Estta677683 06/11/2015 in the United States Patent And
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA677683 Filing date: 06/11/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92060709 Party Plaintiff Mendes SA Correspondence MICHAEL CULVER Address MILLEN WHITE ET AL 2200 CLARENDON BLVD STE 1400 ARLINGTON, VA 22201 UNITED STATES [email protected], [email protected], [email protected] Submission Motion to Suspend for Civil Action Filer's Name Michael Culver Filer's e-mail [email protected] Signature /michaelculver/ Date 06/11/2015 Attachments Mendes Motion to Suspend.pdf(985670 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Mendes SA ) Cancellation No. 92060709 ) ) Reg. No. 2653253 Petitioner ) Mark: VSL#3 ) Reg. No. 3093502 v. ) Mark: VSL ) Reg. No. 3275673 VSL Pharmaceuticals, Inc. ) Mark: VSL#-DS ) Respondent ) PETITIONER’S MOTION TO SUSPEND PROCEEDING IN VIEW OF PENDING CIVIL ACTION Exhibit A Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 1 of 112 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND __________________________________________ ) CLAUDIO DE SIMONE,) ) Plaintiff/Counterclaim Defendant,) ) v. ) Case No. 8:15-cv-01356 ) VSL PHARMACEUTICALS, INC.,) ) Defendant/Counterclaim Plaintff, ) ) and ) ) SIGMA-TAU PHARMACEUTICALS, INC., ) ) Defendant, ) ) v. ) ) DANISCO USA INC.,) ) MENDES SA, and ) ) EXEGI PHARMA, LLC, ) ) Third-Party Defendants. ) __________________________________________) DEFENDANT/COUNTERCLAIM PLAINTIFF VSL PHARMACEUTICALS, INC’S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIM TO PLAINTIFF/COUNTERCLAIM DEFENDANT CLAUDIO DE SIMONE’S COMPLAINT; AND THIRD-PARTY COMPLAINT AGAINST DANISCO USA INC., MENDES SA, AND EXEGI PHARMA, LLC Defendant/Counterclaim Plaintiff VSL Pharmaceuticals, Inc. (“VSL”), by counsel, sets forth the following as its Answer, Affirmative Defenses, and Counterclaim to Plaintiff/Counterclaim Defendant Claudio De Simone’s (“De Simone”) Complaint; and Third-Party Complaint against Danisco USA Inc. (“Danisco”), Mendes SA, and ExeGi Pharma, LLC (“ExeGi”): Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 2 of 112 ANSWER AND AFFIRMATIVE DEFENSES TO COMPLAINT NATURE OF THE ACTION 1. Paragraph 1 of the Complaint is an introductory paragraph, not directed to VSL, and therefore does not require a response. To the extent a response is required, VSL denies the allegations in Paragraph 1 of the Complaint. 2. As to the allegations in Paragraph 2 of the Complaint, VSL admits that De Simone is a scientist, inventor, and physician in the field of gastroenterology and immunology, and an inventor of bacterial compositions used in the fields of human and veterinary nutrition and hygiene. VSL is without sufficient information to admit or deny any remaining allegations contained in Paragraph 2 and, therefore, such allegations are denied. 3. As to the allegations in Paragraph 3 of the Complaint, VSL admits that De Simone entered into a joint venture (the “Joint Venture”) approximately 15 years ago with Claudio and Paolo Cavazza (the “Cavazzas”). It is further admitted that Claudio Cavazza founded a large conglomerate of successful pharmaceutical companies based in Italy, known as Sigma-Tau Group. VSL is without sufficient information to admit or deny any remaining allegations contained in Paragraph 3 and, therefore, such allegations are denied. 4. As to the allegations in Paragraph 4 of the Complaint, VSL avers that De Simone and the Cavazzas agreed to create a number of entities, including VSL, to help develop and sell probiotics around the globe. VSL further avers that De Simone agreed to provide to VSL all intellectual property related to probiotic medical food, known as “VSL#3,” including pertinent patent and trademark rights and scientific know-how. In return, De Simone received a cash payment, as well as an equity stake in the Joint Venture, royalties on future sales of the product, the right to be appointed Chief Executive Officer of VSL, and 2 Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 3 of 112 guarantees of additional funding for VSL if required. VSL admits that VSL#3 comprises live, freeze-dried, pure lactic acid bacteria, which protects the inner layer of the gut from pathogens. All remaining allegations in Paragraph 4 are denied. 5. As to the allegations in Paragraph 5 of the Complaint, VSL admits that De Simone and the Cavazzas formed VSL, which would later come to sell VSL#3. VSL avers that it, rather than De Simone, owns the know-how to manufacture VSL#3. Any allegations in Paragraph 5 of the Complaint not specifically admitted herein are denied. 6. VSL admits the allegations in Paragraph 6 of the Complaint. 7. As to the allegations in Paragraph 7 of the Complaint, VSL admits that the friendship and business partnership between De Simone and the Cavazzas deteriorated over time. VSL further admits that the rights between the parties are determined by various agreements. The remaining allegations in Paragraph 7 of the Complaint are denied. 