CytoSport, Inc. v. Vital Pharmaceuticals, Inc.

Filing 231

STIPULATION and ORDER DISMISSING CASE signed by Judge John A. Mendez on 9/28/12. Any and all motions that remain pending on the docket for this action are hereby denied as moot. CASE CLOSED. (Manzer, C)

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GIBSON, DUNN & CRUTCHER LLP
G. CHARLES NIERLICH, SBN 196611
HOWARD S. HOGAN, pro hac vice
JOSHUA A. JESSEN, SBN 222831
555 Mission Street, Suite 3000
San Francisco, CA 94105-2933
Telephone: [phone]
Facsimile: 415.393.8306
[e-mail]
[e-mail]
[e-mail]

KING PARRET & DROSTE LLP
ALAN J. DROSTE, SBN 105616
450 Newport Center Drive, Suite 500
Newport Beach, CA 92660
Telephone: [phone]
Facsimile: 949.644.3993
[e-mail]

Attorneys for Plaintiff
CYTOSPORT, INC.

Attorneys for Defendant
VITAL PHARMACEUTICALS, INC.

[Additional counsel on signature pages]

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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SACRAMENTO DIVISION
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CASE NO. 2:08-CV-02632-JAM-GGH
CYTOSPORT, INC., a California corporation,

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AGREED STIPULATION AND ORDER OF
DISMISSAL

Plaintiff,
v.
VITAL PHARMACEUTICALS,
Florida Corporation,

INC.,

a

Defendant.

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Gibson, Dunn &
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AGREED STIPULATION AND [PROPOSED] ORDER OF DISMISSAL, CASE NO. 2:08-CV-02632-JAM-GGH

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This matter is before the Court on the joint application of plaintiff CytoSport, Inc.
(“CytoSport”) and Defendant Vital Pharmaceuticals, Inc. (“VPX”) (collectively, “the Parties”).
WHEREAS, Plaintiff commenced the above-captioned civil action on or about November 4,
2008 and filed a Third Amended Complaint on or about December 7, 2009;
WHEREAS, Defendant filed an answer and counterclaims against CytoSport that were
deemed filed as of December 22, 2009;
WHEREAS, the Parties have entered into a confidential settlement agreement in which they
have agreed to resolve the dispute giving rise to this action; and

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WHEREAS, without admitting any factual or legal allegation, claim alleged, or defense

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asserted, the Parties have consented to the entry of this dismissal order pursuant to Rule 41(a)(2) of

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the Federal Rules of Civil Procedure with prejudice.

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Therefore, it is hereby ORDERED that:

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(a)

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All claims asserted by Plaintiff against Defendant and all counterclaims asserted by

Defendant against Plaintiff are hereby dismissed with prejudice;
(b)

The preliminary injunction entered by this Court on May 6, 2009 and affirmed by

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order of the United States Court of Appeals for the Ninth Circuit dated September 14, 2009 and filed

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October 13, 2009 is hereby converted into a permanent injunction and the terms of the injunction set

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forth therein shall remain permanently in effect pursuant to 15 U.S.C. § 1116 except that CytoSport is

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hereby relieved of its obligation to post a security under Rule 65(c) of the Federal Rules of Civil

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Procedure. The Surety Bond in the amount of $500,000.00 received by attorney-in-fact Sheryl

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Smith/American Contractors Indemnity Company and recorded as Docket No. 78 is accordingly

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hereby discharged and exonerated.

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(c)

As set forth in the confidential

settlement agreement between the Parties, VPX

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surrenders and abandons all statutory and common law rights in the marks “Muscle Power” (Reg.

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Nos. 3,551,076 and 3,547,541) and “I Am Muscle Power” (Serial No. 77/679,693), along with any

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and all of the goodwill associated with and represented and symbolized by such marks. The Court

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hereby orders the cancellation of Reg. Nos. 3,551,076 and 3,547,541 and certifies such order to the

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Director of the United States Patent and Trademark Office “who shall make appropriate entry upon

Gibson, Dunn &
Crutcher LLP

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AGREED STIPULATION AND [PROPOSED] ORDER OF DISMISSAL, CASE NO. 2:08-CV-02632-JAM-GGH

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the records of the Patent and Trademark Office and shall be controlled thereby,” pursuant to 15

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U.S.C. § 1119;

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(d)

As set forth in the confidential

settlement agreement between the Parties, VPX

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withdraws its petitions to cancel CytoSport’s registrations for the “Muscle Milk” and “Muscle Milk

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Light” marks, Petition for Cancellation Nos. 92051604, 92051605, 92051607 and 92051697 before

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the Trademark Trial and Appeal Board of the United States Patent and Trademark Office;

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(e)

Each of the Parties shall bear its own costs, expenses and attorneys’ fees associated

with the prosecution and defense of this action;

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(f)

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denied as moot;

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///

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Any and all motions that remain pending on the docket for this action are hereby

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AGREED STIPULATION AND [PROPOSED] ORDER OF DISMISSAL, CASE NO. 2:08-CV-02632-JAM-GGH

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(g)

This Court shall retain subject matter jurisdiction over this matter for purposes of

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enforcement of this order and the Parties’ settlement of this action, and the Parties hereby expressly

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consent to the exclusive personal jurisdiction of this Court with respect to any action arising from or

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related to this Settlement Agreement; and

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(h)

The Clerk of the Court is directed to close the above-captioned action.

DATED: September 27, 2012

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GIBSON, DUNN & CRUTCHER LLP
G. CHARLES NIERLICH
HOWARD S. HOGAN
JOSHUA A. JESSEN

KING, PARRET & DROSTE LLP
ALAN J. DROSTE

By: /s/ G. Charles Nierlich
G. Charles Nierlich

By: /s/ Alan J. Droste
Alan J. Droste

Attorneys for Plaintiff
CYTOSPORT, INC.

Attorneys for Defendant
VITAL PHARMACEUTICALS, INC.

VITAL PHARMACEUTICALS, INC.
KALINA PAGANO
VICTORIA GODWIN

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IT IS SO ORDERED.

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Dated: 9/28/2012
/s/ John A. Mendez____________________
U. S. DISTRICT COURT JUDGE

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AGREED STIPULATION AND [PROPOSED] ORDER OF DISMISSAL, CASE NO. 2:08-CV-02632-JAM-GGH