med ag ventures v. ducey - complaint
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BOOTH UDALL FULLER, PLC1255 W. Rio Salado Parkway, Suite 215
Tempe, Arizona 85281 Telephone (480) 830-2700Facsimile (480) 830-2717
Michelle G. Breit – SBN 021439 Email [email protected]
Attorneys for the Plaintiffs
UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA
Med Ag Ventures Inc., a Coloradocorporation; Dane J. Dukat, an individual;and Justin T. Cifelli, an individual,
Plaintiffs,
v.
Cole P. Ducey, an individual; Raw CNC,LLC, a New Mexico limited liabilitycompany; Nathan W. Todd, an individual;and Cali Crusher, LLC, a Texas limitedliability company,
Defendants.
Case No. ____________________
COMPLAINT
[Demand for Jury Trial]
Plaintiffs Med Ag Ventures Inc., Dane J. Dukat, and Justin T. Cifelli hereby allege for
their Complaint against defendants Cole P. Ducey, Raw CNC, LLC, Nathan Todd and Cali
Crusher, LLC, on personal knowledge as to their own actions and on information and belief
as to all other matters, as follows:
THE PARTIES
1. Plaintiff Meg Ag Ventures Inc. (“Med Ag”) is a corporation organized and
existing under the laws of the State of Colorado, with its principal place of business in Mesa
Arizona. Med Ag develops and manufactures proprietary ancillary medical cannabis
products for consumers, growers and medical marijuana dispensaries.
2. Plaintiff Justin T. Cifelli is an individual residing in Scottsdale, Arizona. Mr
Cifelli is the founder and President of Med Ag. Mr. Cifelli holds a Bachelor of Science in
Applied Biology from Arizona State University with an emphasis in plant and soil science
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For more than five years, Mr. Cifelli has provided technical expertise in the medical
agriculture and LED lighting technology fields.
3. Plaintiff Dane J. Dukat (“Dukat”) is an individual residing in Mesa, Arizona
Mr. Dukat is the Executive Vice President and Director of Engineering of Med Ag. Mr
Dukat studied mechanical engineering at Arizona State University and is an experienced
engineer and machinist in the field of aerospace engineering, where he developed expertise
in computer-controlled manufacturing and parts design.
4. Upon information and belief, defendant Raw CNC, LLC (“Raw”) is a New
Mexico limited liability company, with its principal place of business at 11675 Sorrento
Valley Road, San Diego, California. Upon information and belief, all active operating
members of Raw reside in San Diego, California. Upon information and belief, Raw
purports to be the assignee of all rights, title and interest in U.S. Patent No. D714,595 (the
“’595 patent”), a patent for an ornamental design of an herb grinder, which issued on
October 7, 2014. A true and correct copy of the ’595 patent is attached as Exhibit A to this
Complaint.
5. Defendant Cole P. Ducey (“Ducey”) is an individual residing in San Diego
County, California. Mr. Ducey purports to be the sole remaining member of defendant
Raw. Upon information and belief, Mr. Ducey purports to be the sole inventor of the ’595
patent.
6. Upon information and belief, defendant Cali Crusher, LLC (“Cali Crusher”) is
a Texas limited liability company with its principle place of business located at 307 W. San
Antonio, San Marcos, Texas. On information and belief, all members of Cali Crusher, LLC
reside in Texas.
7. Upon information and belief, defendant Nathan W. Todd (“Todd”) is an
individual residing in San Marcos, Texas and the managing member of Cali Crusher.
JURISDICTION AND VENUE
8. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331
1332(a)(1), 1367, 2201 and 2202. Upon information and belief, plaintiffs and defendants are
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citizens of different states, and the sum or value of the claim being asserted herein is greater
than $75,000, calculated in accordance with 28 U.S.C. § 1332(b). In addition, this action
arises under the patent laws of the United States, Title 35 of the United States Code, § 256,
because the parties have conflicting patent inventorship claims.
9. This Court has personal jurisdiction over defendants Ducey, Raw, Todd and
Cali Crusher because each has performed acts which were calculated to cause injuries to
plaintiffs in Arizona.
10. Venue is proper in this District under 28 U.S.C. § 1391.
BACKGROUND
The Grinder Invention
11. In or about 2011, Mr. Dukat first contemplated creating a new herb grinder
for use in the medical marijuana industry. At the time, he was also developing other produc
ideas and inventions related to the same and other industries.
12. By the fall of 2012, Mr. Dukat had a complete design for his new grinder, as
well as hand drawn design renderings of the specific grinder features. Mr. Dukat’s grinder
included cutting teeth shaped in geometrical arcs with different shaped ends to allow for
dual coarseness selection. Mr. Dukat modified the standard UNF threading of known
grinders to make relief notches so that the sections of his grinder could be conjoined and
separated much easier and faster. Mr. Dukat also designed a cross brace to support a screen
section in the grinder rather than the more typical design of stretching the screen like a
drum. In addition, Mr. Dukat designed the top of the grinder to have an ash tray and paper
holder and a particular look and functionality for the exterior grip.
13.
Mr. Dukat’s grinder had four sections, with each section incorporating one of
the above mentioned features.
14. By the summer of 2013, Mr. Dukat was far along into preparing final
dimensioned and scaled prints of the grinder, which he later used to program the machine
used to manufacture a physical prototype.
15. In or about the fall of 2012, Mr. Ducey was visiting Mr. Dukat’s brother in
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Arizona. Mr. Dukat disclosed his grinder invention to Mr. Ducey in the context of
discussions the two were having about forming a business for the manufacture and sale of
products related to the medical cannabis industry.
16.
By that time, Mr. Dukat had fully conceived of the grinder invention and
completed hand drawings and designs for a new herb grinder featuring geometrical arcs,
unique thread lock features, a cross brace to support a screen, an exterior grip with crescent
shaped grooves, and a top with an ashtray and paper holder.
17. Throughout the remainder of 2012 and into early 2013, Mr. Dukat and Mr
Ducey continued discussing their plans to form the new business and agreed that, among
other products, the new business would manufacture and sell Mr. Dukat’s herb grinder.
18. In or about March 2013, Mr. Dukat completed drafting a business plan and
moved to California to set up manufacturing because Mr. Ducey asserted he could get free
commercial real estate for their use and provide all needed investment capital to open the
new business, which ultimately became defendant Raw.
19. After about nine months of working together, Mr. Dukat determined that he
could not remain in business with Mr. Ducey due to malfeasance committed by Mr. Ducey
Mr. Dukat moved back to Arizona in or about February 2014.
20. On or about April 13, 2014, Mr. Dukat filed with the United States Patent and
Trademark Office (“USPTO”) a provisional patent application for his grinder invention.
