Free Proposed Pretrial Order - District Court of Colorado - Colorado

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. 1:03-cv-02372-PSF-PAC JACK BARRECA Plaintiff, v. SOUTH BEACH BEVERAGE CO., INC.; LOTTE U.S.A; and 7-ELEVEN, INC. Defendants. ______________________________________________________________________________ FINAL PRETRIAL ORDER ______________________________________________________________________________ Under D.C. Colo L.Civ.R. 16.3 and Appendix G thereto, the parties respectively submit this Proposed Final Pretrial Order. 1. DATE AND APPEARANCES The Pretrial Conference was held on June 23, 2005, before United States District Magistrate Judge Patricia A. Coan. Robert Brunelli and Joseph Kovarik of Sheridan Ross P.C. represented Plaintiff and Kevin Rynbrandt of Varnum Riddering, Schmidt & Howlett LLP and Michael Hutchinson of Treece, Alfrey, Musat & Bosworth, P.C. represented the Defendants. 2. JURISDICTION

Jurisdiction in this case is pursuant to 28 U.S.C. § 1338(a) in that this is a claim for patent infringement.

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3. Plaintiff's Claims:

CLAIMS AND DEFENSES

Plaintiff, Jack Barreca, ("Barreca") sued Defendants South Beach Beverage Company, Inc. ("SoBe"), Lotte U.S.A. ("Lotte") and 7-Eleven, Inc. ("7-Eleven") (collectively referred to as the "Defendants") for willful infringement of U.S. Patent No. 6,652,839 (the '839 patent) due to their unlicensed manufacture, advertising and/or sale of SoBe Energy Liquid Infused gum. For this willful infringement, Barreca seeks an injunction and an award of damages. Barreca further seeks an award of treble actual damages and attorneys fees due to the willful nature of Defendants' infringement and the exceptional nature of Defendants' activities during this action.

A.

Infringement of the '839 Patent At least one of Claims 1, 9 and 11 of the '839 patent are either literally or under the

Doctrine of Equivalents infringed by the SoBe Energy gum, which admittedly includes guarana, ginseng, taurine and Vitamin C in at least the gum base. 1. Claim 1

Claim 1 of the '839 patent claims a chewing gum consisting essentially of a first substance comprised of gum which is configured so as to have at least one cavity capable of retaining a liquid or semi-liquid substance. The first substance has active ingredients consisting essentially of guarana, ginseng and at least one metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate. The claim requires that these active ingredients together be present in a total weight amount of not more than 5 grams.

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The SoBe Energy gum has: (1) a cavity which is capable of retaining a liquid or a semiliquid substance; (2) includes guarana and ginseng; and (3) includes taurine and Vitamin C. Defendant 7-Eleven has admitted that taurine is a metabolic enhancer. Further, evidence at trial will show that both taurine and Vitamin C are, in fact, a metabolic enhancer of the type that can increase a person's metabolism, which in turn and by definition increases that person's caloric burn rate. The evidence will also demonstrate that the active ingredients of guarana, ginseng, Vitamin C and/or taurine in the SoBe Energy gum, when taken together, weigh less than 5 grams. For this reason, the evidence at trial will establish that the SoBe Energy gum literally infringes Claim 1 of the `839 patent. Even if the SoBe Energy gum was found not to infringe the `839 patent literally (which it does), the gum infringes under the doctrine of equivalents. The SoBe Energy gum performs substantially the same function, to achieve substantially the same result, in substantially the same way as the claimed invention (i.e. the SoBe Energy gum provides a center-filled gum having guarana, ginseng and at least one metabolic enhancer (e.g. taurine, Vitamin C). An accused product may also be deemed equivalent to a claimed element if the differences between the two are "insubstantial" to one of ordinary skill in the art. Here, the virtual identity of patent components in the accused product and claims establish that the SoBe Energy gum is substantially the same as the claimed invention, and therefore infringes under the doctrine of equivalents.

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2.

Claim 9

Claim 9 claims a chewing gum consisting essentially of a first substance comprised of gum configured so as to have at least one cavity capable of retaining a liquid or semi-liquid substance. The claim also requires that at least the first substance have active ingredients consisting essentially of a metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate. The claim also requires a component selected from the group consisting of various ingredients, including a vitamin, a stimulant, ginseng and guarana. Finally, the claim requires that the active ingredients, when added together, weigh less than about 5 grams. The SoBe Energy gum admittedly includes taurine, Vitamin C, guarana and ginseng, which together do not exceed 5 grams of weight. Taurine is a metabolic enhancer and a stimulant. Vitamin C is a separate metabolic enhancer and stimulant. By definition and as will be proved at trial, these stimulants are the type that can result in achieving a higher caloric burn rate. The SoBe Energy gum thus includes "a metabolic enhancer" and "a component" from the group of a vitamin (i.e., Vitamin C) and a stimulant, and guarana and ginseng and meets all limitations of Claim 9. Accordingly, the SoBe Energy gum literally infringes Claim 9. Even if the SoBe Energy gum was found not to infringe Claim 9 literally, the gum infringes under the doctrine of equivalents. The SoBe Energy gum meets the "function, way, result" test, thus demonstrating the absence of any substantial differences between the elements recited in Claim 9 of the `839 patent and the SoBe Energy gum.

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3.

Claim 11

Claim 11 claims a chewing gum consisting essentially of a first substance comprised of gum configured so as to have at least one cavity capable of retaining a liquid or semi-liquid substance. The first substance has active ingredients comprising at least a combination of the following: guarana, ginseng, at least one vitamin and metabolic enhancers that increase a user's metabolism in order to achieve a higher caloric burn rate. The claim requires that these active ingredients not exceed 5 grams in weight. The SoBe Energy gum literally infringes Claim 11 because it admittedly includes guarana, ginseng, Vitamin C and "metabolic enhancers" (i.e., taurine, caffeine, Vitamin C and at least four individual ginsenocides). Even if the SoBe Energy gum was found not to infringe Claim 11, the gum infringes under the doctrine of equivalents. An accused product may be deemed equivalent to a claimed element if the differences between the two are "insubstantial" to one of ordinary skill in the art. The controlling criterion is whether the accused product is substantially the same as the claimed invention. Here, the virtual identity of product and claim components establishes that the SoBe Energy gum is substantially the same as the claimed invention, and therefore infringes under the doctrine of equivalents. Indeed, Defendants have asserted that Plaintiff "copied" the SoBe Energy gum when they drafted the `839 patent claims. Plaintiff has filed a Motion for Summary Judgment on the issue of infringement, which is incorporated herein by reference.

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B.

