DCT
2:24-cv-09589
Superhuman Inc v. ThermoLife Intl LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Superhuman Inc. (Delaware / Florida)
- Defendant: Thermolife International, LLC (Arizona / California)
- Plaintiff’s Counsel: Glaser Weil Fink Howard Jordan & Shapiro LLP; Goldberg Kohn, Ltd.
- Case Identification: 2:24-cv-09589, C.D. Cal., 11/05/2024
- Venue Allegations: Venue is asserted on the basis that Defendant Thermolife maintains its principal place of business within the Central District of California.
- Core Dispute: Plaintiff seeks a declaratory judgment that its pre-workout supplements do not infringe Defendant’s patent and/or that the patent is invalid, following Defendant’s issuance of allegedly bad-faith patent infringement takedown notices to Amazon.com.
- Technical Context: The technology resides in the field of dietary supplements, specifically chemical compositions for pre-workout formulas that combine amino acids and nitrates to enhance athletic performance.
- Key Procedural History: The complaint alleges that the patent-in-suit, U.S. Patent No. 8,455,531, underwent at least two ex parte reexaminations. The plaintiff’s core argument for non-infringement is rooted in prosecution history disclaimer, alleging that the defendant, to overcome prior art, made arguments to the U.S. Patent and Trademark Office that disavowed coverage of the very same "de minimis" quantities of nitrates it now accuses of infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-18 | ’531 Patent - Earliest Priority Date |
| 2013-06-04 | ’531 Patent - Issue Date |
| 2017-01-01 | Superhuman Founded (approx.) |
| 2019-01-01 | Thermolife files for ex parte reexamination of '531 Patent (approx.) |
| 2021-01-01 | Superhuman begins selling Accused Products on Amazon (approx.) |
| 2024-08-20 | Thermolife submits Takedown Notices to Amazon |
| 2024-09-10 | Superhuman receives Takedown Notices from Amazon |
| 2024-09-17 | Superhuman sends demand letter to Thermolife |
| 2024-09-18 | Superhuman submits response to Amazon |
| 2024-09-19 | Call between Superhuman and Thermolife CEOs |
| 2024-09-26 | Listing deactivated again after brief reinstatement |
| 2024-11-05 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,455,531 - "Amino Acid Compositions"
Issued June 4, 2013 (as amended by Reexamination Certificate C2, issued September 11, 2020).
The Invention Explained
- Problem Addressed: The patent seeks to create new amino acid compositions that possess properties superior to those of conventional amino acids, nitrates, and nitrites when used alone ('531 Patent, col. 2:11-16).
- The Patented Solution: The invention combines at least one nitrate or nitrite source with at least one specified amino acid. This combination is described as a way to enhance beneficial effects such as vasodilation, bioabsorption, and water solubility, while potentially preventing the development of "nitrate tolerance," a common side effect where the body's response to nitrates diminishes over time ('531 Patent, Abstract; col. 2:20-22, col. 17:47-54).
- Technical Importance: The claimed compositions aim to create more effective dietary supplements by overcoming the individual limitations of their components, such as the poor water solubility of some amino acids and the tolerance issues associated with nitrates ('531 Patent, col. 17:37-44).
Key Claims at a Glance
- The complaint identifies claim 62 as the focus of Defendant's infringement allegations (Compl. ¶ 34). The complaint also reserves the right to seek judgment on other claims (Compl. ¶¶ 99, 103).
- Independent Claim 62 (as amended by Reexam Certificate C2):
- A solid supplement formulation comprising:
- at least one non-ester nitrate compound; and
- at least one isolated amino acid compound selected from the group consisting of Agmatine, Beta Alanine, Citrulline, L-Histidine, Norvaline, Ornithine, Aspartic Acid, Cysteine, Glycine, Lysine, Methionine, Proline, Tyrosine, and Phenylalanine,
- wherein the at least one isolated amino acid compound is a separate compound than the at least one non-ester nitrate compound.
III. The Accused Instrumentality
Product Identification
The "Superhuman Pre" and "Superhuman Extreme" pre-workout supplements (the "Accused Products") (Compl. ¶ 21).
Functionality and Market Context
- The Accused Products are dietary supplements intended to be consumed before a workout to enhance performance (Compl. ¶ 21). Plaintiff alleges they are specifically formulated to boost nitric oxide without including nitrates as a functional ingredient (Compl. ¶ 6).
- The complaint provides a "Supplement Facts" panel for an accused product, which lists ingredients including L-Citrulline, Beta Alanine, and L-Tyrosine, all of which are amino acids recited in the Markush group of asserted claim 62. The panel also lists a blend, S7®, which contains various plant extracts (Compl. p. 9).
