Florence-based Kona Ice prevails in lawsuit regarding patent infringement against Tikiz franchises

By Andy Furman
NKyTribune reporter

Seven years. For some it flies by, but for Tony Lamb. founder of Florence-based Kona Ice, it must have felt like an eternity. Finally for the company, the long wait is over.

Back in 2017, Kona Ice began a series of lawsuits against Tikiz franchises, alleging patient infringement. The lawsuits centered on the ‘447 Patent, which was granted by the USPTO on September 5, 2017, and covers mechanism for dispensing frozen treats and drinks from the outside of a mobile vehicle.

Kona Ice argued that the patent was valid and enforceable and that the defendants had infringed on it.

In response, Tikiz filed a declaratory judgment action against Kona Ice in 2018 citing two of Lamb’s patents. The case was overseen by U.S. District Judge K. Michael Moore, and Kona Ice had some early wins before the case went to trial.

The big win came when a Florida federal jury concluded that a small shaved-ice franchise from Boca Raton, Fla., owes the Kona Ice brand a little over half a million dollars for infringing a patent covering a “liquid toppings dispensing system.”

Kona Ice CEO Tony Lamb was not available for comment to the Northern Kentucky Tribune. (Story will be updated if he responds.)

The decision was made on June 21 of this year in Miami, Fla.

Following a two-day trial in Miami that wrapped-up before Juneteenth, jurors turned in a verdict form that found Tikiz Franchising LLC had to pay $532,905 as a “reasonable royalty” for developing a franchise that involves using trucks in a way that infringes a patent that Kona Ice Inc. founder Lamb was issued in 2017.

According to records, the jury also found the infringement was willful.

In 2017, according to the website Law 360, the Koba Ice brand would go on a litigation campaign involving “16 patent infringement actions” against various Tikiz franchises, which are independently operated.

In the years before the Tikiz case went before a jury, according to documents, lawyers for the private-investment funded Kona Ice had scored some key wins in front of U.S. District Judge K. Michael Moore, who oversaw the case.

Initially, the judge had wrapped the case into multidistrict litigation involving other ice cream businesses that Lamb’s company had also targeted. In 2021, the site continued, Judge Moore turned down arguments from Tikiz that the U.S. Patent and Trademark Office should never have issued Lamb that patent because the ideas were already covered by a different patent application Lamb filed in 2009 that also covered a shaved ice truck. He had also ruled that the Tikiz trucks already do what is described by Lamb’s patent.

The ruling from Judge Moore over the patent’s validity has come down to a matter of inches, per the web report – namely that Lamb’s older idea did not call for there to be a gap between the shaved ice machine and the exterior of the truck. Kona Ice’s lawyers had hired an engineer to testify to the importance of this, and Judge Moore believed him, not the patent draftsman that Tikiz had hired to make the opposite case.

Tikiz would eventually get around to taking its arguments against Lamb’s patent to the patent office itself, filing an ex parte reexamination petition this past April. Judge Moore, howver, declined the opportunity to pause the case until the office makes a decision, ruling from the bench earlier last month that “we are too far along the road to justify halting the journey while (Tikiz) explores an alternate route,” per the web report.

The report did mention the jurors had come to somewhat mixed finding about how much Lamb’s patent was worth.

The jurors had rejected the argument that Kona Ice had a case for any profits lost to Tikiz’s competing trucks, but jurors did decide that the Tikiz brand’s use of Lamb’s patent for a better ice cream truck was willful. This finding gives Kona Ice the chance to later ask Judge Moore to as much as triple three infringement verdicts in post-trial filings.

Kona Ice’s triumph in court sends a strong message to the industry about the importance of protecting intellectual property.

“When a Kona Ice truck pulls up, every kid says,‘I want some of that,’ and every adult says, ‘Why didn’t I think of that?’” Lamb was quoted in a media release. “Our business has flourished for the last 18 years because of our commitment to innovation and the unique experience we offer.”

Kona Ice, the shaved ice franchise and self-proclaimed “World’s largest food truck company” with over 2,000 trucks operating across all 50 states, was founded in 2007 by Lamb.

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