Remedies for Infringement 1. Injunction. Plaintiff seeks issuance of a permanent injunction pursuant to 35

U.S.C. §283, precluding any further manufacture, importation, exportation, advertising, distribution, offer for sale or sale of the SoBe Energy gum or any colorable imitation thereof. 2. Damages

When infringement has been shown, a patentee is entitled to "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer." 35 U.S.C. § 284 (1988). The measure of damages in this case is a royalty based upon a hypothetical negotiation between entities in the same position as the parties, that negotiation occurring upon the date of notice of infringement, August, 2003. Mr. Barreca will testify that, under the circumstances of this case, a reasonable person in his shoes in August, 2003 (date of notice under 35 U.S.C. §154(d)) would have licensed his patented technology to the Defendants in exchange for an upfront fee sufficient to cover his todate expenses, currently estimated at approximately $1,000,000 and a running royalty that would be equal to about a 50/50 "sharing" of the profits from gum sales. These damages are based upon at least the following factors. It is undisputed that a PowerPoint presentation entitled "SoBe Gum Sales Investment Plan" included sales projections exceeding $30 million a year within three years of the launch of the SoBe gum. The plan called for the wide distribution of the SoBe gum product through various distributors. The Plan was apparently created in July 2002. These projections

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demonstrate the value of Barreca's Technology and the perceived value of the product to Defendants. Next, as a direct result of Defendants' conduct, Mr. Barreca has forever lost his opportunity to have been the first to launch a novel and effective "Energy" and/or weight-loss liquid infused gum into a marketplace. Defendants' failure in that market has also forever tainted the consuming public's impression of an "Energy" gum. The commercial value of Mr. Barreca's hard fought for patent portfolio has been severely diminished due to Defendant's conduct. This factor would certainly have been considered by a person in Mr. Barreca's position when conducting a hypothetical negotiation of a reasonable "deal". Next, the effect of Defendants' past conduct would have impacted negotiations reasonably resulting in significant up-front licensing fees and substantial annual and continuing royalties. C. Willful Infringement of the '839 Patent Actual notice of another's patent rights triggers an affirmative duty of due care. This typically involves an investigation as to whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed, and the duration of defendant's misconduct. Defendants admittedly did not obtain a written opinion from patent counsel that addressed the `839 claim, nor did Defendants otherwise inform themselves that their conduct was not infringing upon Barreca's patent rights. Defendants' infringement of the `839 patent is thus willful. Evidence of willful infringement is provided by the admitted fact that Defendants never obtained a non-infringement 7

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opinion directed specifically to the `839 patent claims. Moreover, despite notice of Barreca's allowed claims in August, 2003 and Defendants' admitted knowledge of the `839 patent's issuance on November 25, 2003, Defendants continued to infringe Barreca's rights until at least the end of March, 2004. Those facts demonstrate that Defendants callously and intentionally infringed Barreca's `839 patent rights. Plaintiff has filed a Motion for Summary Judgment on the issue of Defendants' willful infringement, which is incorporated herein by referenced. D. Exceptional Case In an exceptional case, a court may award attorney fees. The criteria for declaring a case exceptional include willful infringement, bad faith, litigation misconduct and unprofessional behavior. First, Defendants have infringed the `839 patent willfully, making the case exceptional. Second, the facts at trial will reflect that Defendants Lotte and SoBe deliberately prolonged their dealings with Barreca in a past business arrangement, imposing delay after delay, in order to obtain Barreca's technology and to keep Barreca from the market. Defendants also unsuccessfully attempted to secure jurisdiction in Michigan by filing a declaratory judgment action in an earlier patent dispute. Defendants also indicated that they would produce an expert opinion from their patent law expert, Mr. Anderson, with respect to the noninfringement of the `839 patent. No such opinion was ever produced. These facts also demonstrate that the case is exceptional.

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E.

Remedies for Willful Infringement and Exceptional Case Pursuant to 35 U.S.C. §§284-285, the Court may increase any award of actual damages

up to three times the amount found or assessed where infringement is willful.

If willful

infringement is proved, Barreca will, at the conclusion of trial, move the Court to award treble actual damage. Barreca shall also request an award of his attorney fees based on the exceptional nature of this case. F. Validity of the '839 Patent Defendants contend that Claims 1, 9 and 11 are invalid due to indefiniteness, obviousness and for improper inventorship. Plaintiff's '839 patent claims are presumed valid and must be proved invalid by clear and convincing evidence. There is insufficient evidence upon which Defendants can prove that the asserted claims are invalid by clear and convincing evidence. 1. Indefiniteness

Defendants' sole argument with respect to invalidity under Section 112, 2nd paragraph is that the term "metabolic enhancer" is vague and indefinite and would allegedly not be understood by one of skill in the art. Yet Defendants' prior admissions belie such an assertion. Defendants have admitted that caffeine is a metabolic enhancer; that "Taurine is a metabolic enhancer"; and their patent expert, Mr. Anderson, previously "assumed" that both taurine and guarana were "metabolic enhancers". In his prior expert reports, Defendants' technical expert, Mr. Fritz, never mentioned any confusion as to what the term "metabolic enhancers" meant. Instead, he opined that the prior art disclosed metabolic enhancers.

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Defendants also previously admitted that various other ingredients disclosed in a 1982 Japanese Patent Application (i.e. caffeine, coffee, tea extracts, ATP, vitamin A, gajutsu, ingosaku, ethyl alcohol, and powdered ethyl alcohol) are metabolic enhancers or have "the same effect as a metabolic enhancer." In order to have made such admissions and assumptions, Defendants must have understood what the term "metabolic enhancers" meant. In any event, the Court has already construed such term and did not find that it lacked definiteness. These issued U.S. patents to Barreca now exist that include claims employing the term "metabolic enhancer." The U.S. Patent and Trademark Office has therefore had several opportunities to reject such claims for violation of 35 U.S.C. §112, second paragraph. It did not. The term "metabolic enhancer" is readily understood by reference to the specification and also has a common understanding and meaning, as demonstrated by the referenced use of such term in numerous issued U.S. patents. Defendants' attempt to contradict their prior admissions as to their understanding of the term "metabolic enhancer" by relying on Mr. Fritz latest declaration cannot withstand scrutiny. A trial court may rely on extrinsic evidence only so long as it does not vary the claim construction mandated by the claims and the patent itself. Expert testimony, in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language. An expert's opinion on the ultimate legal issue,

including those under 35 U.S.C. § 112, must be supported by something more than a conclusory statement. Here, Mr. Fritz' recent declaration (which contains opinions that are not included in his expert report) is entirely conclusory. Mr. Fritz' recent conclusory statement that it is unclear 10

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to him what "metabolic enhancer" means cannot rise to the "clear and convincing" level of evidence required to overcome the presumption of validity of the `839 patent. 2. Obviousness

The second alleged ground of invalidity is based on obviousness. Defendants' argument in this regard is predicated upon references that must somehow be combined in a way to arrive at the invention set forth in the `839 claims. Defendants fail to provide any basis for a motivation to combine such references. In his expert report, Mr. Fritz admits that "...there is no single reference that discloses the use of all three of these ingredients [guarana, ginseng and a metabolic enhancer] in the gum base of a liquid center-filled chewing gum...." Defendants' obviousness arguments are therefore necessarily limited to a combination of at least two references. However, Defendants never point to where in any of the references there exists the requisite motivation or suggestion to make the combinations they contend are so obvious. At least three of the eight references relied upon by the Defendants to support their obviousness theory were submitted to the '839 patent examiner. All of such prior art references were submitted in a continuation application to the `839 patent (now issued U.S. Patent No. 6,869,614). The `614 claims explicitly list all of the mentioned elements of the present claims and such claims were allowed over all of the allegedly invalidating references. Where Defendants attempt to rely upon prior art that was admittedly considered by the PTO examiner, they have "the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are