21. In April 2014, Mr. Dukat exclusively licensed to Med Ag his herb grinder
inventions and all related intellectual property. Med Ag committed, as part of the license, to
protect and defend Dukat’s design and ownership rights in and to the herb grinder
inventions.
22. Without Mr. Dukat’s knowledge, on or about April 22, 2014, Ducey filed U.S
Patent Application No. 29/488,715 (the “’715 application”) based on Mr. Dukat’s
conception of the grinder. In this application, Mr. Ducey erroneously named himself as the
sole inventor when he was not an inventor at all. Instead, Mr. Dukat was the inventor of the
grinder disclosed in Mr. Ducey’s design patent application.
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23. Mr. Ducey also executed and submitted to the USPTO a declaration stating he
is the sole inventor of the ’715 application. This declaration and the related application
ultimately resulted in the issuance of the ’595 patent on October 7, 2014, on which Mr
Ducey is identified as the sole inventor.
24. Upon information and belief, on or about June 19, 2014, Mr. Ducey filed a
utility patent application again based on Mr. Dukat’s grinder conception and invention. The
application purports to be a continuation in part of and claims priority to the ’715
application which matured into the ’595 patent. On information and belief, Mr. Ducey also
erroneously named himself as the sole inventor on the utility patent application. Instead
Mr. Dukat is the inventor of the grinder disclosed and claimed in the Ducey utility patent
application.
25. Upon information and belief, Mr. Ducey’s June 19, 2014 utility patent
application for the herb grinder is still pending before the USPTO.
26. Upon information and belief, Mr. Ducey has licensed his purported rights
title and interest in the ’595 patent to Raw.
27. Upon information and belief, on September 3, 2014, Raw, doing business as
Med Tech Instruments, entered into an exclusive manufacturing agreement with Cali
Crusher, whereby Raw granted to Cali Crusher, for a term of seven years, the exclusive use
of all Raw’s purported grinder designs and grinder patents, both current and those which
Raw later develops.
28. Upon information and belief, Mr. Ducey, Raw, Mr. Todd and Cali Crusher
continue to market and exploit the ’595 patent for the manufacturing and sale of grinder
products.
The Cure Box Invention
29. In or about October 2012, plaintiff Justin Cifelli began development of a plant
curing and processing apparatus to assist agricultural growers improve crop yields and
quantities (the “Cure Box”). Mr. Cifelli completed drawings of the apparatus and made a
model out of wood and metal.
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30. In or about March or April 2013, Mr. Cifelli engaged an engineer to assist in
the generation of CAD drawings and development of the electrical system and controls for
the Cure Box.
31.
Around the same time, Mr. Cifelli met plaintiff Dane Dukat. At the time, Mr
Dukat was preparing to move to San Diego to start a new manufacturing business with
defendant Cole Ducey. Mr. Dukat informed Mr. Cifelli that the new manufacturing
company could assist in creating a prototype of Mr. Cifelli’s Cure Box invention.
32. On July 3, 2013, Mr. Cifelli and his company Cif ahoy (jointly “Cifelli”) entered
into two agreements with defendant Raw ( Mr. Dukat and Mr. Ducey’s new company ): (1)
the Mutual Non-Disclosure Agreement (“MNDA”), a true and correct copy of which is
attached as Exhibit B to this Complaint; and (2) the Development Consulting Agreement
(“DCA”), a true and correct copy of which is attached as Exhibit C to this Complaint
Together, the MNDA and DCA are referred to herein as “the Cifelli/Raw Agreements.”
33. The purpose of the Cifelli/Raw Agreements was to set out the terms of the
business relationship between Cifelli and Raw and, more particularly, for Cifelli to retain Raw
to assist in the development of a prototype of the Cure Box.
34. Pursuant to the Cifelli/Raw Agreements, Cifelli provided Raw with detailed
confidential information relating to the Cure Box invention and the product under
development. In addition, Cifelli paid Raw the sum of $3,750, which was the entire
consideration Cifelli was required to pay under the Cifelli/Raw Agreements.
35. The Cifelli/Raw Agreements make clear that Cifelli is the owner of all the
intellectual property rights and confidential information relating to the Cure Box, including
from the time the parties entered into the Cifelli/Raw Agreements and at all times thereafter
36. In addition, the Cifelli/Raw Agreements make clear that Raw owns none of
the intellectual property rights to the Cure Box.
37. Under the DCA, Raw is prohibited from competing with Cifelli by
developing, using, selling or collaborating with others on an application or product similar to
the Cure Box or using Cifelli’s intellectual property in competition with Cifelli. The DCA’s
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noncompete provisions remain effective for three years after the parties terminate doing
business together.
38. The DCA provides that either Cifelli or Raw may terminate the agreement by
serving written notice of termination on the other.
39. Pursuant to the DCA, upon termination, Raw is obligated to deliver to Cifelli
all work product from the services Raw performed relating to the Cure Box, including the
prototype, and to return to Cifelli all other confidential information relating to the Cure Box.
40. In addition, under the DCA, Raw is obligated after termination not to
interfere with or corrupt any aspects of the work it performed under the agreement or any
confidential information it obtained related to the Cure Box, and not to impede Cifelli’s free
use and complete control of any such work product or confidential information.
41. Pursuant to the DCA, Raw began developing a prototype of the Cure Box, as
well as certain documentation related to the Cure Box.
42. In or about October 2013, Raw and Mr. Ducey entered into an oral agreement
with Mr. Cifelli whereby Raw and Mr. Ducey agreed to pay Mr. Cifelli to develop Raw ’s
websites and to provide other business development and marketing assistance. Pursuant to
that agreement, Mr. Cifelli performed these duties and incurred expenses related thereto
Under the contract, Mr. Cifelli was entitled to payment from Raw in an amount in excess of
$9,000.
43. On or about February 18, 2014, Mr. Cifelli learned of certain malfeasance by
Mr. Ducey. Among other improper conduct, Mr. Ducey wrongfully began asserting that
Raw and Mr. Ducey were the owners of the rights, title and interest in Mr. Cifelli’s Cure Box
and related intellectual property.
44. Mr. Ducey and Raw further refused to compensate Mr. Cifelli for his website
and business development services or to reimburse Mr. Cifelli for expenses he incurred.
45. On or about March 4, 2014, Cifelli terminated Raw’s services and the
relationship with Raw by providing written notice to Mr. Ducey and Raw from Cifelli’s
attorney. In that same notice, Mr. Cifelli demanded Raw turn over to Cifelli all the drawings
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documentation, and specifications related to the Cure Box, as well as the prototype built by
Raw under the Cifelli/Raw Agreements, and to assign to Mr. Cifelli ownership in the Cure
Box trademark registration.
