 98101 matters raised in his expert report,
supplemental report, and matters
raised on cross-examination not
otherwise excluded by this Court.
Mr. Paul PJP Services, LLC In his capacity as an expert,
Phillips 1845 Davison Way Mr. Phillips will testify as to all X
Marietta, GA 30064 relevant matters raised in his expert
report, his rebuttal report, and
matters raised on cross-examination
not otherwise
excluded by this Court.
Dr. Barbara White, Zuckerman, In his capacity as an expert,
C. Luna Warsavsky, Luna & Hunt Dr. Luna will testify as to what X
15490 Ventura Blvd #300 damages Eko would be entitled to
Sherman Oaks, CA 91403 receive, if one or more claims of
the 855 patent are infringed.
IV. OTHER WITNESSES
Eko Contact Information Content of Testimony Will May
Witnesses Testify Testify
Mr. Chris c/o Lowe Graham Jones Mr. Legler will testify on his
Legler 701 Fifth Ave., Suite 4400 personal knowledge of Espresso X
Seattle, WA 98104 Supply, Inc., Eko Brands, LLC
T: 206.381.3300 and the relationship between the
two companies. Mr. Legler will
also testify as to general business
practices and sales practices of the
company concerning Eko's
products. Mr. Legler will also
provide testimony surrounding the
company's efforts in licensing the
855 patent. Further, Mr. Legler will
testify concerning the development
and alterations of Eko's product
packaging and marketing efforts.
He will also testify as to his
understanding of Eko's first
discovery of ARM and its
products. He will discuss his
awareness of Eko's history and
Eko's early efforts to sell the
Ekobrew device.
Ms. Laura c/o Lowe Graham Jones Ms. Sommers is the president and
Sommers 701 Fifth Ave., Suite 4400 founder of Espresso Supply, Inc. X
Seattle, WA 98104 She will be called to provide
T: 206.381.3300 testimony concerning Espresso
Supply's history, the circumstances
surrounding its acquisition of Eko,
and information about the coffee
industry in general. She will
discuss her awareness of Eko's
history and Eko's early efforts to
sell the Ekobrew device.
Mr. Adrian c/o Kundu PLLC Eko intends to call Mr. Rivera to
Rivera 1300 I Street NW, suite discuss his knowledge of the 855 X
400E patent.
Washington, DC 20005
T: 202.749.8372
Mr. Dino c/o Kundu PLLC Eko intends to call Mr. Ditta to
Ditta 1300 I Street NW, suite discuss his knowledge of the 855 X
400E patent prior
Washington, DC 20005
T: 202.749.8372
ARM Contact Information Content of Testimony Will May
Witnesses Testify Testify
Mr. Adrian c/o Kundu PLLC Mr. Rivera has knowledge on the
Rivera 1300 I Street NW, Suite ownership of the 320 patent, the X
400E development of the technology
Washington, DC 20005 contained in the 320 patent,
T:202.749.8372 including technology that existed at
the time the 320 patent application
was filed. Mr. Rivera also has
knowledge of the founding of his
company ARM Enterprises, Inc.,
and the development of ARM's
beverage brewing capsules, as well
as knowledge of the market for
these products. Mr. Rivera also has
knowledge regarding costs, tooling
and development of products that
do not infringe amended claim 8.
Mr. Dino c/o Kundu PLLC Mr. Ditta has knowledge on the
Ditta 1300 I Street NW, Suite technology contained in the 320 X
400E patent, including technology that
Washington DC 20005 existed at the time the 320 patent
T:202.749.8372 application was filed. Mr. Ditta has
knowledge of ARM Enterprises,
including the development of
ARM's products, as well as
knowledge of the market for these
products. Mr. Ditta also has
knowledge regarding costs, tooling
and development of products that
do not infringe amended claim 8
Mr. Robert 21605 NE 73rd Pl, Mr. Bangerter has knowledge of
Bangerter Redmond, WA 98053 development of Eko Brands' X
Keurig 2.0-compatible products.