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assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents." There are 63 references cited on the face of the `839 patent, including all the references that Defendants could previously find that allegedly rendered the related `540 patent invalid. Defendants fail to note why the references they now rely upon to invalidate the `839 claims are any more relevant than those already considered by the PTO during the prosecution of the `839 patent. To the extent they are cumulative references, they cannot support an invalidity challenge. Ironically, what Defendants have shown is that Mr. Fritz improperly used Plaintiff's patent as a blueprint for determining how one would recreate the `839 invention. Secondary considerations of non-obviousness also exist that demonstrate the validity of the '839 claims. For example, Defendants' press releases admitted that the initial sales of the SoBe gum constituted a tremendous success, achieving sales above what 7-Eleven had seen for gum products in the previous five years. This "new product idea" that required three, large wellfinanced companies to expend considerable efforts to create (which Defendants' own 2002 press releases admit "were challenging") and which they described in press releases as "the brain child" of the team and referred to as a "new product innovation," contradicts all contentions that such gum should now be considered to have been "obvious" as of September, 1999. Mr. Fritz' expert report is deficient in many respects and as such, his testimony should be stricken. Even if his testimony is permitted, however, Defendants have failed to show by clear and convincing evidence that any of the mentioned prior art references are more than

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cumulative references and/or that they would have been combined in the fashion argued by Defendants, and/or even if combined, that they would invalidate any of the `839 claims. Plaintiff has filed a Motion for Summary Judgment on the issue of the validity of the `839 patent, which is incorporated herein by referenced.

3.

Inventorship

Plaintiff Barreca is the sole named inventor on the `869 patent and under the law, he is presumed to be the only properly named inventor. To overcome such presumption, Defendants must prove by clear and convincing evidence that another individual should properly have been named as an inventor of the `839 patent and such contention must be corroborated by strong evidence. Defendants have never had any semblance of the requisite evidence required to carry their burden. Defendants have failed to present ANY competent evidence, let alone clear and convincing competent evidence, and no corroborating evidence, that the alleged co-inventor of the `839 patent, Mr. Robert Matuszewski, should be named an inventor on the `839 patent. Defendants cannot prove invalidity for improper naming of an inventor. Plaintiff has filed a Motion for Summary Judgment on the issue of inventorship, which is incorporated herein by referenced.

G.

Alleged Release of Rights to Sue for Infringement Defendants contend Barreca released his right to assert the '839 patent against them in

letters dated October 30 and November 2, 2001. Plaintiff disagrees. Defendants are attempting to elevate a limited agreement involving a past contract/trade secret dispute into an agreement 13

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that covers future patent infringement claims.

Correspondence prior to the limited release

reveals that the dispute at issue was narrowly directed to the manufacture of a particular diet weight control gum and the specifics of manufacturing a test batch of such gum. Five letters from Lotte's attorney (who drafted the release language), which were mailed within the three months prior to Barreca filing suit under his `540 patent, never mentioned the release. These facts demonstrate that Defendants' present release defense was a relatively recent concoction. In any event, under relevant Colorado law, the scope of a claimed general release is dependent upon the intent of the parties who negotiated the release. At the time of the letter

agreement, Lotte had explicitly disclaimed any intent or plans to make any product like Barreca's. Counsel for Lotte stated that "Lotte USA has no intention whatsoever of

manufacturing a product like Mr. Barreca's for SoBe." He also stated "Lotte USA has no current or anticipated plans to manufacture a weight-loss soft-centered gum with or for SoBe." If such statements are taken as true, then the release was apparently procured by a misrepresentation or mistake and should be set aside. Next, the Defendants' suggestion that 7-Eleven and SoBe are somehow beneficiaries of a settlement agreement is unsupportable. 7-Eleven and SoBe are clearly not "affiliates" of Lotte USA and there is absolutely no mention whatsoever of 7-Eleven or SoBe in the letters. Next, what the agreement exactly covers, from a review of the letters, is ambiguous in several respects. Accordingly, parole evidence can be used to explain the parties intent in entering the agreement which is evidenced by the letters. That evidence will establish that

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claims for patent infringement were never released. Alternatively, the language of the release is so unclear or ambiguous that it is void as a matter of law. Finally, under Colorado law exculpatory agreements are disfavored and are strictly construed against the drafter. If Lotte USA had wanted to specifically include future patent claims in a release, it had the opportunity to negotiate that specific language. It failed to do so and the language of its letter agreements must therefore be construed against the drafter - Lotte USA. The agreement simply does not, on its face, release later accrued patent claims. Plaintiff has filed a Response to Motion for Summary Judgment on the issue of release of claims, which is incorporated herein by referenced.

Defendants' Defenses: a. Plaintiff's claims are barred by release and/or waiver. Plaintiff signed a

comprehensive release and waiver of all intellectual property claims (specifically including patent claims) he had or "may have" against Defendant Lotte U.S.A. and its affiliates. Just weeks before executing the release, Plaintiff had threatened Defendant Lotte U.S.A. with patent and trademark litigation, which was the impetus behind Lotte's demand that such an agreement be signed. The release agreement unambiguously expresses the parties' intent that all past, present, and future claims, particularly patent claims, were waived. Defendants have filed a Motion for Summary Judgment on the issue of Plaintiff's release of his claims against Defendants, which is incorporated herein by reference.

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b.

Plaintiff has failed to demonstrate that the SoBe Energy gum infringes the '839

patent. All of the pertinent claims of the `839 patent require the presence of a specific type of metabolic enhancer, i.e. one of the type that increases a user's metabolism in order to achieve a higher caloric burn rate, and Plaintiff has offered no admissible evidence to establish this claim limitation in the SoBe Energy gum. Nor does the SoBe Energy gum infringe the '839 patent under the doctrine of equivalents. Defendants have filed a Motion for Summary Judgment regarding infringement, which is incorporated herein by reference. c. The '839 patent is invalid as the claimed invention is obvious in light of prior art

pursuant to 35 U.S.C. §103. Defendants have submitted an expert report of their technical chewing gum expert, Douglas Fritz, in which Mr. Fritz analyzes all of the pertinent prior art and concludes that the invention claimed in the '839 patent would have been obvious to one of ordinary skill in the art of chewing gum manufacture at the time of Plaintiff's patent application. More specifically, as Mr. Fritz explains, liquid center-filled gums have been produced for decades, and the concept of including ingredients such as guarana and ginseng in such gums has likewise been around for years. In addition, during the prosecution of the '839 patent, the patent examiner initially rejected what ultimately became claim 1 of the '839 patent on obviousness grounds, and only allowed the claim after one of the references relied on was found to be untimely. The teachings of that reference, however, are found elsewhere in prior art not

submitted to the patent examiner, thus filling the void left by that reference and rendering the '839 patent obvious. Defendants have filed a Motion for Summary Judgment regarding the validity of the '839 patent, which is incorporated herein by reference. 16

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d.