- Plaintiff alleges that prior to the takedown notices, sales on Amazon.com accounted for approximately 40% of its total sales of the Accused Products (Compl. ¶ 22).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the plaintiff's non-infringement position for the key claim limitation at issue.
- ’531 Patent Infringement Allegations
| Claim Element (from Independent Claim 62) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one non-ester nitrate compound | The Accused Products allegedly do not contain a "non-ester nitrate compound" in a supplementary or infringing amount. Plaintiff alleges that any nitrates present are trace amounts (e.g., 20-22 ppm) that Defendant previously argued to the USPTO were "de minimis" and "far too low" to satisfy the claim limitation. | ¶¶ 6, 43, 59, 61 | col. 6:8-9 |
| at least one isolated amino acid compound selected from the group consisting of Agmatine, Beta Alanine, Citrulline, L-Histidine... | The Accused Products contain L-Citrulline, Beta Alanine, and L-Tyrosine, which are amino acids recited in the claim. The "Supplement Facts" panel included in the complaint identifies these ingredients. | ¶ 40; p. 9 | col. 6:9-13 |
| wherein the at least one isolated amino acid compound is a separate compound than the at least one non-ester nitrate compound | The listed amino acids are separate ingredients from other components in the formulation, such as the S7® blend, which is the alleged source of any trace nitrates. This is shown on the product's "Supplement Facts" panel. | p. 9 | col. 6:13-15 |
- Identified Points of Contention:
- Scope Question: A central technical dispute will be whether the claim term "at least one non-ester nitrate compound" can be interpreted to cover the "de minimis" or trace quantities (allegedly 20-22 ppm) found in the Accused Products, which Plaintiff calculates as 0.167 mg to 0.334 mg per serving (Compl. ¶¶ 41-42).
- Legal Question (Prosecution Disclaimer): The primary legal question is whether Defendant's arguments to the USPTO during reexamination—allegedly characterizing amounts of nitrate (e.g., 0.22 mg) as "far too low to result in nitrate supplementation"—constitute a clear and unmistakable disclaimer of claim scope that now bars it from asserting that similar amounts are infringing (Compl. ¶¶ 49-54, 59).
V. Key Claim Terms for Construction
- The Term: "non-ester nitrate compound"
- Context and Importance: The construction of this term is dispositive. Plaintiff argues that if the term is construed to exclude "de minimis" quantities, as Defendant allegedly argued during reexamination, then there is no infringement. Conversely, if the term is construed to cover any detectable trace amount, Plaintiff argues the claim would be invalid as anticipated by prior art supplements containing naturally-occurring nitrates from vegetable ingredients (Compl. ¶¶ 64-66). Practitioners may focus on this term because it sits at the center of a classic validity-infringement "squeeze" argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of claim 62, "at least one non-ester nitrate compound," does not contain an explicit quantitative floor. A patentee could argue that any detectable amount of such a compound literally satisfies this limitation.
- Evidence for a Narrower Interpretation: The complaint alleges the prosecution history provides strong evidence for a narrower meaning. It asserts that Defendant, to distinguish prior art, repeatedly characterized trace amounts of nitrate (e.g., 0.1 mg and 0.22 mg) as "de minimis," "far too low," and not a "supplementary amount" sufficient to satisfy the claim limitations (Compl. ¶¶ 49, 50, 52). The complaint further alleges that an expert declaration submitted by Defendant during reexamination stated that nitrate "supplementation" requires amounts "over" 20-30 mg per meal (Compl. ¶ 57).
VI. Other Allegations
The complaint does not contain counts for indirect or willful infringement. Instead, it includes several business tort and unfair competition claims based on Defendant's alleged bad-faith conduct in initiating the Amazon takedown process. The complaint alleges that Defendant knew or should have known its infringement allegations were baseless due to its own prior arguments to the USPTO (Compl. ¶¶ 62-63, 114).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of prosecution history disclaimer: Did Thermolife, by repeatedly characterizing trace amounts of nitrates as "de minimis" and "far too low" to overcome prior art during reexamination, unequivocally surrender any claim scope that would cover the quantities of nitrates allegedly present in Superhuman's products?
- A key validity question will be one of definitional scope: Can the claim term "non-ester nitrate compound" be construed broadly enough to read on the trace amounts in the Accused Products without also being so broad that it is rendered invalid by prior art dietary supplements that contained similar trace amounts of nitrates from natural ingredients like vegetables?