This testimony goes to the issue of
whether Eko's damages theories
properly apportion patented vs.
non-patented aspects of the
accused products.
Mrs. Jenny 9620 Sunland Place Mrs. Brainard has knowledge of
Brainard Sunland, CA 91040 the Fabulously Functional license
T: 818.442.4486 and the circumstances concerning
Fabulously Functional entering
into a license, as well as
Fabulously Functional's payments
to Eko and profitability of the
company in view of the license.
Christopher c/o Lowe Graham Jones Mr. Legler has information relating
Legler 701 Fifth Ave., Suite 4400 to licensing, including any X
Seattle, WA 98104 royalties received by Eko
T: 206.381.3300
VII. EXHIBITS
Eko reserves all right to amend its exhibit list prior to trial. Eko identifies the following exhibits upon which it may rely to establish its case-in-chief at trial, some of which may be presented electronically:
Ex. No. Admissibility Authenticity
Description Doc ID Stipulated Stipulated
Only
1. Physical exhibit — Ribbon copy of the `855 NA X
patent
2. Copy of U.S. Patent No. 8,707,855 NA X
3. Reexamination certificate of the 855 patent NA X
4. U.S. Patent No. 8,561.524 NA X
5. U.S. Patent No. D677,120 NA X
6. U.S. Patent No. D677,120 NA X
7. US Pat App Pub 2016-0367064 A1 (filed NA X
12-22-2016)
8. US Pat App Pub 2017-0251861 A1 (filed NA X
09-07-2017)
9. ARM US Patent No. 8720320 NA X
10. U.S. Patent Application No. 11/777,831 NA X
11. File History of the 320 patent NA X
12. Physical exhibit — Ekobrew 2.0 device and NA X
cylindrical packaging
13. Photos of Physical exhibit — Ekobrew 2.0 X
device and packaging
14. Physical exhibit — Ekobrew 2.0 black NA X
device and packaging
15. Physical exhibit — Ekobrew 2.0 purple NA X
device and packaging
16. Physical exhibit — Ekobrew 2.0 orange NA X
device and packaging
17. Physical exhibit — Ekobrew Elite device NA X
and packaging
18. Photos of Physical exhibit — Ekobrew Elite X
device and packaging
19. Physical exhibit — ARM Eco-Fill Deluxe NA X
device, green and brown 2-pack with
packaging
20. Photos of ARM Eco-Fill Deluxe deivce, X
green and brown 2-pack with packaging
21. Physical exhibit — ARM Eco-Fill Deluxe NA X
"2.0" purple device and packaging
(purchased by Eko)
22. Photos of Physical exhibit — ARM Eco-Fill X
Deluxe "2.0" purple device and packaging
(purchased by Eko)
23. Physical exhibit — ARM Eco-Flow v1 NA X
device and packaging (purchased by Eko)
24. Photos of Physical exhibit — ARM Eco-Flow X
v1 device and packaging (purchased
by Eko)
25. Physical exhibit — ARM Eco-Flow v2 NA X
device and packaging
26. Photos of Physical exhibit — ARM Eco-Flow X
v2 device and packaging
27. Physical exhibit — ARM EZ-Cup device NA X
and packaging
28. Physical exhibit — ARM EZ-Cup 2.0 NA X
device, with paper filters, and packaging
29. Physical exhibit — ARM Eco-Fill product, NA X
green single, and packaging
30. Physical exhibit — Package of Keurig NA
Disposable K-cups
31. Physical exhibit — Cut-away sample of NA
Keurig Disposable K-Cup (Donut Shop)
32. Photograph of Cut-away sample of Keurig
Disposable K-Cup (Donut Shop)
33. Physical exhibit — Solo Fill K1 product and NA X
packaging
35. Espresso Eko Press Release PR Newswire NA
available at
http://www.prnewswire.com/news-
releases/earth-friendly-wallet-friendly-
ekobrew-joins-bonavita-and-rattleware-in-
the-espresso-supply-inc-catalog-of-
consumer-goods-300178982.html#
36. Eko First Set of Interrogatories to ARM, NA X
10-30-2015
37. Eko First Set RFPs to ARM, 10-30-2015 NA X
38. ARM Responses to Eko's Interrogatories, NA X
12-1-2015
39. ARM Responses to Eko's Requests for NA X
Production, 12-1-2015
40. ARM Retailer Summary Presentation ARMLA-APR24-000039-ARMLA-APR24-000088 X
41. Adrian Rivera Responses to Eko's First Set NA X
of Interrogatories, 04-12-2017 (Case No
2:16-cv-04676)
42. ARM WalMart Analysis ARMLA-APR24-000207-ARMLA-APR24-000216 X
43. 2015-02-24 ARM Takedown Notice to EKO000034 X
Amazon re Ekobrew Elite -
EKO000052
44. 2015-02-24 ARM Takedown Notice to EKO000053 X
Amazon -
EKO000073
45. 20150401-Re_ARM ITC - Amazon EKO000001 X
Request for Indemnification to Ekobrands-1.pdf EKO000009
46. Dr. Howle April 18, 2016 Expert Report NA X
and exhibits thereto. All Howle Exhibits
will be sub-designated under the Exhibit
Number corresponding to his report (e.g.