Each of the claims of the '839 patent containing the phrases "metabolic enhancer"

or "metabolic enhancers" is invalid for failing to particularly and distinctly point out the subject matter of the claimed invention pursuant to 35 U.S.C. § 112. More specifically, these phrases are indefinite and vague as to what is, and what is not, to be considered a metabolic enhancer. Indeed, the indefiniteness of these phrases is demonstrated by the sworn testimony of those witnesses in this case who are skilled in the art, who have testified that they do not know what is meant by these phrases. Defendants have filed a Motion for Summary Judgment regarding the validity of the '839 patent, which is incorporated herein by reference. e. The inventor of the '839 patent is Robert Matuszewski. Plaintiff is not entitled to

patent protection because he is not the sole inventor. Defendants have filed a response to Plaintiff's Motion for Summary Judgment on the issue of the inventorship of the '839 patent, which is incorporated herein by reference. f. Plaintiff's claim for willful infringement must fail. Plaintiff has not come forward

with clear and convincing evidence that any alleged infringement by Defendants was willful. Rather, none of the factors to be evaluated in making this determination weigh in favor of a finding of willfulness. Defendants did not copy Plaintiff's idea, and the aspect of the SoBe Energy gum that allegedly infringes Plaintiff's patent, the inclusion of certain ingredients in the gum, was developed by a third party known as Wild Flavors, Inc. Further, the particular combination of ingredients at issue was not added to Plaintiff's '540 patent until long after the SoBe Energy gum was on the market. Furthermore, Defendants relied in good faith on several different factors in determining that they did not infringe the '839 patent, including an opinion of 17

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outside patent counsel, the opinions of their expert witnesses in the ongoing litigation over the '540 patent, the prosecution history of the '540 patent, which demonstrated the obviousness of the '839 patent, and the fact that Plaintiff was not the sole inventor of the invention embodied in the '839 patent. In addition, the factors regarding Defendants' conduct during this litigation,

Defendants' size and financial condition, the closeness of the case, the duration of Defendants' alleged misconduct, any remedial action taken by Defendants and Defendants' alleged motivation for harm all weigh strongly against a finding of willfulness. Defendants have filed a response to Plaintiff's Motion for Summary Judgment on the issue of willful infringement, which is incorporated herein by reference. g. Plaintiff is not entitled to recover the damages he is claiming in this matter. As an

initial matter, Plaintiff has failed to comply with the requirements of Rule 26 in that he has not disclosed a computation of his claimed damages, nor has he previously disclosed the majority of the damages theories on which he is now attempting to rely. Therefore, Plaintiff is entitled to no damages, as a matter of law. In addition, Plaintiff cannot recover lost profits as a matter of law, because he has come forward with no evidence to establish that, but for Defendants' alleged infringement, he would have made the sales of the SoBe Energy gum. Plaintiff also cannot recover damages in the form of a fully paid-up license fee, because Plaintiff has offered no evidence to establish the factual predicate for such damages. Plaintiff's damages, if any, are limited to a reasonable royalty on actual sales of the SoBe Energy gum, which would be no more than $843.59 (and which will be more than offset by the judgment in the amount of $12,458.13 already entered in Defendants' favor and against Plaintiff, which is on file in the present action). 18

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Defendants have filed a Motion for Summary Judgment on the issue of Plaintiff's claimed damages, which is incorporated herein by reference. h. Plaintiff's request for an injunction is moot, as the SoBe Energy gum is no longer

manufactured. Further, Plaintiff's request for attorney fees based on the alleged "exceptional" nature of this case is unfounded. As noted above, there has been no willful infringement of the '839 patent. In addition, there has been no evidence presented, nor does any exist, to show that Defendants acted in bad faith, engaged in any litigation misconduct, or otherwise exhibited unprofessional behavior. The examples given by Plaintiff, such as Defendants' filing of a declaratory action in Michigan with regard to a different patent and an alleged "delay" engaged in by Defendants years before the present patent issued, fall far short of demonstrating that this case is exceptional. Defendants addressed many of these issues in their response to Plaintiff's Motion for Summary Judgment regarding willfulness, which is incorporated herein by reference. i. licensor. SoBe has no liability for any would-be patent infringement because it is only a

4. STIPULATIONS The parties are unable to stipulate to any facts at this time. Plaintiff, however, proposes the following stipulations, which Plaintiff generated by reviewing the admissions made by various Defendants in their respective Answers to the Complaint.

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1. Giacamo Jack Barreca is a Colorado resident having an address of 2500 Cherry Creek Drive South, Unit 124, Denver, Colorado, 80209 ("Barreca"). 2. South Beach Beverage Co., Inc. is a corporation in good standing organized and existing under the laws of the State of Delaware, having a place of business at 40 Richards Avenue, Norwalk, CT, 06854 ("SoBe"). 3. 7-Eleven Corporation is a corporation in good standing and existing under the laws of the State of Texas, having a place of business at 2711 North Haskell Avenue, Dallas, TX, 752042906 ("7-Eleven"). 4. Lotte U.S.A. is a corporation in good standing organized and existing under the laws of Michigan, having a place of business at 5243 Wayne Road, Battle Creek Michigan, 49015 ("Lotte U.S.A."). 5. The Court has subject matter jurisdiction over the asserted infringement claim under28 U.S.C. § 1331 and 1338. 6. The Court has subject matter jurisdiction over all claims raised in this action pursuant to 28 U.S.C. § 1331, 1332 (as the amount in controversy exceeds $75,000). 7. Venue is proper in this district pursuant to 28 U.S.C. §1391 and 1400(b).

8. Defendants SoBe, Lotte U.S.A. and 7-Eleven are subject to personal jurisdiction in this judicial district, as they conduct business within the district and have and continue to sell product within the district, including center-filled gum products that infringe asserted issued patent claims in this litigation.

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9. SoBe is the maker of herbally enhanced refreshment beverages marketed under the SoBe brand name. SoBe, the leader in "Healthy Refreshment" beverages, introduced its new liquid infused gum in flavors that are a translation of SoBe beverages, providing the same functional benefits. SoBe is a separate operating unit of Pepsi-Cola North America. 10. 7-Eleven, Inc. is the premier name and largest chain in the convenience retailing industry and observed its 75th anniversary in 2002. Headquartered in Dallas, Texas, 7-Eleven, Inc. operates or franchises approximately 5,800 7-Eleven® stores in the United States and Canada and licenses approximately 17,000 7-Eleven stores in 17 other countries and territories throughout the world. During 2001, 7-Eleven stores worldwide generated total sales of more than $31 billion. 11. SoBe's herbal infused center-filled gum products are sold to retail distributors, which resell the product to the consuming public. 12. The SoBe Energy gum has a cavity that retains a liquid or semi-liquid substance. 13. Lotte U.S.A. produced SoBe liquid infused gum. 14. The outer shell of the SoBe Energy gum includes guarana, ginseng, taurine and Vitamin C. 15. The Answer filed by 7-Eleven in the prior `540 proceedings speaks for itself with respect to Defendant 7-Eleven's prior admission that "taurine is a metabolic enhancer". 16. South Beach Beverage Co. and 7-Eleven issued a press release concerning the SoBe Energy gum.

