DNP was speaking to NutraIngredients-USA after NAI filed its fourth patent infringement lawsuit in three months over beta-alanine, a popular sports nutrition ingredient.
NAI: DNP has ‘continued to engage in infringing activities’
In a complaint filed in Delaware on February 6, NAI alleged that Los Angeles-based DNP supplied beta-alanine to the US market that infringed NAI’s US patent #8,067,381.
The patent, awarded on November 29, 2011, “generally covers any human dietary supplement containing the amino acid beta-alanine”, according to Patton Boggs partner Kevin Bell, who represents NAI.
Currently, says NAI, the only licensed distributor of NAI's CarnoSyn beta-alanine product is the distributor Compound Solutions, Inc, but none of the firms NAI has sued had purchased beta-alanine from Compound Solutions.
“Even though DNP has been aware of the new '381 patent since November 30, 2011, it has continued to engage in infringing activities. DNP knows full well that the only duly licensed distributor of NAI's CarnoSyn beta-alanine product is Compound Solutions.”
DNP: ‘NAI patents are not valid’
However, Enoch Liang, partner at LTL Trial Attorneys, which is representing DNP in the case, said NAI’s latest lawsuit was just “part of NAI’s ongoing attempt to dominate the beta-alanine market using patents, which, in DNP’s opinion, are not valid and should never have been issued”.
NAI and DNP had been wrangling over patents since 2009, when NAI sued DNP for allegedly infringing three US beta-alanine patents: #5,965,596, #6,172,098, and# 6,426,361.
However, in June 2011, says Liang, the Delaware District Court dismissed NAI’s lawsuit without prejudice, and NAI did not re-file.
As NAI was “continuing to try and extract beta-alanine licenses, including from certain customers of DNP”, however,DNP countersued NAI in December 2011 to invalidate the above three patents, he said.
“Among other positions, DNP will seek to invalidate the ‘381 patent. DNP believes it will ultimately be vindicated by the Delaware District Court.”
Other beta-alanine supplement distributors were also suing NAI to invalidate the ‘381 patent, he claimed.
“In at least one other case of which DNP is aware, other beta-alanine supplement distributors have charged NAI with antitrust and unfair competition violations for patent misuse.”
Beta-alanine. The ‘381 patent
The ‘381 patent, entitled ‘Methods and compositions for increasing the anaerobic working capacity in tissues’, provides “compositions comprising beta-alanine, peptides of beta-alanine, analogues and derivatives thereof, along with methods using these compositions for increasing the anaerobic working capacity of a tissue”.
According to NAI, the ‘381 patent claims are “specifically directed to beta-alanine compositions in several formulations, wherein the beta-alanine is not part of a dipeptide, polypeptide or oligopeptide and is in the form of a dietary supplement”.
It adds: “Esters or amides of beta-alanine, which are not part of a dipeptide, polypeptide or oligopeptide, may also be employed. Additional active agents, such as carbohydrates, L-histidine, insulin and creatine, may also be present.”
Click here to read more about NAI’s patent infringement lawsuits.