"46-A")
47. Dr. Howle Presentation Slides (To be
(placeholder) produced at
or near trial)
48. U.S. Patent No. 3878772 to Nordskog NA X
("Nordskog")
49. U.S. Patent No. 6,079,315 to Beaulieu et NA X
al. ("Beaulieu")
50. U.S. Patent No. 6,658,989 to Sweeney et NA X
al. ("Sweeney")
51. World Intellectual Property Organization NA X
Application WO 2005/092160 A1 ("WO
160" or "Illy-Caffe")
52. "Web Forum" (SOLO929001503-1515) NA
53. U.S. Patent No. 5,840,189 to Sylvan NA X
("Sylvan")
54. U.S. Patent No. 6,606,938 to Taylor NA X
("Taylor")
55. Dr. Laurens Howle's May 16, 2016 NA
Rebuttal Expert Report and attendant
exhibits thereto. All Howle Exhibits will be
sub-designated under the Exhibit Number
corresponding to his report (e.g. "60-A")
56. Dr. Howle Supplemental Infringement NA
Report and attendant exhibits thereto. All
Howle Exhibits will be sub-designated
under the Exhibit Number corresponding to
his report (e.g. "62-A")
57. Drew Voth Presentation Slides (To be
(placeholder) produced at
or near trial)
58. Drew Voth Supplemental Report, NA
November 20, 2017 and attendant
schedules thereto. All Voth Schedules will
be sub-designated under the Exhibit
Number corresponding to his report (e.g.
"64-1", "64-2")
59. Drew Voth Additional Summary Tables (To be
(placeholder) produced at
or near trial)
60. Updated Sales Disclosures from ARM (To be X
(placeholder) produced at
or near trial)
61. Updated Cost Disclosures from ARM (To be
(placeholder) produced at
or near trial)
62. Amazon.com Filip Coffee Products.pdf NA
63. Amazon.com Pure Java Products.pdf NA
64. ARM Perfect Pod Products on NA X
Amazon.com.pdf
65. ARM Product Compatibility - ARM NA X
Enterprises, Inc_.pdf
66. 2014 Sales Document ARMLA-APR24-000019-ARMLA-APR24-000022 X
67. License BPC Holdings EKO000365
-
EKO000374
68. License Evriholder Products LLC EKO000375
-
EKO000386
69. License R Ideas Limited EKO000387
-
EKO000409
70. License Coffee Filters Direct EKO000410
-
EKO000419
71. License Samsara Tech/Korsreel EKO000420
-
EKO000429
72. License Fabulously Functional EKO000617
-
EKO000656
73. License MyGowns LLC EKO000449
-
EKO000452
74. Settlement Fabulously Functional EKO000441 X
-
EKO000444
75. Settlement MyGowns LLC EKO000449 X
-
EKO000452
76. Settlement AWH-Sales EKO000430
-
EKO000433
77. Settlement Best-In-All/Brings Best Deals EKO000434
-
EKO000437
78. Settlement Gutens/Lucky Online EKO000445
-
EKO000448
79. Settlement Possiave Direct EKO000453
-
EKO000456
80. Screen captures of Ekobrew website EKOB00010
http://www.ekobrew.com/ 4-EKOB00010
6
81. Eco-Fill 2.0 Reviews on Amazon ARM-D.Ct.-April18-000016 to X
ARM-D.Ct.-April18-000022
82. Printout of NA
https://www.walmart.com/ip/Solofill-K2-
Stainless-Mesh-K2-STAINLESS-
MESH/30579831
83. Video Demonstrative of Eko Facility EKOB00002 X
7
84. June 14, 2011 Wayback Machine Screen NA
Captures of Ekobrew.com
85. September 26, 2011 Wayback Machine NA
Screen Captures of Ekobrew.com
86. AEO sales by customer by year as of 11-24-15 (Excel X
AEO Produced
Natively on
2015-12-01)
