Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.1 Page 1 of 22
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`Jennifer D. Bennett (pro hac vice forthcoming)
`Jennifer.Bennett@dentons.com
`DENTONS US LLP
`One Market Plaza, Spear Tower, 24th Floor
`San Francisco, California 94105
`Tel: 415-267-4000
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`Daniel W. Short, WSBA #7945
`dan.short@painebamblen.com
`PAINE HAMBLEN LLP
`717 West Sprague Avenue, #1200
`Spokane, Washington 99201
`Tel: 509-455-6000
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`Attorneys for Plaintiff
`Her Majesty the Queen in Right of Canada as
`represented by the Minister of Agriculture and
`Agri-Food.
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WASHINGTON
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`Plaintiff,
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`vs.
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`HER MAJESTY THE QUEEN IN
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`RIGHT OF CANADA AS
`REPRESENTED BY THE MINISTER
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`OF AGRICULTURE AND AGRI-FOOD, )
`a Canadian governmental authority,
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`VAN WELL NURSERY, INC., a
`Washington
`Corporation, MONSON FRUIT
`COMPANY, INC., a Washington
`Corporation, GORDON GOODWIN, an
`individual, and SALLY GOODWIN, an
`individual.
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`Defendants
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`Case No. CaseNumber
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`COMPLAINT FOR: (1) PLANT
`PATENT INFRINGEMENT; (2)
`CORRECTION OF INVENTORSHIP;
`(3) DECLARATION OF
`OWNERSHIP; (4) UNFAIR
`COMPETITION AND FALSE
`DESIGNATION OF ORIGIN UNDER
`THE LANHAM ACT; (5) FALSE
`ADVERTISING UNDER THE
`LANHAM ACT; (6) CONVERSION;
`(7) TORTIOUS INTERFERENCE
`WITH BUSINESS RELATIONS; AND
`(8) UNFAIR COMPETITION.
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`DEMAND FOR JURY TRIAL
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.2 Page 2 of 22
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`COMPLAINT
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`1.
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`Plaintiff Her Majesty the Queen in Right of Canada as represented by the
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`Minister of Agriculture and Agri-Food (“Plaintiff” or “AAFC”), brings this Complaint
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`against Defendants Van Well Nursery, Inc., Monson Fruit Company and Gordon and
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`Sally Goodwin (collectively “Defendants”), for injunctive relief and monetary damages
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`as well as such other relief as specified herein, as follows:
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`INTRODUCTION
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`2.
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`This case relates to the protection and enforcement of intellectual property
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`rights in a Canadian bred sweet cherry called Staccato®. Pursuant to a Canadian
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`government funded tree fruit breeding program, Canadian breeder, W. David Lane bred
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`a new sweet cherry tree. One of the most distinguishing characteristics of the new
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`variety was its late maturity. This late fruit maturity extends the cherry harvest season
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`and gives a distinct financial advantage to growers. Agriculture and Agri-Food Canada
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`(“AAFC”) patented the new variety and called it Staccato®. Knowing that Staccato®
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`is an AAFC variety, knowing that it is a patented variety, and knowing that is known to
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`consumers as Staccato®, Defendants Van Well, Monson and Goodwin have and are
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`asexually propagating, possessing, growing, and selling trees and/or fruit they call
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`“Glory,” which is actually AAFC’s Staccato®. AAFC brings this lawsuit to stop this
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`flagrant and willful infringement of AAFC’s Staccato® patent and false, misleading,
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`deceptive and unfair business practices.
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`3.
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`Defendant Van Well came into possession of the variety, when under the
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`protection of a testing agreement, Plaintiff AAFC provided Defendant Van Well with
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`Staccato® for testing and evaluation. The agreement expressly prohibited Van Well
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`from distributing or selling Staccato®. Many years later, Van Well entered into an
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`agreement with AAFC’s commercialization licensee, Summerland Varieties
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`Corporation (“SVC”), then known as PICO, to propagate, market and sell a different
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.3 Page 3 of 22
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`AAFC bred cherry variety, Sonata. Pursuant to Van Well’s agreement with PICO, Van
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`Well, obtained, planted, and propagated AAFC’s Sonata. Sometime after Defendant
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`Van Well received Sonata from PICO, Defendant Goodwin purchased from Defendant
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`Van Well, AAFC’s Sonata trees.