46.
Initially, Ducey and Raw refused to return any of the items. Mr. Ducey and
Raw asserted and, upon information and belief, continue to assert substantial rights in and to
the intellectual property related to the Cure Box.
47. On or about October 1, 2014, Mr. Ducey and Raw relinquished possession of
the Cure Box prototype to Cifelli, but only after Mr. Ducey removed critical software and
hardware components from the prototype, thereby destroying the prototype and rendering it
worthless.
48. On information and belief, Mr. Ducey and Raw continue to refuse to return
the remaining components of the prototype and any of the documentation or other
confidential information related to the Cure Box.
49. The DCA noncompetition prohibition is in effect and enforceable until at
least the start of March 2017, three years after Mr. Cifelli provided written notice of
termination. Despite the prohibition against competing, upon information and belief, Mr
Ducey and Raw have hired or sought to hire persons to assist them in developing a product
that competes with Mr. Cifelli’s Cure Box.
50. In or about April 2014, Mr. Cifelli exclusively licensed to Med Ag all further
development and commercialization rights in all Cure Box plant processing invention
technology and all related intellectual property. Med Ag committed, as part of the license, to
protect and defend Cifelli’s design and ownership rights in and to the Cure Box invention.
Defendants’ Defamatory Statements
51. On information and belief, defendant Nathan Todd, on behalf of himself and
Cali Crusher, and others working on behalf of Cali Crusher, have contacted numerous Med
Ag existing and potential customers, and Med Ag’s existing and potential vendors, at least
during the Champs Trade Show at the Las Vegas Convention Center in Las Vegas, Nevada
on or about February 3, 2015 through February 5, 2015, and have made false, injurious and
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defamatory statements regarding Med Ag and the products Med Ag has sold and is offering
to sell to such customers. Mr. Todd’s and Cali Crusher’s false and defamatory statements
include at least the following:
a.
that defendants, including Cali Crusher, have “sued” Med Ag for
patent infringement related to Med Ag’s grinder products or for “infringing” Cali Crushers
grinder product, when in fact (i) Dukat sued Ducey for Ducey’s wrongful conduct with
regard to Raw, (ii) the lawsuit does not include claims for patent infringement, and (iii)
neither Todd nor Cali Crusher are parties to that lawsuit;
b. that Med Ag’s products are unlicensed and infringing patents in which
Todd and Cali Crusher hold an interest, knowing that Med Ag’s grinder products do not
infringe a valid claim of the ’595 patent;
c. that Med Ag’s business will be “shut down” soon due to Meg Ag’s
patent infring ement and/or “infringement of Cali Crusher’s grinder” and that Med Ag will
be prohibited from making and selling its grinder products; and
d. further, defendants failed to inform the third parties that Dane Dukat
has asserted he is the true inventor of the ’595 patent and that, if proven, it would deprive
defendants of any rights with regard to the ’595 patent.
52. Defendants Todd and Cali Crusher made each of the above-identified
statements and omissions with actual malice and with the intent to convey to Med Ag’s
customers and other third parties the false impression that Med Ag, and potentially its
customers, are subject to infringement claims by defendants, and to induce the customers to
not purchase grinder products from Med Ag and instead to purchase grinder products from
Cali Crusher or otherwise risk having their respective business operations disrupted.
53. Upon information and belief, in or about October 2014 and continuing
thereafter, defendant Ducey, on behalf of himself and Raw, stated to defendants Todd and
Cali Crusher at least the following:
a. that Mr. Ducey and Raw own all rights to the herb grinder intellectual
property;
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b. that Med Ag ’s herb grinders violate Mr. Ducey’s patent rights and
other intellectual property rights and purported rights of Raw in the grinder intellectual
property;
c.
that Mr. Ducey has sued Med Ag for patent infringement;
d. that Med Ag will be forced to cease its manufacturing of herb grinders
and
e. further, upon information and belief, Mr. Ducey failed to inform Mr.
Todd and Cali Crusher that Mr. Dukat is in fact that inventor of the herb grinder and that
Mr. Ducey obtained the ’595 patent through fraud on the USPTO.
54.
Mr. Ducey and Raw made each of the above-identified statements and
omissions with actual malice and with the intent to convey to Mr. Todd and Cali Crusher the
false impression that Med Ag and potentially its customers are subject to claims of patent
infringement and to dissuade Mr. Todd and Cali Crusher from conducting business with
Med Ag.
55. As a result of defendants’ false and defamatory statements, Med Ag has lost
and continues to lose product sales.
COUNT I
Slander
(Against All Defendants)
56. Paragraphs 1 to 55 are incorporated by reference herein as though set forth in
their entirety.
57. Defendants Ducey, Raw, Todd and Cali Crusher made certain false,
slanderous, and defamatory statements, as summarized in paragraphs 51 to 55, above.
58. The false, slanderous and defamatory statements were communicated to one
or more third persons.
59. Because the defamatory statements were about Med Ag’s business, trade or
professional conduct the damages are presumed.
60. Upon information and belief, defendants made the slanderous statements with
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actual malice and for the purpose of injuring Med Ag and its business.
61. Med Ag is entitled to have and recover from Defendants amounts necessary
to make Med Ag whole in response to defendants’ slanderous statements and to deter false
and malicious attacks on its reputation.
COUNT II
Tortious Interference with Business Relations
(Against All Defendants)
62. Paragraphs 1 to 61 are incorporated by reference herein as though set forth in
their entirety.
63.
Meg Ag has a valid and existing business relationship and expectancy of future
business with its customers and potential customers.
64. Defendants intentionally published statements that were false, misleading
and/or deceptive to Med Ag’s customers and expected customers to further defendants
own business opportunities and promote the sale of defendants’ products to the detriment
of Med Ag’s products.
65. Defendants intentionally interfered thus inducing or causing a breach or
termination of Med Ag’s relationships or expectancies.
66. Med Ag was and continues to be damaged as a result of defendants’ actions.
67. Defendants’ actions were in bad faith, willful, wanton and undertaken with a
callous disregard for Med Ag ’s interests and business relations.
COUNT III
Correction of Inventors Pursuant to 35 U.S.C. § 256 on U.S. Patent No. D714,595
(Against Cole P. Ducey)
68. Paragraphs 1 to 67 are incorporated by reference herein as though set forth in
their entirety.
69. Dane Dukat conceived of all of the inventions disclosed or claimed in the ’595
patent and is the sole inventor of the ’595 patent.
70. Mr. Dukat should have been, but was not, named as an inventor on the ’595
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patent. His omission was error, which error arose without deceptive intent on his part.