87. AEO purchases by vendor by month as of (Excel X
11-24-15 AEO Produced
Natively on
2015-12-01)
88. Ekobrew Press Release PDF and native EKO000107
docx file -
EKO000108
89. Declaration of Mark Staudacher and Dkt. 33-1
attendant exhibits thereto filed in Case
No. 2:16-cv-04676-JAK-SS
90. Declaration of Laura Sommers and Dkt. 33-4
attendant exhibits thereto filed in Case
No. 2:16-cv-04676-JAK-SS
91. Declaration of Jim Amundsen and Dkt. 33-2
attendant exhibits thereto filed in Case
No. 2:16-cv-04676-JAK-SS
92. Ekobrew prototype drawings EKOB00014
8-EKOB00015
3
93. Evermuch quotes and purchase order EKO000113
-
EKO000115
94. U.S. Patent No. 5,325,765 to Sylvan NA X
95. Complaint In the Matter of: Certain NA X
Beverage Brewing Capsules, Components
Thereof, and Products Containing the
Same, August 4, 2014, Inv. 337-TA-929
96. Rivera v. ITC, 857 F.3d 1315 (Fed. Cir. NA X
2017)
97. ARM current website webpages NA
98. Eko current website webpages NA
99.
ARM reserves all right to amend its exhibit list prior to trial. ARM identifies the following exhibits upon which it may rely to establish its case-in-chief at trial, some of which may be presented electronically. ARM notes that exhibits bearing an asterisk may be used if the need arises and the Court allows, but ARM does not presently intend to offer such exhibits into evidence:
Ex. No. Description Doc ID Admissibility Authenticity
Stipulated Stipulated
Only
500. U.S. Patent and Trademark Office's NA X
Determination to Grant Reexamination of
the '855 Patent*
501. Patent Office non-final office action in NA X
'855 reexamination*
502. Patent Office final rejection in '855 NA X
reexamination*
503. Eko Response to final rejection in '855 NA X
reexamination*
504. ARM's Disclosure of Asserted Claims and NA X
Non-Infringement and Invalidity
Contentions Pursuant to Local Patent Rule
121*
505. U.S. Patent Application No. 61/399,382* (LPR 121 X
Disclosure
Exhibit B)
506. U.S. Patent Application No. (LPR 121 X
2013/0017303* Disclosure
Exhibit C)
507. U.S. Patent Application No. 5,325,765* (LPR 121 X
Disclosure
Exhibit D)
508. U.S. Patent No. 9,232,871 NA X
509. U.S. Patent No. 9,232,872 NA X
510. Eko Brands' October 27, 2015 Response to NA X
ARM's First Set of Requests for
Production
511. Eko Brands' October 27, 2015 Response to NA X
ARM's First Set of Interrogatories
512. Eko Brands' June 15, 2016 Supplemental NA X
Responses to ARM's First Set of
Interrogatories
513. Eko Brands' Response to ARM's Second NA X
Set of Requests for Production
514. Eko Brands' Response to ARM's Second NA X
Set of Interrogatories
515. Eko Brands' June 15, 2016 Supplemental NA X
Responses to ARM's Second Set of
Interrogatories
516. Eko Brands' May 7, 2015 First Amended NA X
Complaint for Declaratory Judgment of
Patent Invalidity and for Patent
Infringement
517. Eko Brands' July 21, 2015 Reply to NA X
ARM's Counterclaims
518. Physical exhibit — My K-Cup product, NA
instructions, and packaging
519. Physical exhibit — Solofill K2 product, NA
instructions, and packaging