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`4.
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`However, on information and belief, when Van Well delivered Sonata
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`trees to Goodwin, Van Well also, without permission from AAFC, delivered AAFC’s
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`Staccato® to Goodwin. The Sonata and Staccato® trees were both planted in
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`Goodwin’s orchard. Defendant Goodwin later rightfully observed that one of his
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`Sonata trees was different from the others. It was different because the tree he observed
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`was not Sonata but was AAFC’s Staccato®.
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`5. When Goodwin noticed that one of the trees was different he filed for a
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`U.S. patent, entitled “Sweet Cherry Tree Named ‘Goodwin;” on the allegedly different
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`tree he observed in his orchard and commercially called it “Glory.”
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`6.
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`Goodwin was granted a U.S. plant patent for Glory on May 1, 2012 which
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`he subsequently assigned to Defendant Van Well. However, the variety described and
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`claimed in the “Glory” patent was actually Staccato®. Because the Glory patent claims
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`the Staccato® variety, AAFC breeder W. David Lane is the proper inventor of the
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`variety and AAFC the owner of the “Glory” patent.
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`7.
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`Around 2012, AAFC and SVC learned that Goodwin had an allegedly new
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`variety he called “Glory” in his orchard, had filed for patent protection and that
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`Defendant Van Well was the owner of the patent. In early 2014, after a number of
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`genetic tests were conducted, SVC demanded Van Well stop marketing and selling
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`“Glory” since test results showed that “Glory” was actually AAFC’s Staccato®. In
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`2014, SVC and Defendant Van Well settled their dispute, whereby Defendant Van Well
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`agreed not to sell Glory, to sell to SVC whatever Glory trees Van Well had in its
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`possession, and destroy the Glory trees. And, in 2015 Van Well further confirmed to
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.4 Page 4 of 22
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`SVC that it had terminated its agreement with Defendant Goodwin relating to “Glory”.
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`Thus, in 2015, AAFC understood and relied upon Van Well’s representations that Van
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`Well was no longer going to grow, asexually propagate, distribute, market or sell Glory
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`trees, that Van Well no longer possessed Glory and that all of Van Well’s business
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`activities relating to Glory had ceased.
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`8.
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`However, in approximately October of 2017, SVC learned Van Well
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`reneged on its agreement with SVC by resuming its propagation of Glory trees for sale
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`of the trees in 2018 and 2019. Accordingly, in February of 2018, SVC repeatedly
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`demanded that Van Well not propagate or sell any Glory trees. And, on March 26,
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`2018, AAFC formally notified Defendant Van Well that it did not have permission
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`from AAFC to propagate or sell Glory and demanded Van Well not to do so.
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`9.
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`In approximately October of 2017, SVC also learned that the Glory trees
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`Van Well planted in 2017 were intended to be shipped and sold to Defendant Monson
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`Fruit Company, a Washington State grower. It was later confirmed by Van Well in
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`March of 2018 that the trees were ready to be shipped to Monson. Thus, beginning in
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`early April of 2018, SVC contacted Defendant Monson regarding Glory and warned
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`Defendant Monson not to take delivery of any Glory trees. But, on May 31, 2018, after
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`SVC followed-up with Monson regarding the Glory trees, Defendant Monson told SVC
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`that the Glory trees had already been planted. On information and belief, Defendant
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`Goodwin also provided Glory budwood to Defendant Monson. And, on information
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`and belief, Defendant Monson has also used the budwood obtained from Goodwin to
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`propagate hundreds of acres of Glory trees.
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`10. Despite unambiguous demands from AAFC and SVC in 2018 to Van Well
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`not to propagate and sell Glory trees and for Monson not to accept the trees, on
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`information and belief, Defendant Van Well has sold thousands of Glory trees to
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`Defendant Monson so that Defendant Monson could plant the trees and sell their fruit.
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.5 Page 5 of 22
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`Despite their knowledge that propagating, making, using, offering for sale, and selling
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`Glory, i.e., the patented Staccato® trees and their fruit, are unlicensed activities that
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`infringe the ’551 Staccato Patent, Defendant Van Well and Monson refused to refrain
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`from conducting these activities, and misled consumers.
