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Tuesday, February 13, 2018

(OVER)DUE DILIGENCE “Motion To Dismiss” Denied; International Fruit Genetics Federal Patent Infringement Lawsuit Ordered To Proceed To Trial; orcharddepot.com's Alleged Unlicensed Sale Of Proprietary Grape Vines “Unjust Enrichment”

BREAKING NEWS: PATENT INFRINGEMENT, UNFAIR COMPETITION RESULTING FROM UNLICENSED SALE OF GRAPEVINE CUTTINGS 

In an order issued yesterday afternoon, February 12, 2018, United States Judge Jeffrey S. White of California's Northern District, denied the defense's July 12, 2017 motion to dismiss a patent infringement case against orcharddepot.com (a website operated by Blue Marble Products, LLC), Casey Donahue and Ian Donahue.

Judge White set the initial case management conference for March 30, 2018 at 11:00 a.m.; the joint case management statement is due no later than March 23, 2018.


Casey Donahue (left) is employed by Peter Franklin, the CEO of Blue Marble Products, at Infuse, a San Francisco software company Franklin also operates.

The case, filed by International Fruit Genetics on May 22, 2017, asserted:

 “Within the last three months, John Doe No. 1 aka NYURKA80 (“Doe No. 1”) has offered for sale and sold grapevine cuttings on Amazon.com with listings entitled “Grape vine cuttings – 5 cuttings – the Moon Drop Grape,” and/or “‘Moon Drop’ 3 vine cuttings for propagation.” 

The listings for these grape cuttings contained a picture of grapes which appear to be the IFG Six varietal. IFG is informed and believes that the cuttings offered and sold by Doe No. 1 were of the IFG Six varietal. Within the last three months, John Doe No. 2 aka GardenSoul (“Doe No. 2”) has offered for sale and sold grapevine cuttings on Amazon.com in a listing entitled “Grape vine cuttings – 5 cuttings - the Moon Drop Grape.” 

IFG is informed and believes that the cuttings offered and sold by Doe No. 2 were of the IFG Six varietal. At the time of filing of this Complaint, the listings posted by Doe. No. 1 and Doe No. 2 offering to sell cuttings of “Moon Drop” grapevines were no longer active on Amazon. 

However, a listing similar to those appearing on Amazon entitled “’Moon Drop’ grape – 3 vine cuttings for propagation” now appears on the online orchard supply store at the URLhttps://OrchardDepot.com which IFG is informed and believes is operated by Defendant Orcharddepot.com and is owned by Defendants Casey Donahue and Ian Donahue. 

The listing contains a photograph of grapes which appear to be of the IFG Six varietal. IFG is informed and believes that the cuttings being offered and sold as “Moon Drop” grapevines on this website are of the IFG Six varietal.” 

In its July 12, 2017 motion to dismss, attorneys for Blue Marble Products, LLC pushed back, asserting orcharddepot.com was merely a third-party reseller, not an industry leader “able to get the best wholesale prices and pass those savings onto our customers” as it currently boasts on its 90+ sites

“Defendants do not manufacture, produce, own or store any products that are listed on ORCHARDDEPORT.COM. Instead, Defendants, only after receiving a client’s purchase order related to a product, would purchase the product from the original seller on the source websites and ship the product to the customer.”

The February 12, 2018 order noted these specifics: 

“IFG routinely enters into license agreements with a limited number of nurseries to propagate and distribute their proprietary grape plants. 

There are three IFG patents at issue in this case: (1) a patent covering the IFG six grapevine variety under the registered trademark MOON DROPS; (2) a patent covering the IFG twelve grapevine variety under the registered trademark TEAR DROPS; and (3) a patent covering the IFG nineteen grapevine variety under the registered trademark COTTON CANDY. 

The license agreements allow the growers to grow, market, farm, and/or sell table grapes from IFG’s proprietary table grape varieties, subject to the terms and conditions of the license agreements. 

These license agreements, however, expressly forbid the licensees from distributing the vines or cuttings to third parties. 

Despite these restrictions, Defendants, who operate third party retailer websites, have allegedly been offering for sale and selling cuttings from IFG’s proprietary plants on Amazon.com, and/or through the online orchard supply store Orcharddepot.com. 

Defendants move to dismiss on the bases that (1) the first sale exhaustion doctrine bars IFG’s claims for patent infringement, trademark infringement, unfair competition, and other related claims; (2) there is a heightened two-step requirement to allege infringement of a plant patent; (3) IFG’s common law claims are preempted by federal law; and (4) IFG’s unfair competition law claim lacks sufficient facts to support a cognizable legal theory.” 

Additional information on Blue Marble Products, LLC can be found at this link.

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