520. Physical exhibit — Solofill K3 product, NA
instructions, and packaging
521. Physical exhibit — Brew & Save 2.0 NA
product, instructions, and packaging
522. Physical exhibit — Eco-Fill product, NA
instructions, and packaging 4-pack
523. Physical exhibit — Eco-Fill Deluxe 2.0 NA
product, instructions, and packaging
524. Physical exhibit — Keurig 2.0 machine, NA
instructions, and packaging
525. Photographs of My K-Cup NA X
526. Photographs of Solofill K2 NA X
527. Photographs of Solofill K3 NA X
528. Photographs of Brew & Save 2.0 NA X
529. Photographs of Eco-Fill MAX NA X
530. Photographs of Eco-Fill NA X
531. Photographs of EZ-Cup NA X
532. Photographs of EZ-Cup 2.0 NA X
533. Photographs of Keurig NA
534. Photographs of Keurig's disposable K-Cups NA X
535. Aimee J. Sixel's May 12, 2016 Deposition NA X
Transcript
536. Christopher D. Legler's May 12, 2016 NA X
Deposition Transcript
537. Robert A. Bangerter's May 12, 2016 NA X
Deposition Transcript
538. Ronald R. DeMiglio's May 12, 2016 NA X
Deposition Transcript
539. ARM's Notice of Deposition (DeMiglio X
Deposition
Transcript
Exhibit 01)
540. Ekobrew website printout (DeMiglio X
Deposition
Transcript
Exhibit 07)
541. Ekobrew Capsules claims chart (Howle's NA X
Initial Expert Report Exhibit G)*
542. Eco-Fill Deluxe claims chart (Howle's NA X
Initial Expert Report Exhibit H)*
543. Eco-Fill 2.0 Deluxe claims chart (Howle's NA X
Initial Expert Report Exhibit I)*
544. Eco-Fill MAX claims chart (Howle's NA X
Initial Expert Report Exhibit J)*
545. Paul Phillips' Opening Expert Report NA X
546. Paul Phillips' CV (Phillips' X
Opening
Expert
Report
Exhibit 1)
547. February 2012 Federal Circuit Bar (Phillips' X
Association's Model Jury Instructions Opening
Expert
Report
Exhibit 2)
548. Paul Phillips' Rebuttal Expert Report NA X
549. Paul Phillips' Supplemental Expert Report NA X
550. Drew E. Voth's Rebuttal Expert Report in NA X
Case No. 2:16-cv-04676-JAK-SS
551. Dr. Barbara C. Luna's Expert Report (and NA
documents mentioned therein)
552. ARM Sales By Product 2014 to February NA
2016 [ARM D. Ct. Mar. 22-000022]
(Luna's Expert Report Exhibit A)
553. ARM Enterprises, Inc. Balance Sheet As of NA
December 31, 2015 [No Bates Numbers]
(Luna's Expert Report Exhibit A)
554. ARM Enterprises, Inc. Profit & Loss NA
Report For The Period of January Through
December 2015 [No Bates Numbers]
(Luna's Expert Report Exhibit A)
555. EKO Sales By Item Summary 2014 EKO000181 X
556. EKO Sales By Item Summary 2015 EKO000182 X
557. EKO Sales by Item Summary 2016 EKO000183 X
558. United States International Trade (Luna's X
Commission Order To Cease And Desist Expert
To EKO Brands, LLC, Dated March 17, Report
2016* Exhibit A)
559. United States International Trade (Luna's X
Commission Limited Exclusion Order To Expert
EKO Brands, Evermuch Technology Co, Report
And Ever Much Company, Ltd., Dated Exhibit A)
March 17, 2016*
560. Luna's Biography (Luna's X
Expert
Report
Appendix 1)
561. Luna's Expert Witness Trial Testimony (Luna's X