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17. Mr. Barreca first contacted representatives of Lotte U.S.A. sometime after September 20, 1999 to discuss the possibility of Lotte U.S.A. manufacturing a weight loss center-filled gum to be distributed by Mr. Barreca, or persons associated with him. 18. Mr. Barreca approached Lotte U.S.A. with a proposal by which Lotte U.S.A. would manufacture a soft centered weight control gum for Mr. Barreca. 19. Lotte U.S.A. received a proposed agreement from a representative of Mr. Barreca. The proposed agreement was never signed or executed by Lotte U.S.A. 20. Lotte U.S.A. sent a letter dated May 16, 2000 to Mr. Barreca. 21. Lotte U.S.A. personnel met with Mr. Barreca on or about May 30, 2000 and

discussed the possible manufacturing of weight loss center-filled gum. 22. Lotte U.S.A. personnel met with Mr. Barreca on or about June 21, 2000 in Chicago and discussed the possible manufacture of a center-filled weight loss gum. 23. The notes attached as Exhibit D to Mr. Barreca's Complaint are the notes of Lotte U.S.A. personnel. 24. Samples of Mr. Barreca's center fill were forwarded to Lotte U.S.A. prior to July 10, 2000. 25. There were occasionally conversations by phone in 2000 between Lotte U.S.A. and Barreca. 26. Mr. Barreca sent an unsolicited check for $10,000 to Lotte U.S.A. in 2001. 27. Lotte U.S.A. and Mr. Barreca attempted to negotiate terms of a potential agreement and drafts of such agreement were exchanged. 22

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28. A letter dated May 25, 2001 from Mr. Barreca's representative, Mr. Mark Amuso, and sent to and received by SoBe, is attached to Mr. Barreca's Complaint as Exhibit H. 29. A May 29, 2001 letter from Mr. Amuso sent to Lotte U.S.A. is attached to Mr. Barreca's Complaint as Exhibit I and Lotte received such letter on or about May 30, 2001. 30. Product Supply Agreements in draft form were discussed between Mr. Barreca and Lotte U.S.A. 31. Barreca provided counsel for Lotte U.S.A. with certain information related to

Barreca's patent application.

5. PENDING MOTIONS The following motions are currently pending in this action. 1. Plaintiff's Motion And Memorandum In Support Of Summary Judgment As To

Infringement Of The Barreca '839 Patent filed April 15, 2004. 2. July 2, 2004. 3. 4. 2004. 5. Plaintiff's Motion To Exclude Expert Testimony of Greg Anderson filed Plaintiff's Motion for Markman Hearing filed August 13, 2004. Plaintiff's Motion to Exclude Testimony of Douglas Fritz filed September 23, Plaintiff's Motion For Summary Judgment Of Validity Of The '839 Patent filed

September 23, 2004. 6. Plaintiff's Motion for Summary Judgment that the `839 Patent is not Invalid 23

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Under 35 U.S.C. §102(f) filed April 27, 05; 7. Plaintiff's Motion for Summary Judgment that Defendants' Infringement of the

`839 has been Willful filed April 27, 2005; 8. Defendants' Motion for Summary Judgment Regarding Plaintiff's Claimed

Damages filed April 27, 2005; 9. 27, 2005; 10. Defendants' Motion for Summary Judgment Regarding Validity of the `839 Defendants' Motion for Summary Judgment Regarding Infringement filed April

Patent filed April 27, 2005 and 11. Defendants' Motion for Summary Judgment Regarding Plaintiff's Release of

Claims Against Defendants filed April 27, 2005. All pending motions are fully briefed and awaiting resolution. 6. WITNESSES A. Plaintiff's Witnesses (1) Plaintiff's Non-Expert Witnesses Who Will be Present At Trial Jack Barreca. Mr. Barreca will testify live concerning his contacts and conversations with representatives of each of the Defendants with respect to their interest in producing and/or marketing his gum product, his commercialization and production capabilities and contacts, events surrounding and his understanding of the October/November 2001 letter agreement with Lotte and his intentions when executing such agreement. Mr. Barreca will also testify about the 24

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development of his gum product, including his patent applications and issued patents, the validity of the `839 patent, the infringement of the `839 patent and the damages he has incurred, including a basis for what deal a reasonable party in his position would have negotiated with the Defendants as of November 25, 2003. Mr. Barreca will also testify about the willfulness of Defendants' infringement and the exceptional nature of this case. Mr. Barreca may also testify about the meaning of terms used in his patent claims, the value of his patented technology, the state of the art at the time of his invention and the commercial opportunities and potential his inventions presented. Dr. Robert Yang. Mr. Yang will testify by deposition with respect to the production of Plaintiff's gum product and his communications with individuals at Lotte USA and general information concerning gum products, which could include prior art and state of the art and knowledge in gum technology at relevant times, as well as the commercial value of Mr. Barreca's technology. Mr. Steve Moffet, President of SoBe Beverage, will testify live as to Sobe's non-reliance on any competent opinions of patent counsel with respect to infringement of the `839 patent and SoBe's complete failure to reasonably convince itself that its conduct was an infringement of the asserted patent. Mr. Derrick Schmidt of 7-Eleven will testify live as to 7-Eleven's non-reliance on any competent opinions of patent counsel with respect to infringement of the `839 patent and SoBe's complete failure to reasonably convince itself that its conduct was an infringement of the asserted patent. 25

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Mr. Koji Ito of Lotte U.S.A. will testify live concerning the negotiation of a Product Supply Agreement with Barreca and Lotte U.S.A.'s non-reliance on any opinions of patent counsel with respect to infringement of the `839 patent and SoBe's complete failure to reasonably convince itself that its conduct was an infringement of the asserted patent. Mitsuhiro Komuro. Mr. Komuro is expected to testify regarding his communications with Plaintiff about Plaintiff's work in 2000 and 2001. Mr. Komuro may testify in person. Mr. Takeo Kitajima of Lotte U.S.A. will testify live as to Lotte U.S.A.'s non-reliance upon any competent opinions of patent counsel with respect to infringement of the `839 patent and SoBe's complete failure to reasonably convince itself that its conduct was an infringement of the asserted patent. Mr. Minoru Oda at Lotte USA is expected to testify live regarding his communications with Mr. Barreca, his involvement with respect to Lotte USA's decisions about Mr. Barreca's gum and negotiations of a Product and Supply Agreement. Mr. Steven W. Coryea. Mr. Coryea may testify live or by deposition concerning:

conversations and negotiations between Lotte U.S.A. and Mr. Barreca; the novelty of Mr. Barreca's technology; the non-production by Lotte USA of center-filled gums with active ingredients; Lotte U.S.A.'s timing and contacts with 7-Eleven and SoBe regarding herbal infused gum products; Lotte USA's prior business practices; and the commercial value of functional gums in general (such as Nicorette, and as understood from industry communications) and Mr. Barreca's gum technology specifically.