71. Cole Ducey, the named inventor of the ’595 patent, did not make any
contribution to the conception of the claimed subject matter of the ’595 patent. Mr. Ducey’s
inclusion as an inventor was in error.
72. Mr. Dukat should be named as the inventor of the ’595 patent and Mr. Ducey
should be removed as an inventor of the ’595 patent.
73. Mr. Dukat has financial and reputational interests that will be advanced if he is
added as an inventor of the ’595 patent, and if Mr. Ducey is removed as an inventor of the
’595 patent.
74.
Mr. Dukat therefore requests correction of the inventor named in the ’595
patent to substitute Mr. Dukat in place of Mr. Ducey.
COUNT IV
Declaratory Judgment – Invalidity of the ’595 Patent
75. Paragraphs 1 to 74 are incorporated by reference herein as though set forth in
their entirety.
76. The parties have an actual case or controversy regarding the invalidity of the
’595 patent and the controversy is ripe for adjudication by this Court pursuant to 28 U.S.C. §
2201, et seq.
77. The parties dispute whether the ’595 patent as currently issued is invalid due
to the failure to name the correct inventor pursuant to 35 U.S.C. § 102(f).
78. Plaintiffs are entitled to a declaratory judgment pursuant to 28 U.S.C. § 2201,
et seq . that the sole claim of the ’595 patent is invalid.
COUNT V
Declaratory Judgment – Unenforceability of the ’595 Patent
79. Paragraphs 1 to 78 are incorporated by reference herein as though set forth in
their entirety.
80. The parties have an actual case or controversy regarding the enforceability of
the ’595 patent and the controversy is ripe for adjudication by this Court pursuant to 29
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U.S.C. § 2201, et seq .
81. The parties dispute whether the ’595 patent is unenforceable due to the
inequitable conduct of Cole Ducey.
82.
In a sworn declaration to the USPTO, Mr. Ducey declared himself to be the
sole inventor of the subject matter claimed in the ’595 patent. As set forth above, Mr
Ducey’s statement was completely false and Mr. Ducey knew the statement was false. Mr
Ducey submitted the declaration with the intent to deceive the USPTO into believing that he
was the sole inventor of the ’595 patent. In truth, Mr. Ducey was not an inventor at all, and
Dane Dukat should have been named as the inventor of the patent.
83.
Mr. Ducey’s false claim of inventorship was a material misrepresentation
because the patent would not have issued but for Ducey’s false claim of inventorship. If Mr
Ducey had truthfully informed the USPTO that he did not invent the subject matter of the
patent, the patent could not have issued to him pursuant to 35 U.S.C. §§ 101 and 102(f).
84. Further, the USPTO would not have issued the patent if it had known that
Mr. Dukat should have been listed as the sole inventor and that the claimed invention was
inaccurately represented as Mr. Ducey’s work.
85. Plaintiffs are entitled to a declaratory judgment pursuant to 28 U.S.C. § 2201,
et seq., that the ’595 patent is unenforceable due to the inequitable conduct of Cole Ducey.
COUNT VI
Unjust Enrichment/Restitution
(Against All Defendants)
86. Paragraphs 1 to 85 are incorporated by reference herein as though set forth in
their entirety.
87. Defendants Mr. Ducey and Raw were enriched by improperly obtaining the
’595 patent and/or any license or other payments or benefits therefrom, at Dane Dukat and
Med Ag ’s expense.
88. As a direct and proximate cause of defendants’ conduct, Dukat and Med Ag
have been harmed in an amount to be determined at trial, and will continue to be harmed
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until appropriate injunctive relief is granted.
89. Under these circumstances, equity and good conscience would not permit
defendants to retain any ill-gotten gains.
COUNT VII
Declaratory Judgment – Ownership of Cure Box Intellectual Property Rights
(Against Mr. Ducey and Raw)
90. Paragraphs 1 to 89 are incorporated by reference herein as though set forth in
their entirety.
91. An actual case or controversy exists between Mr. Cifelli, on the one hand, and
Mr. Ducey and Raw, on the other hand, as to ownership of the rights, title and interest in the
Cure Box, including all intellectual property related thereto, and the controversy is ripe for
adjudication by this Court pursuant to 28 U.S.C. § 2201, et seq.
92. Mr. Cifelli is entitled to a declaratory judgment pursuant to 28 U.S.C. § 2201, e
seq., that neither Mr. Ducey nor Raw own any rights, title or interests in the Cure Box,
including any and all intellectual property related thereto.
COUNT VIII
Breach of Contract
(Against Raw)
93. Paragraphs 1 to 92 are incorporated by reference herein as though set forth in
their entirety.
94. Cifelli and Raw are parties to the DCA, a valuable and enforceable contract
supported by consideration.
95.
Cifelli abided by the terms of the DCA.
96. Raw failed to perform its obligations under the DCA as set forth above,
including by at least the following conduct:
a. failing and refusing to provide to Cifelli the Cure Box prototype
without removal of any component parts thereof;
b. failing and refusing to return to Cifelli confidential information relating
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to the Cure Box;
c. upon information and belief, using Cifelli’s confidential information for
purposes of developing a competing device;
d.
upon information and belief, hiring or seeking to hire an engineer or
other persons to assist Raw in developing a device to compete with the Cure Box; and
e. asserting Raw is the owner of the Cure Box and all rights, interests and
title to the intellectual property relating thereto in contravention of the terms of the DCA.
97. No event occurred discharging Raw of its duties to perform under the DCA.
98. As a result of Raw’s conduct, Cifelli has suffered actual and consequential
damages in an amount to be proven at trial plus pre- and post-judgment interest.
99. Pursuant to, inter alia , A.R.S. §§ 12-341 and 12-341.01, Cifelli is entitled to
recover his reasonable attorneys’ fees and costs.
COUNT IX
Breach of Contract
(Against Raw)
100. Paragraphs 1 to 99 are incorporated by reference herein as though set forth in
their entirety.
101. Mr. Cifelli and Raw entered into an oral contract under which Mr. Cifelli
agreed to create a website for Raw and to provide other valuable services and Raw agreed to
compensate Mr. Cifelli for his services and reimburse his expenses.
102. Mr. Cifelli performed his obligations under the contract.
103. Raw failed to perform its obligations under the contract and failed and refused
to compensate Mr. Cifelli for his services and reimburse him for his expenses.
104. No event occurred discharging Raw of its duties to perform under the
contract.
105. As a result of Raw’s conduct, Cifelli has suffered actual and consequentia
damages in an amount to be proven at trial plus pre- and post-judgment interest.
