Creative Compounds LLC v. Starmark Laboratories

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Creative Compounds, LLC (Nevada)
  • Defendant: Starmark Laboratories (Oregon)
  • Plaintiff’s Counsel: Lott & Friedland, P.A.
• Case Identification: 1:07-cv-22814, S.D. Fla., 10/26/2007
• Venue Allegations: Venue is alleged to be proper because the defendant, Starmark, is a resident of the judicial district and a substantial part of the events giving rise to the claims occurred there.
• Core Dispute: Plaintiff seeks a declaratory judgment that its product does not infringe Defendant's patent related to specific creatine salts and that the patent is invalid.
• Technical Context: The technology at issue involves chemical compounds used as nutritional supplements, specifically salts of creatine designed to improve stability and solubility over previous forms.
• Key Procedural History: The complaint alleges this action arises from a prior lawsuit filed by Starmark against Creative in the Eastern District of Pennsylvania. It further alleges that at the time the prior suit was filed, Starmark was not the assignee of the patent-in-suit and lacked standing to sue, only receiving the assignment rights over a month later.

Case Timeline

Date	Event
2002-12-18	Priority Date for U.S. Patent No. 7,109,373
2003-12-18	Patent application assigned to SAN Corporation
2006-09-19	U.S. Patent No. 7,109,373 issues
2006-10-23	Starmark files prior infringement suit against Creative
2006-11-28	'373 Patent assigned to Starmark
2007-10-26	Creative files this Declaratory Judgment Complaint

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Patent No. 7,109,373, "Creatine Salts and Method of Making Same," issued September 19, 2006 (the "'373 Patent").

The Invention Explained

• Problem Addressed: The patent's background section identifies shortcomings with creatine monohydrate, the common form of creatine supplement at the time. It notes that creatine is not stable in acidic solutions like fruit juice, where it can quickly convert to the biologically ineffective compound creatinine ('373 Patent, col. 2:18-24). The patent also highlights the low water solubility of creatine monohydrate, which requires users to consume large volumes of liquid and can lead to inconsistent dosing ('373 Patent, col. 2:46-59).
• The Patented Solution: The invention claims to solve these problems by creating novel creatine salts formed by reacting two molecules of creatine with one molecule of a dicarboxylic acid anion ('373 Patent, Abstract; col. 3:35-42). This 2:1 molar ratio is a key feature, and the specification describes a process of reacting a "molar excess of creatine" with the acid to produce these "hydrosoluble, stable organic salts" ('373 Patent, col. 4:5-7, col. 3:55-56).
• Technical Importance: This approach was intended to provide a form of creatine with enhanced stability and solubility, allowing for more consistent and effective delivery as a nutritional supplement compared to the prior art ('373 Patent, col. 3:19-23).

Key Claims at a Glance

• The complaint seeks a declaratory judgment of non-infringement and invalidity for "any claim" and "each claim" of the '373 Patent (Compl. ¶¶ 24, 28). The key independent claims are Claim 1 (a composition of matter) and Claim 7 (a process).
• Independent Claim 1: A composition claim for a creatine salt with the following essential elements:
  • A creatine salt having the specific formula [C₄H₈N₃O₂]₂ • A
  • Wherein A represents an anion of a dicarboxylic acid
• Independent Claim 7: A process claim with the following essential elements:
  • Reacting a molar excess of creatine monohydrate and a dicarboxylic acid or a tricarboxylic acid
  • with heat
  • to form a creatine salt having the specific formula [C₄H₈N₃O₂]₂ • A
  • Wherein A represents an anion of a dicarboxylic acid

III. The Accused Instrumentality

Product Identification

The product at issue is a compound identified as "Dicreatine Malate" ("DCM") (Compl. ¶8).

Functionality and Market Context

The complaint alleges that Plaintiff Creative "imports, sells and distributes raw materials and ingredients utilized by its clients in the manufacture of nutritional supplements" (Compl. ¶6). The accused DCM is identified as one such compound that Creative "imports and sells" (Compl. ¶8). No further details on the product's market position are provided.