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(2)

Plaintiff's Non-Expert Witnesses Who May Called at Trial: Mr. Amuso may testify live concerning his communications with

Mark Amuso.

individuals at Lotte U.S.A. with respect to negotiations concerning a Product and Supply Agreement and performance, as well as communications with representatives of SoBe concerning gum products, and in particular, Plaintiff's product; commercial transactions; and the value of Mr. Barreca's technology. Mr. Amuso may further testify about issues concerning lost opportunities and reasonable royalties. Joseph Kovarik. Mr. Kovarik may testify live concerning prosecution of the `839 Patent and related applications, inventorship issues, the exceptional nature of this case and his communications with Mr. McElwee concerning the present dispute and other release related issues. Dr. Robert Lantz. Dr. Lantz may testify by deposition concerning constituent parts of the accused product and related matters. Steven Baugh. Mr. Baugh may testify by deposition concerning constituent parts of the accused product and related matters. Dr. Bronwyn Hughes. Dr. Hughes may testify live concerning constituent parts of the accused product and the common meaning to those skilled in the art of the term "metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate" and the nature of and various types of known metabolic enhancers. Richard E. MacLean. Mr. MacLean may testify as to SoBe's non-reliance upon any competent opinions of patent counsel with respect to infringement of the `839 patent and SoBe's 27

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complete failure to reasonably convince itself that its conduct was an infringement of the asserted patent. Mike McElwee. Mr. McElwee is expected to testify regarding the release agreement executed by Plaintiff. Mr. McElwee may testify in person. Tim Truby. Mr. Truby is expected to testify regarding the creation of the formula for the SoBe Energy gum by Wild Flavors, Inc. Mr. Truby may testify in person. William Meissner. Mr. Meissner is expected to testify regarding the development of the SoBe Energy gum project and SoBe's communications with Plaintiff. Mr. Meissner may testify in person. Renee Kasbar Coughlin. Ms. Coughlin is expected to testify regarding the launch of the SoBe Energy gum project and SoBe's communications with Plaintiff. Ms. Coughlin may testify in person. Toshi Sato. Mr. Sato is expected to testify regarding his involvement with the SoBe Energy gum project. Mr. Sato may testify in person. Thomas Hennen. Mr. Hennen is expected to testify regarding Defendant 7-Eleven's actions after learning of the '839 patent. Mr. Hennen may testify in person. Larry Morris. Mr. Morris is expected to testify regarding the marketing and sale of the SoBe Energy gum, and the lack of commercial success of the gum. Mr. Morris may testify in person. Any witnesses needed for impeachment or rebuttal. Any witnesses listed by Defendants.

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(3)

Plaintiff's Expert Witnesses Who Will or May Be Present at Trial.

Barreca has designated Dr. Bronwyn Hughes, Mr. Steven F. Baugh, Dr, Robert K. Lantz, Dr. Robert Yang and E. Jayne MacPhee to act as rebuttal expert witnesses in this case. Barreca produced expert reports of these witnesses (except Dr. Yang and Dr. Hughes) in a previous litigation to which all of the present Defendants were parties. Barreca DOES NOT, however, currently plan to utilize these witnesses at this trial. Barreca shall only introduce these witnesses if Defendants are allowed to utilize their expert witnesses at this trial. Specifically, Defendants submitted in this case reports of experts that were generated in connection with the previous litigation. Barreca has moved to exclude utilization of those witnesses in this case since their reports and opinions are not addressed to the patent presently at issue. Nevertheless, should the Court allow defendants to present those witnesses at this trial, Barreca will likely present his expert witnesses who, similarly, issued expert reports on a previous patent. B. (1) 1. Defendants' Witnesses. Defendants' Non-Expert Witnesses Who Will Be Present. Takeo Kitajima. Mr. Kitajima is expected to testify regarding the lack of

commercial success of the SoBe Energy gum, the ultimate termination of the license agreement between SoBE and Lotte U.S.A, and Defendants' actions upon learning of the existence of the '839 patent. Mr. Kitajima is expected to testify in person.

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2.

Jack Barreca. Mr. Barreca is expected to testify regarding his claimed invention,

as well as issues relating to the release agreement he executed and issues relating to Robert Matuszewski. Mr. Barreca is expected to testify in person. (2) 1. Defendants' Non-Expert Witnesses Who May Be Present. Koji Ito. Mr. Ito is expected to testify regarding the formulation, ingredients, and

process engineering for the SoBe Energy gum, and about Lotte U.S.A.'s communications and work with Plaintiff during the relevant time period. Mr. Ito may testify in person. 2. Minoru Oda. Mr. Oda is expected to testify regarding his communications with

Plaintiff and his involvement with Lotte U.S.A's decisions about Plaintiff's proposed work with Lotte U.S.A. Mr. Oda may testify in person. 3. Mitsuhiro Komuro. Mr. Komuro is expected to testify regarding his

communications with Plaintiff about Plaintiff's work in 2000 and 2001. Mr. Komuro may testify in person. 4. Joseph Kovarik. Mr. Kovarik is expected to testify regarding his relationship and Mr. Kovarik is also expected to testify regarding his

work with Robert Matuszewski.

communications with the Patent and Trademark Office with regard to the '540 Patent. Mr. Kovarik may testify in person. 5. Richard E. MacLean. Mr. MacLean is expected to testify regarding the

development of the SoBe Gum project, as well as the formation of the license agreement in which South Beach licensed its SoBe trademark, other trademarks and flavor profiles to Lotte for use in connection with the SoBe gums. Mr. MacLean is also expected to testify regarding the 30

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commercial failure of the SoBe Energy gum and the ultimate cancellation of the license agreement. Mr. MacLean may testify in person. 6. Derek Schmitt. Mr. Schmitt is expected to testify regarding the sales of the SoBe

Energy gum and the lack of commercial success of the gum. Mr. Schmitt may testify in person. 7. Mike McElwee. Mr. McElwee is expected to testify regarding the release

agreement executed by Plaintiff. Mr. McElwee may testify in person. 8. Tim Truby. Mr. Truby is expected to testify regarding the creation of the formula

for the SoBe Energy gum by Wild Flavors, Inc. Mr. Truby may testify in person. 9. Dr. Robert Yang. Dr. Yang is expected to testify regarding his involvement with

Lotte U.S.A. in the production of a test batch of gum for Plaintiff, as well as issues relating to the definiteness of the claims of the '839 patent. Dr. Yang may testify via deposition. 10. Hiro Takaki. Mr. Takaki is expected to testify regarding the sale of the SoBe

Energy gum and the lack of commercial success of the gum. Mr. Takaki may testify in person. 11. William Meissner. Mr. Meissner is expected to testify regarding the development

of the SoBe Energy gum project and SoBe's communications with Plaintiff. Mr. Meissner may testify in person. 12. Renee Kasbar Coughlin. Ms. Coughlin is expected to testify regarding the launch

of the SoBe Energy gum project and SoBe's communications with Plaintiff. Ms. Coughlin may testify in person.

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13.