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`11. On information and belief, each Defendant has grown and continues to
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`grow, has offered for sale and continues to offer for sale, and has sold or continues to
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`sell Glory trees or their fruit, which is the patented Staccato®, and will continue to do
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`so unless enjoined by this court.
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`THE PARTIES
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`12. Plaintiff Her Majesty the Queen in Right of Canada as represented by the
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`Minister of Agriculture and Agri-Food (“AAFC”) is a governmental authority
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`recognized under the federal laws of Canada. AAFC’s principal place of business is
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`located at 1341 Baseline Road, Ottawa, Ontario, Canada. The AAFC tree fruit
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`breeding program was established in 1924 to provide new varieties for the tree fruit
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`industry of British Columbia, Canada, and the world. Work at AAFC continues to
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`develop fruit varieties with specific traits and qualities. This breeding program at
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`AAFC’s Summerland Research and Development Centre, has produced many new tree
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`fruit varieties over the years including, the sweet cherry variety Staccato®. There are
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`three broad objectives of the cherry breeding program: (1) to diversify the product to
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`allow growers to take advantage of niche markets; (2) to improve environmental
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`adaptation to major fruit growing areas, for consistent production of high quality fruit;
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`and (3) to reduce the cost of production.
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`13. On information and belief, Defendant Van Well Nursery Inc. (“Van
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`Well”), is a Washington state corporation, having a principal place of business at 2821
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`Grant Road, East Wenatchee, Washington. Van Well is engaged in the business of
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`growing and selling fruit trees including, sweet cherry trees.
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.6 Page 6 of 22
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`14. On information and belief, Defendant Monson Fruit Company, Inc.
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`(“Monson”), is a Washington state corporation, having a principal place of business at
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`252 N. Rushmore Road, Selah, Washington. Monson Fruit Company is engaged in the
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`business of growing, supplying and selling fruit around the world, including, sweet
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`cherries.
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`15. On information and belief, Defendant Gordon Goodwin (“Goodwin”), is a
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`natural person residing in this judicial district, having an address at 5002 Joe Miller
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`Road, Wenatchee, Washington. Goodwin is a grower of sweet cherry trees and the
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`named inventor and owner of the Glory Patent.
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`16. On information and belief, Defendant Sally Goodwin is a natural person
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`residing in this judicial district, having an address at 5002 Joe Miller Road, Wenatchee,
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`Washington. Sally Goodwin is an owner of the Glory Patent along with her husband
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`Gordon Goodwin.
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`JURISDICTION AND VENUE
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`17. This Court has original jurisdiction over Plaintiff’s claims pursuant to 28
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`U.S.C. §§ 1331, 1338, 1367(a) and 2201. Additionally, this court has subject matter
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`jurisdiction over this action pursuant to 28 U.S.C. § 1332, as complete diversity exists
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`between Plaintiff and all Defendants and the amount in controversy exceeds $75,000.
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`18. This Court has original jurisdiction over Plaintiff’s claim for unfair
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`competition pursuant to 28 U.S.C. § 1338(b) because those state-law claims are related
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`to the claims under the patent laws and the Lanham Act. Alternatively, this Court has
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`supplemental jurisdiction over the related state-law claims pursuant to 28 U.S.C. §
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`1367(a) because those state-law claims form part of the same case or controversy and
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`derive from a common nucleus of operative facts as Plaintiff’s patent and Lanham Act
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`claims.
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`19. This Court also has personal jurisdiction over Defendants as they reside in
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.7 Page 7 of 22
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`this judicial district, they have continuous and systemic contacts with this judicial
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`district, have regularly conducted business in this judicial district, a substantial part of
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`the acts complained herein occurred in this judicial district, and/or Defendants have
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`committed acts of infringement in this judicial district.
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`20. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b),
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`1391(c), and 1400(b) because Van Well, Monson and the Goodwins reside in this
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`judicial district, have regularly conducted business in this judicial district, a substantial
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`part of the acts complained herein occurred in this judicial district, and/or Defendants
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`have committed acts of infringement in this judicial district.