IV. Analysis of Infringement Allegations

As a complaint for declaratory judgment of non-infringement, this filing does not contain a claim chart or a detailed infringement theory. Instead, it states that Starmark, in a prior lawsuit, accused Creative's DCM product of infringing the '373 Patent (Compl. ¶¶ 14, 21). The analysis below is based on the likely points of dispute inferred from the patent claims and the identity of the accused product.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Question: The central factual question will be whether Creative's DCM product actually has the chemical structure claimed in the '373 Patent. The name "Dicreatine Malate" itself suggests a composition of two ("di-") creatine molecules and one malate anion (from malic acid, a dicarboxylic acid explicitly mentioned in the patent). If chemical analysis confirms this 2:1 structure, it would appear to fall within the literal scope of Claim 1.
• Process Question: For the process claims, a key question is whether the method used to manufacture Creative's DCM involves "reacting a molar excess of creatine monohydrate" with the acid, as required by Claim 7 ('373 Patent, col. 6:7-9). The infringement analysis will depend on the facts of the manufacturing process employed by Creative or its suppliers.
• Scope Question: A potential dispute may arise over the interpretation of the phrase "A creatine salt having the formula...". The question is whether this language requires a substance to be substantially pure to infringe, or if it can read on a commercial-grade mixture that contains the claimed salt. The patent's own examples describe end-products with approximately 66-70% creatine content by weight, which may suggest the claim is not limited to chemically pure compounds ('373 Patent, col. 4:47-49, 67-68).

V. Key Claim Terms for Construction

• The Term: "A creatine salt having the formula..." (Claim 1)
• Context and Importance: The construction of this term is critical to determining the scope of the composition claim. Practitioners may focus on this term because the infringement analysis could turn on whether Creative's commercial-grade DCM product, which may contain impurities or unreacted components, meets this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party arguing for broader scope may point to the specification's working examples, which result in products that are not 100% pure but are described as the finished product (e.g., "approximately 66% creatine on a weight basis") ('373 Patent, col. 4:67-68). This could support an interpretation that the claim reads on mixtures containing the specified salt.
  • Evidence for a Narrower Interpretation: A party arguing for a narrower scope could emphasize the precise chemical formula provided in the claim itself, arguing that the term "A creatine salt" defines a specific chemical entity, not a mixture. They might argue that the percentages in the examples reflect yield or concentration rather than a redefinition of the claimed "salt."

VI. Other Allegations

• Indirect Infringement: The complaint states that in the prior lawsuit, Starmark accused Creative of both direct and indirect infringement (Compl. ¶14). Creative denies these allegations (Compl. ¶21). The complaint does not, however, provide any specific factual allegations (e.g., concerning instructions or intent) that would form the basis of an indirect infringement claim for analysis.
• Willful Infringement: No allegation of willfulness is made, as this is a declaratory judgment action filed by the accused infringer. However, the complaint establishes that Creative was put on notice of the '373 Patent and Starmark's infringement allegations no later than October 23, 2006, the filing date of the Pennsylvania lawsuit (Compl. ¶11). This date would be significant should Starmark counterclaim and allege willful infringement based on Creative's post-notice activities.

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central issue will be one of chemical identity: does the accused "Dicreatine Malate" product, as sold by Creative, in fact possess the 2:1 molar ratio of creatine to a dicarboxylic acid anion required by the plain language of Claim 1? The resolution will likely depend on factual evidence from chemical analysis.
2. A threshold question, explicitly raised by the complaint, concerns standing to sue: did Starmark possess the legal rights to enforce the '373 Patent at the time it filed its original lawsuit, given the allegation that the assignment to Starmark occurred over a month after that suit was initiated? (Compl. ¶¶ 12-13). This could affect remedies if Starmark asserts a counterclaim for infringement.
3. The case may also turn on a question of claim scope: does the phrase "A creatine salt having the formula..." require a pure chemical compound, or can it be construed to cover a commercial mixture containing the claimed salt, an interpretation potentially supported by the patent's own description of its exemplary products?