Tikiz Franchising, Llc Et Al V. Kona Ice, Inc.

Parties Involved

  • Plaintiff: Tikiz Franchising, LLC | Tikiz Enterprises, LLC
    • Counsel for Plaintiff: Mark C. Perry | Michael Culver | Brian M. Koide
  • Defendant: Kona Ice, Inc.
    • Counsel for Defendant: Brett A. Schatz | Elizabeth Grace McIntosh | Nina Greene

Verdict Information

  • Verdict date: June 18, 2024
  • Total damages awarded to Plaintiff: $0.00
  • Award to Defendant: $532,905

About the Case


Plaintiffs Tikiz Franchising, LLC (“Tikiz”) and Tikiz Enterprises, LLC are Florida-based limited liability companies. Defendant, Kona Ice, Inc. (“Kona”), a Kentucky corporation was accused of breaching a settlement agreement with Tikiz. Plaintiffs sought a declaratory judgment that they do not infringe on Kona’s patents, i.e, U.S. Patent No. 9,751,447 (“the ‘447 Patent”) and that both the ‘447 Patent and U.S. Patent No. 9,321,387 (“the ‘387 Patent”) are invalid or unenforceable.

Tikiz franchised individuals to operate mobile kiosks selling frozen treats, including ice cream and flavored shaved ice. Tikiz
designs builds, and provides these mobile kiosks to its franchisees. These kiosks incorporated patents owned by Tikiz, including U.S. Patent No. 9,352,679 and U.S. Design Patent No. 704,493.

Kona claimed ownership of the ‘447 Patent and ‘387 Patent, along with U.S. Patent No. 8,157,136. Initially, Kona sued Tikiz for patent infringement in 2012 but settled, resulting in Tikiz modifying its kiosk design and sharing proof of these changes with Kona. As per the settlement terms, Kona agreed not to sue Tikiz over the ‘136 Patent.

Despite this settlement, Kona filed 16 new patent infringement suits in 2017 against Tikiz franchisees based on the ‘447 Patent, although none were directed at Tikiz directly.

In 2016, Kona also filed two patent infringement suits concerning the ‘387 Patent against Tikiz franchisees, both of which were later dismissed with prejudice. Tikiz subsequently redesigned its kiosks again in response to these actions.

The present patent infringement litigation involved allegations that Kona obtained its patents through misappropriated designs originally disclosed by Tikiz during the 2012 settlement negotiations. Tikiz contended that Kona’s filings for the ‘387 Patent and subsequent ‘447 Patent contained false declarations regarding inventorship. It also asserted that Kona breached their 2012 settlement agreement by initiating patent infringement suits against Tikiz franchisees.


Kona’s breach caused Tikiz damages estimated to exceed $75,000. These damages included liquidated damages of $5,000 per each of the 18 patent infringement actions, along with attorney’s fees and enforcement costs. Allegedly, additional damages were also incurred by Tikiz.

Therefore, Tikiz sought a judgment declaring U.S. Patent Nos. 9,751,447 and 9,321,387 invalid and unenforceable due to inequitable conduct and confirming that Tikiz, its franchisees, and related parties did not infringe U.S. Patent No. 9,751,447 and that any action by Kona against them regarding this patent was prohibited by their prior agreement. Additionally, they wanted the judgment to state that Kona had breached their settlement agreement.

Additionally, Tikiz requested an assessment of damages resulting from Kona’s actions, reimbursement of all costs and attorney’s fees incurred during this litigation, and any other relief deemed appropriate by the court.

Jury Verdict

On June 18, 2024, an eight-panel Florida jury found that Kona Ice had not proved by a preponderance of the evidence that it was entitled to lost profits for Tikiz’s infringement of the ‘447 patent. However, the jury did find that Plaintiff Tikiz had willingly infringed the ‘447 patent. The jury awarded Defendant Kona Ice a reasonable royalty of $532,905  as compensation for infringement of the ‘447 patent.

Court Documents:

Available upon request