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`FACTUAL BACKGROUND
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`A. THE ’551 STACCATO PATENT AND TRADEMARK
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`21. United States Patent No. PP 20,551 P3 (“’551 Staccato patent”), entitled
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`“Cherry Tree Named ‘13S2009’” was filed on March 6, 2003 and was issued on
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`December 15, 2009. The ’551 Staccato patent claims priority to a provisional
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`application filed on March 13, 2002. A true and correct copy of the ’551 Staccato
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`patent is attached as Exhibit A. This variety of cherry tree is commonly known as
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`Staccato®. The named inventor is W. David Lane. Her Majesty the Queen in Right of
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`Canada, as represented by AAFC, is the owner, by operation of Canadian law and
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`assignment, of the ’551 Staccato Patent.
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`22. The ’551 Staccato Patent describes and claims a new and distinct variety
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`of cherry tree denominated “13S2009,” and was given the commercial name
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`“Staccato®”.
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`23. Staccato®’s most distinguishing characteristic is that the fruit matures, on
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`average, significantly later than most other commercial cherry varieties. This very late
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`fruit maturity extends the cherry harvest season and gives a distinct financial advantage
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`to growers.
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.8 Page 8 of 22
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`24.
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`In the interest of receiving a royalty stream for the breeding program while
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`protecting the interests of the Canadian cherry growers, AAFC has entered into a
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`commercialization agreement with SVC. AAFC has sought to control the distribution
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`of Staccato® trees by filing for plant variety protection and/or plant breeders’ rights in
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`Canada, the European Union and seven other foreign countries.
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`25. Plaintiff AAFC is the owner of the U.S. federally registered mark
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`Staccato® (“the Staccato® mark”). The Staccato® trademark is protected in the United
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`States, Canada, the European Union and three other foreign countries.
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`26. AAFC owns all right, title, and interest in the Staccato® mark for goods
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`and services relating to live commercial fruit trees and fresh deciduous fruit, including
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`federal trademark Registration No. 3,245,440, issued May 22, 2007, in International
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`Class 31 (a true and correct copy of certificate of registration is attached as Exhibit B.)
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`27. AAFC and its licensees have used the Staccato® mark in commerce in the
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`United States since at least as early as August 1, 2002. The Staccato® mark has been
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`used in interstate commerce over the last seventeen years to distinguish Staccato®
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`sweet cherry trees and/or fruit from other cherry trees and/or fruit.
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`28. The Staccato® mark is a strong, arbitrary mark that warrants broad
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`protection against use that is not authorized by AAFC.
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`B.
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`THE RELATIONSHIP BETWEEN VAN WELL AND PLAINTIFF
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`AAFC AND SVC
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`29.
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`In late August 1990, Plaintiff AAFC and Defendant Van Well entered into
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`a Restriction Agreement for Plant Breeding Selections (“Restriction Agreement”).
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`“Selections” was defined, among others, to include 13S-20-9, later named Staccato®.
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`13S-20-9, Staccato®, was provided to Van Well under the terms of this agreement.
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`This Restriction Agreement obligated Defendant Van Well to restrict distribution and
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`propagation of the selections, protect AAFC’s rights to the selections, and report
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`COMPLAINT
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`evaluations of the selections to AAFC. The Restriction Agreement also prohibited
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`selling or distributing any of the selections for any purpose. The Restriction
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`Agreement also provides that any mutation, is the property of AAFC.
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`30.
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`In 1994, AAFC entered into a commercialization license with Summerland
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`Varieties Corporation (“SVC”), then known as PICO.
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`31. On July 15, 1998, SVC and Van Well entered into a Variety Development
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`Sublicense Agreement for AAFC variety Sonata. On information and belief, in the
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`summer of 1998, pursuant to the Variety Development agreement, SVC delivered
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`Sonata budwood to Defendant Van Well and Van Well budded Sonata trees. Defendant
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`Van Well later sold Sonata trees to Defendant Goodwin.
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`C. VAN WELL, GOODWIN, MONSON AND “GLORY”
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`32. On information and belief, Van Well delivered and sold Sonata trees to
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`Defendant Gordon Goodwin. On information and belief, Staccato® was also delivered
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`with the Sonata trees sold to Gordon Goodwin. The Staccato® tree was ultimately
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`planted in an orchard on Goodwin’s property and named “Glory” by Goodwin.
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`33. On December 1, 2010, Gordon Goodwin filed United States Patent No.
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`PP22,693, entitled “Sweet Cherry Tree Named ‘Goodwin’” (the “Glory ’693 Patent”).
