NAI settles prolonged beta alanine patent suit against Woodbolt

By Hank Schultz contact

- Last updated on GMT

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Related tags: License, Patent, Nai

Natural Alternatives International Inc. has settled one of its longest-standing patent infringement cases on its CarnoSyn beta-alanine ingredient. Defendant Woodbolt Distribution Inc. has agreed to a licensing arrangement in a case that has gone on for nearly five years.

Beta-alanine is a popular ingredient in sports nutrition formulations. NAI, based in San Marcos, CA, says that CarnoSyn is a naturally occurring beta amino acid essential for the synthesis of muscle carnosine, which acts as a buffer, delaying the onset of muscle fatigue and failure. NAI, which is primarily a contract manufacturer and which had licensed CarnoSyn to a partner, has now taken over the direct sale and distribution of an ingredient that it says is backed by 15 studies which show, among other things, that supplementing the body’s beta-alanine stores increased muscle buffering capacity resulted in greater physical working capacity, enhanced endurance and delayed fatigue. NAI also owns a portfolio of 14 patents on CarnoSyn in the United States and 20 in other countries. 

“We are pleased to have Woodbolt as a licensee of CarnoSyn given their substantial footprint in the marketplace. Now that the litigation has ceased amicably and a license agreement executed, we can turn our attention to expansion of the patent estate in scope, content and geography,” ​said Mark LeDoux, CEO and board chairman of NAI.

NAI first filed suit against Woodbolt in late 2011, alleging that Woodbolt was infringing on one of its patents through the use of beta alanine in a number of sports nutrition products including C4 Extreme, M5 Extreme and N-Zero Extreme. Woodbolt fought back with countersuits seeking dismissal of the particular patent.  NAI subsequently filed two other infringement cases against Woodbolt. The terms of the settlement that brings the whole chapter to a close were classified.

Sales growth

NAI has seen significant growth in its CarnoSyn business after the supply of the ingredient was interrupted by the 2011 earthquake in Japan. NAI recorded beta-alanine raw material sales and royalty and licensing income as a component of revenue in the amount of $4.8 million during fiscal 2013, $5.4 million during fiscal 2014 and $9.1 million in fiscal 2015.  NAI recorded net sales of $73.9 million in 2014 and $79.5 million in 2014.

In addition to growing its CarnoSyn business, NAI has also vigorously defended its intellectual property suite surrounding the ingredient, which it says gives it the rights to beta alanine when used in a dietary supplement. In a sector rife with generic ingredients and me-too products, NAI spent a $1.6 million in legal fees in 2015 defending the brand and said it expects to spend about as much again in 2016.

"NAI has invested significant time and money to build, promote and expand this business and we will pursue all appropriate legal avenues to protect our CarnoSyn beta alanine brand and intellectual property rights,”​ said LeDoux.

"Our ability to maintain or further increase our beta alanine royalty and licensing revenue will depend in large part on our ability to maintain our patent rights,” ​the company said it its most recent annual report.

Woodbolt could not be immediately reached for comment.

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