Work History from the Past Four Years Expert
Report
Appendix 2)
562. Luna's articles and publications (Luna's
Expert
Report
Appendix 3)
563. Dr. Barbara C. Luna's Rebuttal Expert NA X
Report
564. Check Number 1533 from My Gowns, (Luna's X
LLC to EKO Brands, LLC, Dated October Rebuttal
15, 2015 Expert
Report
Exhibit A)
565. Amazon Seller Central Lifetime Automatic (Luna's
Advertising Campaign Spend Report for Rebuttal
My Gowns, LLC, Dated April 26, 2016. Expert
Report
Exhibit A)
566. Amazon Seller Central Lifetime Manual (Luna's
Advertising Campaign Spend Report for Rebuttal
My Gowns, LLC, Dated April 26, 2016. Expert
Report
Exhibit A)
567. Amazon Seller Central Buyer-Seller (Luna's
Messages Between Andy A. Burger and Rebuttal
The Demelle Group/My Gowns, LLC, Expert
Messages 1-9, Dated April 28, 2015-July Report
27, 2015 Exhibit A)
568. Emails Between Timothy J. Billick and (Luna's
Gabriel Sasson Regarding Finalizing and Rebuttal
Signing Licensing Agreement Between My Expert
Gowns, LLC and EKO Brands, LLC, Report
Dated August 3, 2015-August 4, 2015. Exhibit A)
569. EKO Brands Standard License Agreement (Luna's
(Blank) Word Document Rebuttal
Expert
Report
Exhibit A)
570. EKO Brands Standard License Agreement (Luna's
(Demelle Group) Word Document. Rebuttal
Expert
Report
Exhibit A)
571. ARM Subpoena Supporting Information-2 (Luna's
Excel File, Dated April 26, 2016. (Luna's Rebuttal
Rebuttal Expert Report Exhibit A) Expert
Report
Exhibit A)
572. EKO Brands' Responsive Claim (Luna's X
Construction Brief, Filed January 27, 2016. Rebuttal
Expert
Report
Exhibit A)
573. MyGowns.com `About Us' Section of (Luna's
Website. Rebuttal
Expert
Report
Exhibit A)
574. Fabulously Functional Online.com `About' (Luna's
Section of Website. Rebuttal
Expert
Report
Exhibit A)
575. Declaration of Gabriel Sasson of My (Luna's X
Gowns, LLC, Dated May 2, 2016. [No Rebuttal
Bates Numbers] Expert
Report
Exhibit A)
576. Declaration of Jenny Brainard of (Luna's X
Fabulously Functional Corp., Dated May 6, Rebuttal
2016. Expert
Report
Exhibit A)
577. Damage analysis and other calculations (Luna's
Rebuttal
Expert
Report
Exhibit B)
578. ARM Prototype Sketches ARM-D.Ct.-April18-000035-37
579. Screen capture of Folgers Classic Roast K-Cup ARM-D.Ct.-April18-000001-8 X
for Keurig Brewers, 72 Count on
Amazon
580. Screen capture of Folgers Coffee, ARM-D.Ct.-April18-000009-15 X
Classic(Medium) Roast, 48 Ounce on
Amazon
581. Screen capture of Eco-Fill 2.0 Deluxe for ARM-D.Ct.-April18-000016-22 X
Keurig 2.0, K200, K300, K400, K500
Series
582. Letter from Philip Mann to Stephen C. Lee ARM-D.Ct.-Dec.9-000005-18
of Target Corporation
583. Funk & Wagnalls Standard College ARM-D.Ct.-Jan.6-000010-12 X
Dictionary (definition of vertical)
584. Webster's Seventh New Collegiate ARM-D.Ct.-Jan.6-000013-16 X
Dictionary (definition of cylindrical)
585. ISO 7507 Engineering Standards (as cited ARM-DistCt-June15-000010-25 X
in Phillip's expert rebuttal report)
586. Emails regarding product development REV007702
587. Emails regarding product development REV007829