106. Pursuant to, inter alia , A.R.S. §§ 12-341 and 12-341.01, Cifelli is entitled to
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-16-
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recover his reasonable attorneys’ fees and costs.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs request the Court grant the following relief in their favor
and against Defendants:
A. For general damages in an amount according to proof at trial;
B. For special damages in an amount according to proof at trial;
C. For appropriate injunctive relief;
D. For an order to the USPTO to correct the ’595 patent to name Dane Dukat as
the sole inventor;
E.
For a declaration and judgment finding that the ’595 patent is invalid as
currently issued.
F. For a declaration and judgment finding that the ’595 patent is unenforceable.
G. For a declaration and judgment finding that Cifelli is the owner of all rights
interest and title in the Cure Box, including all intellectual property rights;
H. Cifelli recover his costs and attorneys’ fees incurred pursuant to A.R.S. §§ 12 -
341 and 12-341.01 or otherwise;
I. For costs;
J. For reasonable attorney’s fees;
K. For pre-judgment and post-judgment interest;
L. For a constructive trust to be preliminarily and permanently imposed upon the
’595 patent and any benefits derived therefrom, and for Ducey to be declared constructive or
involuntary trustee holding the ’595 patent and any ill-gotten gains for the benefit of Mr.
Dukat;
M. For an awarding to plaintiffs for their reasonable attorneys’ fees, because this
is an exceptional case under 35 U.S.C. § 285; and
N. Granting such other and further relief as this Court may deem just and
appropriate.
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DEMAND FOR JURY TRIAL
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, plaintiffs demand a
trial by jury of this action.
DATED this 19th day of March, 2015.
BOOTH UDALL FULLER, PLC
/s/ Michelle G. BreitMichelle G. Breit (SBN 021439)[email protected] 1255 W. Rio Salado Parkway, Suite 215
Tempe, Arizona 85281 Telephone (480) 830-2700Facsimile (480) 830-2717
Attorneys for the Plaintiffs
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UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA
Civil Cover Sheet
This automated JS-44 conforms generally to the manual JS-44 approved by the Judicial Conference of the United States in
September 1974. The data is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet.The information contained herein neither replaces nor supplements the filing and service of pleadings or other papers as
required by law. This form is authorized for use only in the District of Arizona.
The completed cover sheet must be printed directly to PDF and filed as an
attachment to the Complaint or Notice of Removal.
Plaintiff
(s):
Med Ag Ventures Inc. ; Dane J.
Dukat ; Justin T. Cifelli
Defendant
(s):
Cole P. Ducey ; Raw CNC, LLC ;
Nathan W. Todd ; Cali Crusher,
LLC
County of Residence: MaricopaCounty of Residence: Outside the State of
Arizona
County Where Claim For Relief Arose: Maricopa
Plaintiff's Atty(s): Defendant's Atty(s):
Michelle G. Breit ( Med Ag Ventures Inc. ; Dane
J. Dukat ; Justin T. Cifelli )BOOTH UDALL FULLER, PLC
1255 W. Rio Salado Pkwy., #215
Tempe, Arizona 85281
480-830-2700
II. Basis of Jurisdiction: 3. Federal Question (U.S. not a party)
III. Citizenship of Principal
Parties (Diversity Cases Only)
Plaintiff:-1 Citizen of This State
Defendant:- 2 Citizen of Another State
IV. Origin : 1. Original Proceeding
V. Nature of Suit: 830 Patent
VI.Cause of Action: Title 35 of the United States Code, § 256.
VII. Requested in Complaint
Page 1 of 2
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Class Action: No
Dollar Demand: DJ; $TBD
Jury Demand: Yes
VIII. This case is not related to another case.
Signature: /s/ Michelle G. Breit
Date: 3/19/2015
If any of this information is incorrect, please go back to the Civil Cover Sheet Input form using the Back button in
your browser and change it. Once correct, save this form as a PDF and include it as an attachment to your case
opening documents.
Revised: 01/2014
Page 2 of 2
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Exhibit A
Exhibit A
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1 2 ) United
States
Design Patent 1 0 )
P a t e n t N 0 . 2
USOOD71459SS
US
D 7 1 4 , 5 9 5
S
Ducey
4 5 ) Date o f P a t e n t : 4 * O c t . 7 , 2014
( 5 4 )
HERB
GRINDER 7 , 3 6 7 , 5 1 9 B2 5 / 2 0 0 8
d e G r o o t e
e t 3 1 .
7,422,170
B2* 9/2 0 08 Bao . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 241/168
_
D594,288
s 6/2 0 0 9
Mah tal.
( 7 1 )
A p p l i c a n t .
C o l e D u c e y ,
S a n M a r c o s , CA
U S )
1 3 6 2 1 6 0 9 S
1 1 / 2 0 1 0
M c G u y e r
e t
a l ‘
7 , 8 8 6 , 9 9 9
B2
2 / 2 0 1 1 R u z y c k y
( 7 2 ) I n v e n t o r : Cole D u c e y , San M a r c o s ,
CA
U S ) 8 , 0 8 3 , 1 6 7 B 1 1 2 / 2 0 1 1 N a m a k i a n e r a 1 ,
8 , 2 2 0 , 7 3 2 B2 7 / 2 0 1 2 G r i f ? n
e t
a 1 .
**) Term
Years
S
Kent . . . . . . . . . . . . . . . . . . . . . . . . . . .
..
678,004
s
3/2013 Dam
_ 8,393,563 B2 3/2013 Chaouietal.
( 2 1 ) APPI'NO 2 9 / 4 8 8 ’ 7 1 5 D 6 9 5 , 0 6 7
s
1 2 / 2 0 1 3 W i l s o n e t a 1 .
_ 2010/0301806 A1 12/2010 Ormaza
t
a 1 .
( 2 2 ) F l l e d l Apr-22,2014 2 0 1 2 / 0 0 9 7 7 7 4 A1
4 / 2 0 1 2
H a i n b a c h
_ 2013/0015278 A1 1/2013 dwards
52Cé110)Cl.
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
. . 07 04 2 0 1 3 / 0 2 1 4 0 6 8 A1 8 / 2 0 1 3 C a m i t t a
USPC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D7/679; D7/37 2 *
cited
by
xaminer
( 5 8 )
F i e l d o f
C l a s s i ? c a t i o n S e a r c h
CPC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . A47]
2/08
Primary Examiner*erry W a l l a ce
USPC
. . . . . . . . . . . .