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`The Glory ’693 Patent issued on May 1, 2012. A true and correct copy of the Glory
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`’693 Patent is attached as Exhibit C. The named inventor is Gordon C. Goodwin and at
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`issuance the Glory’693 Patent was assigned to Defendant Van Well. On information
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`and belief, in 2015, the Glory ’693 Patent was later assigned to Defendant Goodwin and
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`Sally Goodwin. On information and belief, Defendant Goodwin and Sally Goodwin are
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`the current owners of the Glory ‘693 Patent.
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`34. According to the Glory ’693 Patent, like Staccato®, Glory matures a full
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`30 days after Bing and was initially selected for, and distinguished by, its late maturing
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`fruit. Additionally, a Good Fruit Grower article, found at
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.10 Page 10 of 22
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`https://www.goodfruit.com/glory-be/, Goodwin is quoted as stating, “I thought it
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`[Glory] was sick. Everything else is ripe and they were little green cherries.” The
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`article also states “[e]ach year the fruit on that one tree ripened weeks after the rest of
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`the fruit had been picked.”
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`35. Similarly, in an article found at
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`https://www.capitalpress.com/state/washington/hopes-are-high-for-new-glory-
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`cherry/article_afd2c4b4-5cb1-5b2b-a300-100639cc0cae.html, it states, “Goodwin
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`thought there was something different when a tree he purchased as a Sumleta [Sonata]
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`from East Wenatchee’s Van Well Nursery Inc. ripened about a month later than it
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`should have.”
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`36. According to the Glory ’693 Patent, Glory is a whole tree mutation of
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`“Sumleta” [Sonata]. Sumleta [Sonata] is another AAFC owned cherry tree and is
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`patented as United States Patent No. PP11,378. According to the Glory ’693 Patent,
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`Gordon planted AAFC’s Sonata tree in his cherry orchard. According to the Glory
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`’693 Patent, in 2003 he observed that one of the Sonata trees was different than the
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`others. In particular, he noted that Glory’s fruit matured a week after Sonata and a full
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`30 days after Bing. This tree was then asexually propagated by budding onto Mazzard
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`rootstock. These trees were then planted in Goodwin’s orchard in 2005 and fruited in
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`2008. Then, in 2005, 150 trees were propagated on Gisela 6 rootstock using scionwood
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`from second generation and planted in 2007 and fruited in spring 2010. According to
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`the Glory ’693 Patent, all of the trees consistently carry the same late maturing
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`characteristic of the parent tree.
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`37. Glory bears little resemblance to Sonata and DNA results have shown they
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`are not related.
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`38. On information and belief, at some point after allegedly discovering Glory,
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`Defendant Goodwin provided Glory budwood to Defendant Monson. On information
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`COMPLAINT
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`and belief, Defendant Monson received the Glory budwood from Defendant Goodwin,
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`grafted the Glory budwood, has propagated hundreds of acres of Glory and has sold and
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`continues to sell Glory fruit.
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`39. On information and belief, in 2008, Defendant Goodwin entered into an
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`agreement with Defendant Van Well to commercialize “Glory.” On information and
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`belief, in 2009, Van Well propagated the first Glory trees for commercial sale. And, on
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`August 16, 2010, Goodwin reported he did his first commercial picking of Glory.
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`40. On information and belief, on May 1, 2013, Defendant Van Well entered
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`into an agreement with Defendant Goodwin relating to certain rights in “Glory.” On
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`information and belief, in approximately 2015, Van Well terminated its agreement with
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`Goodwin. Just prior to terminating its agreement with Goodwin, in 2014, Van Well
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`agreed to sell to SVC whatever Glory trees Van Well had in its possession and to
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`destroy them. Thus, by 2015, AAFC understood at the time that Van Well was no
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`longer going to grow, asexually propagate, distribute or sell Glory trees and had ceased
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`all business relating to Glory.
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`41. However, in the Spring of 2018, about four years later, on information and
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`belief, Defendant Van Well sold six thousand Glory trees to Defendant Monson. On
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`information and belief, in 2019, Defendant Van Well sold an additional nine thousand
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`Glory trees to Defendant Monson. On information and belief, Defendant Monson
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`planted the Glory trees and will sell their fruit.
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`“GLORY” IS STACCATO®
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`42. Genetic studies have shown that Glory is Staccato®.