588. Emails regarding product development REV009448
589. Emails regarding product development REV009458
590. Email from Target regarding Eco-Fill ARMSDTX-000096
Deluxe 2.0
591. Email chain regarding Target and Eco-Fill ARMSDTX-000093-95
Deluxe 2.0
592. Email regarding Target and Eco-Fill ARMSDTX-000097
Deluxe 2.0
593. November 16, 2017 Deposition of C. NA X
Legler
594. 7/6/2017 Non-Exclusive Patent License EKO000365 X
Agreement between Eko Brands and BPC -374, Legler
Holdings. Ex. 1
595. 4/27/2017 letter from David Lowe to EKO000457 X
Korsreel/Super Trade Studios, Re: U.S. -458, 497-509,
Patent Nos. 8,707,855 and 8,561,524 Legler
Ex.2
596. Email chain, top email dated 6/21/2017 EKO000510 X
from Tim Billick to Chen; Young; Super -512, 527-540,
Trade Studio; Landsport, Subject: FW: Legler
Your Amazon Enquiry. Ex. 3
597. 10/10/2017 Patent License Agreement EKO000375 X
between Eko Brands and Evriholder -386 Legler
Products. Ex. 4
598. 1/1/2017-8/15/2017 TAS Client Trust EKO00094 X
Ledger. 2, Legler Ex.
5
599. 6/13/2017 Non-Exclusive Patent License EKO000387 X
Agreement between Eko Brands and R -397, Legler
Ideas Limited. Ex. 6
600. 6/9/2017 Non-Exclusive Patent EKO000398 X
License Agreement between Eko Brands -409, Legler
and R Ideas Limited Ex. 7
601. 6/9/2017 Non-Exclusive Patent License EKO000410 X
Agreement between Eko Brands and Coffee -419, Legler
& Filters Direct. Ex. 8
602. 6/12/2017 Non-Exclusive Patent License EKO000420 X
Agreement between Eko Brands and Super -429, Legler
Trade Studio aka Korsreel). HIGHLY Ex. 9
603. Email chain, top email dated 8/14/2017 EKO000513 X
from Jenny Brainard to Tim Billick, -526, Legler
Subject: Re: Eko Brands Fabulously Ex. 10
Functional U.S. Patent Nos. 8,707,855 and
8,561,524 License (Our Ref.ESUP-5-0003).
604. Several documents, top document dated EKO000617 X
8/14/2017 Transaction Entry Verification -623, 645-656
List.
605. 4/27/2017 letter from David Lowe to EKO000657 X
Gabriel Sasson Re: License to United States -721, Legler
Patent Nos. 8,707,855 and 8,561,524, and Ex. 12
enclosures.
606. 4/27/2017 letter from David Lowe to Grace EKO000101 X
Ong-Burd, Level-Up Imports, Re: License 5-1016,
to United States Patent No. 8,707,855, and 1010-1014,
enclosures. Legler Ex.
13
607. Email chain, top email dated 6/14/2017 EKO000103 X
from David Lowe to Tim Billick, Subject: 8-1043,
FW: LaMi Products and several documents 1065-1071,
1101-1110,
Legler Ex.
14
608. 11/7/2017 Non-Exclusive Patent License EKO000108 X
Agreement between Eko Brands to 1-1090,
CocoPrice Outlet. Legler Ex.
15
609. 11/7/2017 Non-Exclusive Patent License EKO000109 X
Agreement between Eko Brands and Lucky 1-1100,
Online (aka Gutens). Legler Ex.
16
610. 11/7/2017 Non-Exclusive Patent License EKO000111 X
Agreement between Nature's Kitchen. 1-1120,
Legler Ex.
17
611. 4/27/2017 letter from David Lowe to Mia EKO000115 X
Cain, MetaShop, Re: License to United 0-1151,
States Patent No. 8,707,855, with 1173,
enclosures 1141-1149,
1174-1178,
Legler Ex.