D7/679, 59m598,
3 7 2 , 3 7 3 ,
4 0 1 . 1 ,
( 7 4 ) A t t o r n e y ,
A g e / 1 1 ,
or
Firm
uche
s s o c i a t e s , PC;
2 2 2 / 1 4 2 1 4 1 4 2 9 , 4 8 0 ; 9 9 / 4 8 4 4 4 8 5 ,
J o h n
K - B u c h e
9 9 / 4 9 5 ,
5 0 9 4 5 1 0 ,
2 4 1 / 2 5 ,
1 0 1 . 2 ,
1 9 9 . 1 2 ,
241/1013, 273142734, 2 8 2 . 1 ,
1 6 8 , 1 6 9 , ( 5 7 )
_
CLAIM
_
241M691 8 3 36 9 2
9 5 The
o r n a m e n t a l
d e 5 1 g n
o f an h e r b
g r m d e r ,
a s
shown
and
S e e
a p p l i c a t i o n
? l e f o r c o m p l e t e s e a r c h h i s t o r y . d e s c n b e d
( 5 6 ) R e f e r e n c e s C i t e d DESCRIPTION
U . S . PATENTDOCUMENTS
7 9 5 , 7 4 6
A
4 / 1 9 0 5
Wing?eld t a 1 .
2,602,596 A
7/1952
Jones e t
a l . . . . . . . . . . . . . . . . .
24l/169.1
D 1 8 9 , 3 1 0 S
1 1 / 1 9 6 0
C r a i g
3 , 7 2 9 , 0 9 6 A
4 / 1 9 7 3
F i t z n e r e t
a 1 .
D250,280 S 1 1 / 1 9 7 8 Waldman
4 , 3 0 4 , 3 6 3
A
1 2 / 1 9 8 1
A t k i e l s k i
D307,223 S 4 / 1 9 9 0 R o s s a r i
5,071,663 A 12/1991 Dugan
. . . . . . . . . . . . . . . . . . . . . . . .
. .
241/168
D378,653 S 4 / 1 9 9 7 R i c h a r d i
D447,920
S
9 / 2 0 0 1 L i l l e l u n d
e t
a 1 .
6 , 5 1 7 , 0 1 8 B2
2 / 2 0 0 3
Manson
D 4 7 4 , 3 7 8 S 5 / 2 0 0 3
Brandenng
D477,503
S * 7/2003
Wong
. . . . . . . . . . . . . . . . . . . . . . . . . .
. .
D7/678
6 , 6 6 3 , 0 3 1 B2* 1 2 / 2 0 0 3 Henderson t a 1 . 2 4 1 / 1 6 9 . 1
6,834,817 B2* 12/2 0 0 4 Manson . . . . . . . . . . . . . . . . . . . . . 241/169.1
D501,372 S
2 / 2 0 0 5
Lo
6 , 9 4 5 , 4 8 6
B2 9 / 2 0 0 5
T e n g
7 , 1 4 7 , 1 7 4
B2
1 2 / 2 0 0 6 Mansen
F I G . 1
i s
a t o p
p l a n view o f
t h e
h e r b
g r i n d e r s h o w i n g
my ew
d e s i g n .
F I G . 2 i s a bottom p l a n view o f F I G . 1 .
F I G .
3
i s
a t o p p e r s p e c t i v e v i e w o f o p t i e r o f h e
h e r b
g r i n d e r .
F I G . 4 i s a bottom p e r s p e c t i v e view
of
I G . 3 .
F I G . 5 i s a
t o p p e r s p e c t i v e
view o f t h e s e c o n d
i e r
o f t h e h e r b
g r i n d e r .
F I G . 6 i s a
t o p p e r s p e c t i v e view
o f t h e t h i r d t i e r o f t h e h e r b
g r i n d e r .
F I G .
7
i s
a
t o p p e r s p e c t i v e
view
o f
t h e
bottom
i e r
o f
t h e
h e r b
g r i n d e r ; a n d ,
F I G .
8
i s
a n e x p l o d e d p e r s p e c t i v e v i e w o f t h e h e r b g r i n d e r .
The s e c t i o n s a r e shown s e p a r a t e l y f o r
c l a r i t y
and e a s e o f
i l l u s t r a t i o n .
The
broken i n e s
a r e
f o r
l l u s t r a t i v e
p u r p o s e s o n l y
and form no p a r t o f
t h e
c l a i m e d d e s i g n .
1 C l a i m , 5 Drawing S h e e t s
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US. atent
0a.
,
2 0 1 4
S h e e t
1
0 f 5
US 714,595
S
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US
D 7 1 4 , 5 9 5
S
h e e t 2 0 f 5
c t .
7 ,
2 0 1 4
S .
P a t e n t
F l G . 3
FIGA
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US. atent
0a.
,
2 0 1 4
S h e e t
3
0 f 5
US 714,595 S
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US. atent
0a.
,
2 0 1 4
S h e e t 4 0 f 5
US 714,595
S
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US. atent
0a.
,
2 0 1 4
S h e e t 5 0 f 5
US 714,595
S
F I G
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Exhibit B
Exhibit B
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Mutual Non-Disclosure Agreement
This Mutual Non-Disclosure Agreement (the "Agreement") is entered into this 3rd day of July,
2013 by and between Raw CNC, LLC and Dane Dukat, (collectively "Consultant" herein) a New
Mexico limited liability company, having its principal place
of
business
in
San Diego California,
and Cifahoy, LLC and its managing member Justin Cifelli (collectively "Company" herein), a
LLC based in Scottsdale,
AZ.
Whereas, each wishes to reveal certain infonnation which it deems proprietary and
confidential to the other; and
Whereas, the parties hereby acknowledge that any information which each may obtain
from the other regarding their respective inventions, products, services and software has
commercial value and is proprietary to the disclosing party.
Therefore, Consultant and Company agree to maintain the confidentiality
of
information
provided
to
each by the other under the following terms and conditions and agree
as
follows for
good and valuable consideration, receipt and sufficiency
of
which is hereby acknowledged:
l "Confidential Information" shall mean and include all information which one party
receives directly or indirectly, in writing or verbally, from the other or any director, officer,
employee or agent of the same to include, without limitation, (a) information relating to the
business affairs, methods of business, management information systems, inventions, products
and services, trade secrets, software applications, and other proprietary information or ideas
regarding the disclosing party's products, services and business plans as they may exist from
time to time. Confidential Information also includes, without limitation, any summary, repmt,
compilation, analysis, drawings, specifications, abstract or conclusion,
in
any form, or otherwise
existing
as
a result
of
any other Confidential Information (also referred to herein
as
"Cl''). CI
is
to specifically include but not be limited to Company's product portfolio plans targeting
consumable micro-green farming and hydroponic industries such
as
its plant growing and
processing technologies (i.e., cure box and LED lighting designs).