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`43. SVC obtained leaf samples of “Glory” trees and engaged Dr. Paul
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`Wiersma to compare the DNA of “Glory” with the DNA of Staccato® and Sonata, and
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`other cherry trees. The DNA results showed that Glory and Sonata are not related and
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`that there was no genetic difference between Glory and Staccato®.
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.12 Page 12 of 22
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`44. Dr. Paul Wiersma conducted additional DNA testing using more
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`sophisticated and sensitive single nucleotide polymorphism (SNP) analysis and
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`reported there was less than a .0076% chance that Glory is not Staccato®. This study
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`showed it was highly probable Glory was not unique from Staccato®- i.e., Glory and
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`Staccato® are the same.
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`45. On information and belief, at the time AAFC was conducting its DNA
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`studies, Defendant Van Well hired Dr. Dhingra, Professor, Washington State University
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`and founder of the company Phytelligence, to conduct a DNA study. Dr. Dhingra and
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`Dr. Wiersma discussed the differences between their respective studies and Dr. Dhingra
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`would not agree with Dr. Wiersma that Glory was Staccato®. Despite the differences
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`of opinions between the experts at the time, as explained above, Defendant Van Well
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`decided to sell to SVC the Glory trees it had in its possession and destroy them.
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`46. Then, in 2017, AAFC was advised of a peer reviewed study entitled
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`“Evaluation of multiple approaches to identify genome wide polymorphisms in closely
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`related genotypes of sweet cherry (Prunus avium L),” by Washington State University
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`researchers, Seanna Hewitt, Benjamin Kilian, Ramyya Hari, Tyson Koepke, Richard
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`Sharpe and Amit Dhingra (the “Hewitt paper”). Amit Dhingra is the same Dr. Dhingra
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`who participated in the earlier discussions described in paragraph 45 with Dr. Wiersma
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`regarding whether Glory was Staccato® on behalf of Defendant Van Well.
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`47.
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`In the 2017 Hewitt paper, a number of genetic experiments were described
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`comparing the Staccato® and Glory genotypes. The Hewitt paper wrongly asserts that
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`whole genome sequencing (“WGS”) shows a difference between Glory and Staccato®.
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`The Hewitt paper WGS study is not reliable and does not show that Glory and
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`Staccato® have distinct genotypes. The Hewitt paper reported an alleged .161%
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`difference between the Staccato® and Glory genotypes. However, this difference was
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`within the error rate expected, but error rate was not considered by the authors.
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`COMPLAINT
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`48. AAFC has conducted an independent study and has confirmed that any
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`alleged differences between the genotypes of Staccato® and Glory from the Hewitt
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`paper were within the error rate and would be expected when comparing the same
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`variety. Specifically, any SNP differences are not due to differences between the
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`cultivars themselves but rather due to the method of analysis.
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`49.
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`In the independent and blind study, Staccato® from Canada, Staccato®
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`obtained from Washington State University (“WSU”), and Glory obtained from WSU
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`could not be reliably distinguished from each other given the variant pattern alone. The
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`analysis showed that the WGS variant differences seen were well within the margins of
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`WGS noise and sample preparation and/or sequencing error and indeed there was
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`greater similarity between the Glory from WSU and the Staccato® from WSU samples
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`than there was between the Staccato® from WSU and the Staccato® from Canada
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`samples. In accord, the Hewitt paper does not support that Glory is different than
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`Staccato® and when the analysis is conducted properly, shows Glory is the same as
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`Staccato®. Thus, it is improper to rely on the Hewitt paper to support the allegation
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`that Glory is different than Staccato®.
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`50. Defendants are not authorized by AAFC to have the Glory trees in their
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`possession and are not licensed to asexually propagate, possess, sell, market or
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`distribute Glory trees and/or their fruit.
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`51. Defendants Goodwin and Van Well have already admitted to possessing,
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`planting and selling Glory trees and Defendant Monson has admitted to planting the
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`trees and is also selling Glory fruit. On information and belief, the defendants have
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`grown and will continue to grow, have asexually reproduced and will continue to
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`asexually reproduce, and are offering for sale and will continue to offer for sale, the
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`patented Staccato® trees or fruit and improperly calling it Glory. Defendants have
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`refused to refrain from growing, asexually reproducing, making, using, offering for
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.14 Page 14 of 22
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`sale, or selling the patented Staccato® (i.e., “Glory”) trees or fruit.