Daniel Schorr. Mr. Schorr is expected to testify regarding the development of the

SoBe Energy gum project, the launch of that project, and the marketing of that project. Mr. Schorr may testify in person. 14. Toshi Sato. Mr. Sato is expected to testify regarding his involvement with the

SoBe Energy gum project. Mr. Sato may testify in person. 15. Amanda Rhodes. Ms. Rhodes is expected to testify regarding the fact that Robert

Matuszewski is the true inventor of the idea of the center-filled gum patented by Plaintiff, as well as her business dealings with Plaintiff. Ms. Rhodes may testify in person. 16. Thomas Hennen. Mr. Hennen is expected to testify regarding Defendant 7-

Eleven's actions after learning of the '839 patent. Mr. Hennen may testify in person. 17. Edmund J. Ferdinand, III. Mr. Ferdinand is expected to testify regarding

Defendant SoBe's actions after learning of the '839 patent. Mr. Ferdinand may testify in person. 18. Robert Matuszewski. Mr. Matuszewski is expected to testify regarding the fact

that he is the true inventor of the center-filled gum idea patented by Plaintiff and which is the subject of this litigation. Mr. Matuszewski will also testify regarding his business dealings with Plaintiff and Plaintiff's patent counsel, Joseph Kovarik. Mr. Matuszewski may testify in person. 19. Jerry Knaggs. Mr. Knaggs is expected to testify regarding the marketing and sale

of the SoBe Energy gum, and the lack of commercial success of the gum. Mr. Knaggs may testify in person. 20. Mike Gapp. Mr. Gapp is expected to testify regarding the lack of commercial

success of the SoBe Energy gum, as well as other financial information related to the SoBe 32

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Energy gum project. Mr. Gapp is also expected to testify regarding the financial condition of Lotte USA, generally. Mr. Gapp may testify in person. 21. Larry Morris. Mr. Morris is expected to testify regarding the marketing and sale

of the SoBe Energy gum, and the lack of commercial success of the gum. Mr. Morris may testify in person. 22. Adam Brody. Mr. Brody is expected to testify regarding communications

between counsel regarding discovery in this matter. Mr. Brody may testify in person. 23. (3) 1. Any witnesses named by Plaintiff. Defendants' Expert Witnesses Who Will Be Present. Michael Chase. Mr. Chase is expected to testify regarding Plaintiffs claimed

damages, including all information contained in his expert report. Mr. Chase is expected to testify in person. 2. Gregg Anderson. Mr. Anderson is expected to testify regarding the patent law

issues raised in this matter, including issues relating to Plaintiff's conduct and communications with the Patent and Trademark Office. Mr. Anderson is expected to testify in person. 3. Douglas Fritz. Mr. Fritz will testify regarding the chewing gum industry

generally, including issues specifically directed to whether the invention allegedly disclosed by the '839 Patent was obvious to one skilled in the art at the time the patent issued and to the technical feasibility of Plaintiffs proposed invention. Mr. Fritz is also expected to testify

regarding the definiteness of the claims of the '839 patent. Mr. Fritz is expected to testify in person. 33

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7. EXHIBITS PLAINTIFF'S EXHIBITS No. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 Date 12/10/02 10/31/99 5/16/00 7/10/00 8/4/00 3/13/01 4/11/01 4/13/01 4/18/01 4/18/01 5/1/01 5/24/01 5/25/01 5/29/01 5/29/01 6/25/01 6/25/01 7/30/01 7/31/01 8/30/01 9/17/01 10/30/01 11/2/01 11/7/01 1/17/02 7/17/02 8/21/02 8/28/02 9/6/02 10/2/02 10/8/02 10/9/02 10/24/02 Description U.S. Patent No. 6,491,839 SoBe Gum Products Agreement between Barreca and Yang Letter from Lotte to Barreca Re: New Product Planning Meeting Notes from 6/21/00 Meeting Letter from Ito to LaStella Letter from Ito to Barreca Certified check from Barreca to Lotte Letter from Patton Bogs to M. Oda Letter from Patton Bogs to M. Oda Letter from Amuso to Barreca Letter from Amuso to Barreca Fax from Barreca to Coughlin Letter from Meissner to Barreca Letter from Amuso to Meissner Letter from Amuso to Oda and Komuro Letter from Amuso to Meissner Letter from Amuso to Meissner Fax from Amuso to Komuro Letter from Lotte to Yang Letter from Yang to Ito Letter from Barreca to Oda Letter from McElwee to Barreca Letter from Kovarik to McElwee Letter from McElwee to Kovarik Test Production Report Letter from Hennen to Barreca SoBe Press Release 7/11 Press Release Letter from Kovarik to McElwee Letter from Kovarik to Hennen Letter from Kovarik to McLean Letter from McElwee to Kovarik Letter from Kovarik to McElwee Letter from McElwee to Kovarik 34

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36 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 71 72 73

10/29/02 11/8/02 11/13/02 11/15/02 11/26/02 11/27/02 12/4/02 1/8/03 2/20/03

8/7/03 8/29/02 7/26/02 7/1/03 3/26/02 2/25/02 2/8/02 2/5/02 1/10/02 1/10/02 1/7/02 1/7/02 1/3/02 2/21/02 2/27/02 7/30/02 7/02

9/01 10/3/01 1/29/02 2/5/02 2/5/02 1/22/02 10/25/01

Letter from Kovarik to McElwee Letter from Kovarik to McElwee Letter from McElwee to Kovarik Letter from Kovarik to McElwee Letter from McElwee to Kovarik Letter from Kovarik to McElwee Letter from McElwee to Kovarik Letter from Stephen Coryea Memo from Jennifer Cooper to Amy Siegel, with attachments Copy of SoBe Energy Gum Package Chewz 2 Looz label example Letter from Kovarik to Rynbrandt, Hutchinson and Battersby Comments on Statements for Reasons for Allowance Second Supplemental Amendment and Response Comments on Statements for Reasons for Allowance E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to F. DeLeo, with attachments E-Mail from Derek Schmitt to D. Manley, with attachments Draft of July, 2002 Press Release Product Development Project ­ 7-11 and Lotte USA (bates 7-E 000022-36 SoBe Gum Week 22 Sheet Sales Data for current products Preliminary Concept Sheet Letter from T. Sato to D. Schorr Memo from D. Schorr to M. Oda, et al. Memo from D. Schorr to M. Oda, et al. Memo from K. Ito to D. Schorr Lotte Office Memorandum E-Mail from D. Schorr to F. DeLeo 35

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74 75 76 77 78 79 80 81 82 83 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112

10/22/01 10/22/01 1/22/02 1/30/02 11/8/01 8/7/01 10/29/01 9/25/01 10/15/01 10/3/01 9/5/01 10/16/01 7/6/01 7/14/01 5/30/01

9/20/01 10/25/01

2/15/02 7/30/01 2/22/02 1/17/01 4/9/01 4/16/01 5/4/01 5/8/01 5/10/01 5/23/01 11/2/01 12/28/01 12/2/01 1/14/03