18
612. 6/21/2017 letter from Angela Holt to Tim EKO000121 X
Billick, RE: Your Client: Eko Brands, Our 5-1226,
client: My-Cap, with enclosures. 1248, Legler
Ex. 19
613. Sample Collection of Bed Bath & Beyond NA
and Best Buy Reviews of Ekobrew Stainless
Steel Elite Reusable Cup for Keurig® K-Cup®
Brewing System ("Ekobrew Elite")
614. November 1, 2017 letter from D. Lowe to J. EKO000620 X
Brainardincluding enclosures -656
615. Hearing Transcript from In the Matter of NA X
Certain Beverage Brewing Capsules,
Components Thereof, and Products
Containing the Same, 337-TA-929
Enforcement
616. Email from T. Billick to G. Sasson dated EKO000705
Aug. 3, 2015
617. T. Billick Declaration Dkt. 196 X
618. Voth article entiled "Apportionment of Dkt. 102-4 X
Intellectual Property Value: Where
Economic Theory Meets Legal Practice"
619. Email exchanges between J. Brainard and EKO000355
Eko -58
620. Email exchanges between J. Brainard and EKO000345
Eko -54
621. Eko license with Fabulously Functional EKO000118
-123
622. Eko license with My Gowns EKO000159
-165
623. Eko email correspondence with My Gowns NA
624. Eko email correspondence with My Gowns EKO000362
-364
625. Dr. Luna Presentation Slides (To be
produced at
or near trial)
626. Paul Phillips Presentation Slides (To be
produced at
or near trial)
627. Dr. Luna Summary Tables (To be
produced at
or near trial)
VIII. DEPOSITION TRANSCRIPT DESIGNATIONS
Eko will designate the following portions of deposition transcript recorded on May 12, 2016 of Eko's partial 30(b)(6) designee, Mr. Ronald DeMiglio, in the event Mr. DeMiglio does not testify at trial:
• Pages 1-3
• Page 4: lines 12-15
• Page 5:22 through page 12:13
• Page 12:23 through page 18:9
• Page 18:25 through page 20:11
• Page 20:23 through page 22:17
• Page 25:19 through page 30:8
• Page 33:10 through page 37:25
• Page 38:13 through 39:23
• Page 40:16 through 41:8
• Page 41:25 through page 44:20
• Page 45:7 through page 49:25
• Page 58:8-21
• Page 59:24 through page 60:4
• Page 62:16 through page 63:10
• Page 67:5-15.
• Page 69:14-23
• Page 71:1-19
• Page 72:8-11
• Page 73:20 through 76:5
• Page 77:1 through 78:4
• Page 80:19 through 83:19
• Page 84:21 through 85:22.
ARM designates the following portions from Mr. DeMiglio's transcript:
• Page 4:20-5:13
• Page 18:10-24
• Page 20:12-22
• Page 22:18-24:15
• Page 25:6-18
• Page 30:9-33:9
• Page 38:1-12
• Page 39:24-40:15
• Page 41:12-14
• Page 44:21-45:6
• Page 48:22 through 49:12
• Page 50:1-11
• Page 59:13-22
• Page 60:5-7
• Page 64:3-8
• Page 65:8-16
• Page 66:11-16
• Page 67:16-68:8
• Page 68:22-24
• Page 69:24-70:9
• Page 70:16-25
• Page 76:6-10
• Page 83:20-25
IX. ACTION BY THE COURT
(a) This case is scheduled for trial before a jury on June 4, 2018 at 9:00 AM.
(b) Trial briefs shall be submitted to the court on or before May 14, 2018.
(c) Jury instructions requested by either party shall be submitted to the court on or before May 14, 2018. Suggested questions of either party to be asked of the jury by the court on voir dire shall be submitted to the court on or before May 14, 2018.
This order has been approved by the parties as evidenced by the signatures of their counsel. This order shall control the subsequent course of the action unless modified by a subsequent order. This order shall not be amended except by order of the Court pursuant to agreement of the parties or to prevent manifest injustice.