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`FIRST CAUSE OF ACTION: PLANT PATENT INFRINGEMENT AGAINST
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`52. Plaintiff hereby incorporates by reference paragraphs 1-51, inclusive, as if
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`DEFENDANTS
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`set forth fully herein.
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`53.
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`In violation of 35 U.S.C. § 271, each of the Defendants is directly
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`infringing the ’551 Staccato Patent by practicing the claim of the ’551 Staccato Patent
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`in the asexually propagating, making, using, offering for sale, and/or selling the Glory
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`cherry tree and/or the fruit thereof.
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`54. On information and belief, upon knowledge of the ’551 Staccato Patent,
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`each of Defendants is contributing to the infringement of, and/or inducing infringement
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`of the ’551 Staccato Patent by, among other things, knowingly and with intent, actively
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`encouraging its customers, retailers and/or growers to propagate, make, use, offer for
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`sale and/or sell Glory trees and/or their fruit in a manner that constitutes infringement
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`of the ’551 Staccato Patent. There are no substantial uses of the Glory trees made,
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`used, sold or offered for sale by Defendants that do not infringe the ’551 Staccato
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`patent. Plaintiff has been and will be damaged by Defendants’ infringement unless
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`enjoined by this court.
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`SECOND CAUSE OF ACTION: CORRECTION OF INVENTORSHIP UNDER
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`35 U.S.C. § 256 AGAINST GOODWIN DEFENDANTS
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`55. Plaintiff hereby incorporates by reference paragraphs 1-54, inclusive, as if
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`set forth fully herein.
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`56. As mentioned above, Defendant Gordon Goodwin applied for and was
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`awarded the Glory’693 Patent based on the representation that he was the sole inventor.
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`57. W. David Lane is the sole inventor of the Glory ‘693 Patent.
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`58. Defendants Gordon and Sally Goodwin are the current assignees of the
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.15 Page 15 of 22
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`Glory ‘693 Patent.
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`59. The inventorship of the Glory patent is incorrect because through
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`omission, inadvertence and/or error, W. David Lane was not listed as the sole inventor
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`on the Glory ’693 Patent.
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`60. AAFC is the owner by operation of Canadian law of the Glory ‘693 Patent.
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`61. AAFC maintains a financial interest in the Glory ’693 Patent.
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`62. The Glory patent’s description that it is a of Sumleta [Sonata] is not
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`correct.
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`63. Given that the Glory ’693 Patent claims a variety of sweet cherry bred by
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`AAFC breeder W. David Lane, AAFC requests an order correcting inventorship on the
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`Glory ’693 Patent to name W. David Lane as the sole inventor.
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`THIRD CAUSE OF ACTION: DECLARATORY JUDGMENT UNDER 28 U.S.C.
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`§ 2201 AGAINST GOODWIN DEFENDANTS
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`64. Plaintiff hereby incorporates by reference paragraphs 1-63, inclusive, as if
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`set forth fully herein.
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`65. W. David Lane is the sole inventor of the Glory ‘693 Patent.
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`66. W. David Lane is not listed as the inventor of the Glory ‘693 Patent and
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`AAFC is not listed as the owner or assignee.
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`67. An actual, present and justiciable controversy has arisen concerning the
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`inventorship and ownership of the ‘693 patent.
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`68. Plaintiff seeks declaratory judgment from this Court that W. David Lane is
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`the sole inventor of the ‘693 patent and AAFC is the sole legal owner of the ‘693
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`patent.
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`COMPLAINT
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`Case 2:20-cv-00181-SAB ECF No. 1 filed 05/18/20 PageID.16 Page 16 of 22
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`FOURTH CAUSE OF ACTION: UNFAIR COMPETITION AND FALSE
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`DESIGNATION OF ORIGIN UNDER THE LANHAM ACT (15 U.S.C. §
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`1125(A)(1)(A)) AGAINST DEFENDANTS
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`69. Plaintiff hereby incorporates by reference paragraphs 1-68, inclusive, as if
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`set forth fully herein.
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`70. AAFC’s trademark rights in its Staccato® mark are protected under
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`federal common law.
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`71. On information and belief, Defendants have caused goods to enter into
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`interstate commerce with the false use of the name “Glory” on the trademarked
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`Staccato® trees and/or fruit.
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`72. Defe