2. Duty of Cont1dentiality. Confidential Information shall be used only for the purpose
of evaluating a possible business transaction or business relationship between the parties; and
each party shall keep all Confidential Information
of
the other party confidential and shall not
intentionally disclose or fail to take all reasonable measures to prevent the disclosure
of
Confidential Information to any individual, corporation, partnership, trust, governmental
authority or any other third party without express written consent of the disclosing party. Each
party shall use the Confidential Information revealed by the other party solely for the purpose set
forth above. Except for that limited purpose, no license or right
of
any kind is given the recipient
with respect to Confidential Information, including no license or right under any patent,
copyright, trade secret, trademark, mask work or other intellectual propetty right
of
the party
revealing the Confidential Information. The recipient shall maintain
in
confidence and not
disclose or permit access to all or any part of the Confidential Information other than those
of
its
employees who have a need to know for the sole business purpose as set forth above and subject
to the terms and conditions
of
this Agreement. The recipient shall have a duty to protect only that
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Confidential Information which (i) is marked confidential or proprietary or (ii) will be
of
such a
nature
as
may reasonably be expected to be confidential or proprietary. Joint discussions or
efforts to improve CI or develop investor and market demand or awareness in any item of CI
does not convey rights on the other party unless and until agreed to in writing signed by the party
to
be bound.
3. Limitations on Duty
of
Confidentiality. The recipient shall have no duty
of
confidentiality with respect to any information or material which:
(a) Is known to the recipient at the time
of
its disclosure to the recipient;
(b)
Is or becomes publicly known through no wrongful act or the recipient;
(c) Is received from a third party without breach
of
the restrictions contained
111
this
Agreement;
(d) Is furnished to a third party by the disclosing party without a similar restriction on such
third party and which restriction is, or should be reasonably known by the recipient.
(e) Is approved for release by the written authorization
of
the revealing party.
4. Ownership. All Confidential Information delivered by either party to the other shall be
and remain the property
of
the revealing party and shall be promptly returned, together with any
copies thereof, to the revealing party upon written request.
5. Security
of
Confidential Information. The parties agree that they shall use and maintain
security procedures to assure, in a commercially reasonable manner, that no entity other than the
party owning the Confidential Information may take any action that would violate the terms
of
this Agreement. Each party shall promptly repmt to the other (a) any violation
of
the provisions
of
this Agreement that occurs and (b) any occurrence
of
which a party has or should have
knowledge,
in
which a third party directly or indirectly gains access to Confidential Information
through or
ti·om
that party or
its
officers, directors, employees or agents.
6.
Subsequent Agreement.
In
the event discussions between the parties result in any
agreement for either to provide products and/or services
of
any nature including involving any CI
to the other pmty, the parties expressly agree that neither will acquire by performance
of
said
agreement any right to the products and/or services
of
the other, including any right to market the
same to any other party without the express written consent
of
the party owning such products or
services. The parties further covenant that neither will appropriate any Confidential Information
of
the other for its own use or for the use
of
others.
7. Term. The duty
of
confidentiality set forth in this Agreement shall survive termination
of
any discussions regarding a possible business transaction and shall be incorporated in any
subsequent agreement that may arise from such discussions, in
substantially the same form as
contained herein and shall remain in effect for three (3) years from the date
of
termination of
such relationship.
8.
Miscellaneous.
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(a) This Agreement shall be governed and interpreted in accordance with the laws
of
the State of Arizona. Each party agrees to jurisdiction and venue of any dispute in Maricopa
County, Arizona. In
the event
of
a dispute between the parties, the parties agree to submit this
matter to mediation, with each party bearing its own costs and expenses except splitting equally
the mediator fees.
If
mediation is unsuccessful, the parties agree
to
submit the matter to binding
arbitration
if
they can agree on an arbitrator and arbitration method
in
good faith. If the parties
are unable to agree on submission
of
the matter to binding arbitration, the courts sitting in
Maricopa County may be engaged and the prevailing party may be entitled to reasonable
attorneys' fees and costs
if
the other party
is
found not
to
have exercised good faith
to
reasonably
avoid conflict and disagreement and resolve the dispute without need of formal court litigation.
(b) This Agreement does not obligate the parties to enter into a business relationship
with each other, nor does t prevent either party from developing competitive products or
services,
as
long
as
the duty
of
confidentiality created hereunder
is
not violated.
(c) This Agreement shall be binding upon the parties, their successors and assigns.
Neither party may assign this Agreement nor any Confidential Information received
as
a result
of
the Agreement without the revealing patty's prior written consent, which shall not be
unreasonably withheld.
(d) This Agreement constitutes the entire agreement and understanding
of
the parties
with respect to the subject matter
of this Agreement and supersedes any prior agreement. Any
amendment or modifications
of
this Agreement shall be
in
writing and executed by duly
authorized representatives
of
the parties. If this Agreement conflicts with any existing or
subsequent agreement this Agreement shall control unless such subsequent agreement
specifically references this Agreement and expressly states the intent and manner to supersede
this Agreement.
Consultant and Company hereby acknowledge the acceptance
of
the above terms
as
of the date
set forth above.
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Exhibit C
Exhibit C
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©
Cifahoy, LLC, 2013, All Rights Reserved.
DEVELOPMENT CONSl.JLTING AGREEMENT
THIS AGREEMENT
("Agreement"), made and entered into
as
of
July 3rd, 2013 (the
"Effective Date"), by and between
DANE Dl.JKAT
and Raw CNC, LLC (collectively the
"Consultant" herein), and CIFAHOY, LLC, and Justin Cifelli (collectively "Company" herein).
Consultant nd Company are. referred to as the parties or Parties.
WHEREAS, the parties have agreed to discuss a business relationship (or already have
such a relationship), have executed a mutual non-disclosure agreement ("MNDA") immediately
prior to execution hereof (which may be attached as Exhibit A and is incorporated herein and not
superseded hereby
-- in
the event
of
a conflict
in
terms and provisions between the MNDA and
this Agreement, this Agreement shall control), which business discussions and relationship will
necessitate the exchange
of
and creation of additional proprietary confidential information and
related intellectual propetty and products; and
AND WHEREAS, Consultant acknowledges the purpose
of
this business relationship is
to develop products and intellectual property to be owned exclusively by COMPANY including
but not limited to a plant cure box for processing
of
micro-green and botanical items, and the
LED grow light technology and other products and services for plant, hydroponic, farming and
related production and processing and consumption inventions for industrial, business and
consumer customers/markets (such products and service inventions
of
Company are referred to
herein
as
the "Projects," or "Confidential Information" or "CI"
of
Company). Projects include
all
associated software coding, Internet/web marketing expertise, engineering designs/drawings,
product concepts/designs, product prototypes, future product versions and feature ideas and plans
which may arise, and the associated business development and marketing plans and relationships
developed
in
connection with the Projects. Consultant will assist
in
the development
of
the
Projects on a fair basis
as
agreed from time to time
as
authorized by Company
in
its discretion.