Lotte Memorandum Letter from T. Sato to D. Schorr Letter from T. Sato to D. Schorr E-Mail from D. Schmitt to D. Schorr Memo from F. DeLeo to D. Schorr Memo from F. DeLeo to M. Oda Letter Agreement between Lotte and SoBe Letter from F. DeLeo to J. Bello Letter from M. Oda to D. Schorr, with attachments Letter from T. Sato to D. Schorr, with attachments SoBe Gum Product Schedule Points for SoBe Meeting E-Mail from M. Oda to J. Bello E-Mail from D. Schorr to D. Schorr Letter from M. Amuso to R. Caughlin Letter from M. Oda to W. Meissner Customer Case Cost Sheets Wild Flavor's correspondence License Agreements between SoBe and Lotte Draft License Agreements between SoBe and Lotte Letter from M. Oda to J. Bello E-Mail from D. Schorr to F. DeLeo SoBe Gum Launch Schedule Product Labeling Sheets Letter from R. Thomason to D. Schorr Lotte Corporate Profile E-Mail from F. DeLeo to D. Schmitt SoBe Gum Marketing Plan Meeting Letter from T. Sato to D. Schorr E-Mail from F. DeLeo to M. Komuro, et al. E-Mail from D. Schmitt to Lotte, with replies Memo from F. DeLeo to M. Oda Memo from M. Amuso to M. Komuro Letter from K. Ito to M. Amuso Production Timeline for Chewz 2 Looz E-Mail from D. Schorr to F. DeLeo Memorandum Memo from F. DeLeo to T. Sato E-Mail regarding article 36

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113 114 115 116 117 118 119 120 121 122 123 124 125 126 127 128 129 130 131 132 133 134 135 136 137 138 139 140 141 142 143 144 145 146 147

7/8/02

5/21/02 7/30/02 7/30/02 6/30/02 9/12/02 9/26/02 5/20/02 3/21/01 3/24/01 8/31/01 1/24/01 2/2/02 5/14/04 5/26/04

3/4/04 10/27/04 12/13/04 1/3/05 1/4/05

7/24/03

148

E-Mail from D. Schorr to J. Knaggs Amended License Agreements Draft Amended License Agreements Press Release Agenda for Meeting with SoBe and Lotte, with attachments Meeting Minutes Lotte Sales Information E-Mail from D. Schorr to T. Sato, et al. E-Mail from D. Schorr to J. Knaggs Memo from B. Russett to T. Sato SoBe Gum Delivery Schedule SoBe Gum Sales Investment Plan E-Mail from D. Schmitt to F. DeLeo Western Region Status Report Western Region Status Report Western Region Status Report Western Region Status Report Prosecution History for Patent No. 6,491,839 Letter from Kovarik to Rynbrandt Letter from Kovarik to Rynbrandt U.S. Patent No. 6,869,614 Prosecution history of `614 patent All exhibits of Motions for Summary Judgment in `839 case Any Exhibit needed for rebuttal Defendants' Responses to Interrogatories SoBe/Lotte 5% Trademark Agreement U.S. Patent No. 6,491,540 Prosecution File history of 6,491,540 patent Declaration of Koji Ito Letter from Brody to Bledsoe Letter from Brody to Kovarik and Bledsoe Letter from Kovarik to Rynbrandt and Brody Letter from Brody to Kovarik Printout of SoBe website of a virtual delicatessen - product info of Rockridge Deli Patent Publication No. 20030138518 entitled "Center-Filled Chewing Gum Containing a Deliverable Form of Calcium" by Warner Lambert Company File Prosecution History of Patent Publication No. 20030138518 37

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149 150 151 152 153 154 155 156 157 158 162 163 164 165 166 167 168 169 170 171

10/11/02 5/20/05 2/2/05 1/28/05 3/22-23/05 and 4/7/05

Article ­ Will Functional Gum Stick Out in the Marketplace? Declaration of Jack Barreca regarding claimed damages with Exhibits Deposition of Steven Coryea Deposition of Dr. Yang Deposition of Jack Barreca Deposition of Dr. Robert K. Lantz Deposition of Steve Baugh Notes from meeting of 6/21/00 in Chicago titled "Weight Control Gum Project U.S. Patent No. 4,980,178 to Cherukuri et al. Expert Report of Jayne MacPhee Amended License Agreement between South Beach Beverage Company, Inc. and Lotte U.S.A., Inc. 7-Eleven New Product Information re SoBe Energy Gum Sloan, The Top Ten Functional Food Trends, from FoodTechnology, Vol. 54, No. 4 Letter from Asfaw at McDonalds to Rick Martin Letter from Soden at American Red Cross to Barreca Exhibits to any deposition taken in this or the primary case. Any Exhibit used by any other party Plaintiff reserves the right to add demonstrative exhibits based on the information contained in any other exhibit, including expert reports Plaintiff reserves the right to add summary exhibits under F.R.E. 1006 Any and all exhibits listed by Defendants

6/21/00 12/25/90 12/5/03 11/7/02

4/2000 9/17/01 4/30/99

DEFENDANTS' EXHIBITS

A. B. C. D. E.

United States Patent No. 6,652,839. United States Patent No. 6,491,540. November 2, 2001 release agreement signed by Plaintiff. May 16, 2000 Memo from Steve Coryea to Plaintiff. June 21, 2000 weight control gum project notes.

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F. G. H. I. J. K. L. M. Agreement. N. O. P. Q. R. McLean. S. T. U. V. attachments.

July 10, 2000 letter from Koji Ito to Jessica LaStella. May 24, 2001 letter from Bill Meissner to Plaintiff. May 25, 2001 letter from Mark Amuso to Bill Meissner. May 29, 2001 letter from Mark Amuso to Minoru Oda and Mitsu Komuro. June 25, 2001 letter from Mark Amuso to Mitsu Komuro. July 30, 2001 handwritten letter from Koji Ito to Dr. Robert Yang. July 31, 2001 handwritten letter from Dr. Robert Yang to Koji Ito. August 30, 2001 letter from Plaintiff to Minoru Oda with attached Product Supply

September 17, 2001 letter from Michael McElwee to Plaintiff. September 21, 2001 letter from Joseph Kovarik to Michael McElwee. September 25, 2001 letter from Michael McElwee to Joseph Kovarik. October 30, 2001 letter from Joseph Kovarik to Michael McElwee. August 28, 2002 letter from Joseph Kovarik to Michael McElwee and Richard

September 6, 2002 letter from Joseph Kovarik to Thom Hennen. October 2, 2002 letter from Joseph Kovarik to Richard McLean. October 9, 2002 letter from Joseph Kovarik to Michael McElwee. October 24, 2002 letter from Michael McElwee to Joseph Kovarik, with

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W. X. attachment. Y. attachments. Z. A-1. attachments. B-1. C-1. D-1. E-1. F-1. G-1. H-1. I-1. J-1. K-1. L-1. M-1.

October 29, 2002 letter from Joseph Kovarik to Michael McElwee. November 8, 2002 letter from Joseph Kovarik to Michael McElwee, with

November 13, 2002 letter from Michael McElwee to Joseph Kovarik, with

November 15, 2002 letter from Joseph Kovarik to Michael McElwee. November 26, 2002 letter from Michael McElwee to Joseph Kovarik, with

November 27, 2002 letter from Joseph Kovarik to Michael McElwee. SoBe Energy gum package. February 1, 2002 License Agreement between Lotte USA and SoBe. November 7, 2002 Amended License Agreement between Lotte USA and SoBe. 7-Eleven and Lotte USA Product Development Project. SoBe gum project plan, handwritt