8. As to the allegations in Paragraph 8 of the Complaint, VSL admits that Claudio Cavazza died in 2011. VSL denies the remaining allegations in Paragraph 8 of the Complaint. 9. VSL denies the allegations in Paragraph 9 of the Complaint. 10. VSL denies the allegations in Paragraph 10 of the Complaint. 11. As to the allegations in Paragraph 11 of the Complaint, VSL admits that De Simone resigned his positions of director and officer of VSL in November 2014 and purported to terminate the 2010 Know How Agreement. VSL further admits that the Patent License Agreement expired by its own terms on February 9, 2015. Any allegations in Paragraph 11 of the Complaint not specifically admitted herein are denied. 12. VSL denies the allegations in Paragraph 12 of the Complaint. 3 Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 4 of 112 13. Paragraph 13 of the Complaint is a statement summarizing the relief sought by De Simone in this matter, is not directed to VSL, and therefore does not require a response. To the extent a response is required, VSL denies the allegations in Paragraph 13 of the Complaint and denies that De Simone is entitled to the relief sought in Paragraph 13 of the Complaint. 14. Paragraph 14 of the Complaint is a statement summarizing the relief sought by De Simone in this matter, is not directed to VSL, and therefore does not require a response. To the extent a response is required, VSL denies the allegations in Paragraph 14 of the Complaint and denies that De Simone is entitled to the relief sought in Paragraph 14 of the Complaint. PARTIES 15. As to the allegations in Paragraph 15, VSL admits that De Simone is a citizen of Italy who resides in Switzerland. Any remaining allegations in Paragraph 15 call for a legal conclusion and, therefore, no response is required. 16. As to the allegations in Paragraph 16, VSL admits that it is a corporation organized and incorporated under the laws of Delaware. The allegations concerning VSL’s citizenship call for a legal conclusion to which no response is required. The remaining allegations in Paragraph 16 of the Complaint are denied. 17. VSL denies the allegations in Paragraph 17 of the Complaint. 18. As to the allegations in Paragraph 18 of the Complaint, VSL admits that Sigma-Tau Pharmaceuticals, Inc. (“STP Nevada”) is a corporation organized and incorporated under the laws of Nevada, with its principal place of business located at 9841 Washingtonian Boulevard, Suite 500, Gaithersburg, MD, 20878. The allegations concerning STP Nevada’s citizenship call for a legal conclusion to which no response is required. 4 Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 5 of 112 19. VSL denies the allegations in Paragraph 19 of the Complaint. JURISDICTION AND VENUE 20. The allegations in Paragraph 20 call for a legal conclusion and, therefore, no response is required. 21. VSL admits the allegations contained in Paragraph 21 of the Complaint. 22. The allegations in Paragraph 22 call for a legal conclusion and, therefore, no response is required. 23. The allegations in Paragraph 23 call for a legal conclusion and, therefore, no response is required. 24. The allegations in Paragraph 24 call for a legal conclusion and, therefore, no response is required. 25. The allegations in Paragraph 25 call for a legal conclusion and, therefore, no response is required. FACTS COMMON TO ALL COUNTS 26. VSL admits the allegations in Paragraph 26 of the Complaint. 27. VSL admits the allegations in Paragraph 27 of the Complaint. 28. VSL admits the allegations in Paragraph 28 of the Complaint. 29. VSL is without sufficient information to admit or deny the allegations in Paragraph 29 of the Complaint and, therefore, such allegations are denied. 30. VSL is without sufficient information to admit or deny the allegations in Paragraph 30 of the Complaint and, therefore, such allegations are denied. 31. VSL is without sufficient information to admit or deny the allegations in Paragraph 31 of the 5 Case 8:15-cv-01356-PWG Document 9 Filed 06/03/15 Page 6 of 112 Complaint and, therefore, such allegations are denied. 32. As to the allegations in Paragraph 32 of the Complaint, VSL admits that on February 10, 1998, a U.S. patent (U.S. Patent Number 5,716,615) titled “Dietary and pharmaceutical compositions containing lyophilized lactic bacteria, their preparation and use” was granted (the “‘615 Patent”). VSL further avers that the ‘615 Patent speaks for itself, and denies any allegations in Paragraph 32 of the Complaint inconsistent therewith. VSL further denies any remaining allegations in Paragraph 32 of the Complaint. 33. As to the allegations in Paragraph 33 of the Complaint, VSL avers that the ‘615 Patent was originally issued with De Simone, Vesley Cavaliere and Dr.