AND WHEREAS,
Company has expertise that may be
of
value to Consultant and
Consultant may request assistance from Company from time to time and will fairly compensate
and reward Company for its effort and assistance;
NOW, THEREFORE, for good consideration the Consultant and COMPANY agree as
follows:
1.
Preambles. The above preambles are incorporated herein. The objective
of
this
relationship
is
for Consultant to assist Company in Projects development. Consultant agrees the
intent of the preambles is that Consultant releases any and all claims or other rights it may have
to Projects related materials, inventions, discoveries and any associated rights.
2. Trade Secrets and Confidential Information. All information given to Consultant
in connection herewith, and the work product
of
the parties hereto related to this relationship
("Work Product"), is considered confidential trade secrets and property exclusively of
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COMPANY ("Intellectual Property" herein) and shall be deemed Cl of Company m the
associated MNDA.
2. Restrictions
on
Use and Disclosure. Consultant agrees not to disclose to third
parties or use the Intellectual Property in competition with COMPANY.
3. Excluded Information. For purposes
of
this Agreement, Intellectual Property
shall not include any information:
(a) that is already known to the receiving party at the time
of
disclosure and is
free from an obligation
of
confidentiality;
(b) information generally known to the public already.
4. Injunction. The unauthorized disclosure or use
of
any Intellectual Property could
cause irreparable harm and significant injury to Company. Accordingly, Company has the right
to seek and obtain an immediate injunction enjoining any breach
of
this Agreement pe1taining to
use or disclosure
of
Intellectual Property.
5. Miscellaneous.
a. The parties will agree
in
wntmg from time to time the manner
of
compensating Consultant for services hereunder, but in no event shall
Company be obligated to Consultant for any fees and costs not invoiced
within 30 days of Consultant performing compensable services hereunder.
b. If Company performs services to Consultant to assist Consultant in connection
herewith or in connection with other matters under consideration and
governed by the MNDA, Company reserves the right to bill and invoice
Consultant for associated services and consulting.
c.
The parties may agree
to
some manner
of
offset for services rendered
to
each
other
if
in writing as they anticipate some manner and measure
of
mutually
assisting each other and have already discussed the possibility of a long term
strategic relationship if possible and
if
fair agreeable terms can be agreed
upon.
d. This Agreement shall be governed by, and construed
in
accordance with the
laws
of
the State
of
Arizona (if an action brought
in
either
of
these
jurisdictions then that law shall apply).
e. This Agreement shall inure to the benefit on the parties and their successors
and assigns.
f Disputes over payments due Consultant do not affect the interpretation
of
effect hereof nor the ownership and rights to
all
work product and associated
CI involved with or created on the Project or Projects being worked on by the
parties for Company.
g. Consultant agrees to execute any additional paperwork required, at no extra
cost to Company, within 48 hours
of
any request, to reflect the understanding
hereunder and ownership by Company
of
all CI (Trade Secrets and
Confidential Information and Work Product collectively Company's
Intellectual Property).
2
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h. Consultant agrees it is an independent contractor and not an employee,
perfonns similar services for other people, is trained to perform the Services,
and is on control
of
the time and place
of
performance of services to
Company.
1.
This agreement is effective upon signing by both Parties,
is
continuing
nature and its term shall continue for three years after the Parties terminate
doing business together (Company continues to
solely and perpetually own all
Work Product and associated rights and CI disclosed to Consultant or created
pursuant hereto by collaboration
of
the parties).
J. Consultant's compensation shall be governed by separate agreement and
periodic not less than 30 day invoicing if Consultant claims payments are due,
(or addendurn exhibit hereto) although Consultant acknowledges it
has
received $1 and other good and valuable consideration
in
connection
herewith.
k. Either Party may terminate this agreement by servicing written notice
of
termination on the other. Consultant will turn over and leave all Work Product
from Services and other CI under its control during the term hereof to
Company immediately, and after termination not interfere with or corrupt any
aspects
of
Work Product or CI or otherwise impede Company's free use and
complete control
of
any such Work product or CI.
I Contractor warrants it has the skill and capacity to timely perform prototype
and product development services anticipated hereunder as represented to the
Company.
m.
Consultant acknowledges it has encouraged Company to engage Consultant
and collaborate with Consultant and in exchange therefor Consultant
is
promising to offer a strategic relationship to Company on reasonable terms
including but not limited to the opportunity to invest in
if
not acquire
Consultant. Nothing herein obligates Company however to do so.
n.
The Term hereof is the period beginning when the Patties first met
to
discuss
Services and ending three (3) years after the Parties stop working together by
written notice
of
termination of this Agreement. A termination hereof does not
impact the parties obligations to each other under the MNDA incorporated
herein.
o. This agreement may only be modified in writing, to the extent contrary
supersedes prior agreements between the Parties, and shall be liberally
construed.
6.
Exclusive Use and Benefit. Consultant will not develop and use or sell or
collaborate on a similar competing application or product to the Company's cure box, LED
lighting technology
or
other Company planned inventions disclosed
to
Consultant during the
term hereof without written approval
of
COMPANY.
3
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IN WITNESS
WHEREOF
the parties hereto have caused this Agreement to be executed
as
of
the date written above.
COMPANY: CONSULTANT:
By
Ffom
C Ji-·
_
By
Title: Justin Cifelli, Managing Member
Date: 7 3
:
2o /]'
Date:
7
4
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AO 120 (Rev. 08/10)
TO:Mail Stop 8
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
REPORT ON THE
FILING OR DETERMINATION OF AN
ACTION REGARDING A PATENT OR
TRADEMARK
In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
filed in the U.S. District Court on the following
G Trademarks or G Patents. ( G the patent action involves 35 U.S.C. § 292.):
DOCKET NO. DATE FILED U.S. DISTRICT COURT
PLAINTIFF DEFENDANT
PATENT OR
TRADEMARK NO.
DATE OF PATENT
OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BY
G Amendment G Answer G Cross Bill G Other Pleading
PATENT OR
TRADEMARK NO.
DATE OF PATENT
OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT
CLERK (BY) DEPUTY CLERK DATE
District of Arizona
3/19/2015 District of Arizona
Med Ag Ventures Inc.; Dane J. Dukat; and Justin T.Cifelli
Cole P. Ducey; Raw CNC, LLC; Nathan W. Todd; andCali Crusher, LLC
D714,595 10/7/2014 Cole Ducey
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