Mama Cares v. Nutriset United States District Court for the - PowerPoint PPT Presentation

Mama Cares v. Nutriset United States District Court for the District of Columbia Friday, June 18, 2010 8:00 - 9:00 a.m. Washington, D.C. When You Think INTELECTUAL PROPERTY, Think Fulbright. TM

IMPORTANCE OF CASE 2

IMPORTANCE OF CASE • “… stubbornly high food prices in many countries have pushed some 100 million more people than last year into chronic hunger and poverty." Jacques Diouf, director-general FAO • “Global food production will need to double just to meet demand,” Hilary Benn, UK environmental secretary 3

CASE SUMMARY • Plaintiffs are Mama Cares and Breedlove – US non-profits dedicated to humanitarian food relief. • Defendants are Nutriset and IRD – a French for-profit and French government R&D lab. • Fulbright is handling the case pro bono . 4

CASE SUMMARY • Declaratory Judgment (DJ) Action – Seeking Court determination of non- infringement • Osmolality – Alternative determination of patent invalidity • Inadequate patent disclosure • Prior art – False Marking 5

CASE STATUS • Case filed 18 December 2009 – Declaratory Judgment Action for non- infringement and patent invalidity • Assigned to Judge Emmet G. Sullivan • Summons and Complaint served 02 March 2010 • Defendants moved to dismiss on May 26 • Plaintiffs opposed motion on June 14 6

DEFENDANTS’ MOTION • Procedural challenge to Plaintiffs’ Complaint – seek to dismiss the entire action – No DJ controversy means no subject matter jurisdiction – No personal jurisdiction over the False Marking claim – Complaint is inadequate 7

PLAINTIFFS’ RESPONSE – DJ • Defendants’ conduct evidences an intent to enforce its patent. – Nutriset has a published policy of no licenses in the developed world beyond the license to its joint venture partner Edesia. • Website • Response to Medecins Sans Frontieres – Nutriset has published threats from its counsel of an intent to enforce its IP. – Enforcement action in Kenya • Plaintiffs have product ready to make and ship. 8

PLAINTIFFS’ RESPONSE – FALSE MARKING • District of Columbia Court has jurisdiction over foreign owners of U.S. patents. • Defendants have not challenged personal jurisdiction in the DJ action. • Personal jurisdiction for one claim creates personal jurisdiction for all claims. • False Marking arises out of rights under Defendants’ U.S. Patent. 9

CASE SCHEDULE • Pleadings – 12/2009 to 07/2010 • Discovery – 08/2010 to • Expert Reports – 08/2011 to 11/2011 • Pre-Trial Preparation – 12/2011 to 04/2012 • Trial – 04/2012 • Appeal – 06/2012 to 06/2013 10

PRIOR ART 11

PRIOR ART • Peanut spread patented in 1965 may meet limitations of U.S. patent. • At least one natural and/or reduced-fat peanut butter appears to meet osmolality limitation of U.S. patent. • Other complete foods or nutritional supplements containing peanuts have been around for over 100 years. 12

When You Think Intellectual Property, Think Fulbright. TM Robert M. Chiaviello, Jr. Robert M. Chiaviello, Jr. Kirby B. Drake Fulbright & Jaworski L.L.P. Fulbright & Jaworski L.L.P. 666 Fifth Avenue 2200 Ross Ave., Ste. 2800 New York, NY 10103-3198 Dallas, TX 75201 D: 212.318.3289 T: 214.855.8000 T: 212.318.3000 F: 214.855.8200 F: 212.318.3400