DCT
1:24-cv-23765
Superhuman Inc v. ThermoLife Intl LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Superhuman Inc. (Delaware)
- Defendant: Thermolife International, LLC (Arizona)
- Plaintiff’s Counsel: The Brickell IP Group, PLLC; Goldberg Kohn, LTD.
- Case Identification: 1:24-cv-23765, S.D. Fla., 09/30/2024
- Venue Allegations: Venue is asserted based on Thermolife’s enforcement activities, specifically Amazon takedown notices, which were directed at Superhuman, a company with its principal place of business in Florida.
- Core Dispute: Plaintiff Superhuman Inc. seeks a declaratory judgment that its pre-workout supplements do not infringe Defendant Thermolife International, LLC’s patent and that the patent is invalid, following Thermolife's use of Amazon’s takedown process to delist Superhuman’s products.
- Technical Context: The dispute centers on the chemical composition of nutritional supplements, specifically formulations designed to increase nitric oxide production for athletic performance enhancement.
- Key Procedural History: The complaint alleges that the patent-in-suit, U.S. Patent No. 8,455,531, has undergone at least two ex parte reexaminations where its claims were significantly amended. It further notes Thermolife’s alleged awareness of the patent’s invalidity from a prior inter partes review. The current lawsuit was precipitated by infringement allegations Thermolife made to Amazon, resulting in the removal of Superhuman’s product listings.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-18 | U.S. Patent No. 8,455,531 Priority Date |
| 2013-06-04 | U.S. Patent No. 8,455,531 Issue Date |
| 2017 | Superhuman Inc. was founded |
| 2021 | Superhuman began selling the Accused Products on Amazon |
| 2024-09-10 | Superhuman received notices of Thermolife's takedown claims with Amazon |
| 2024-09-17 | Superhuman sent a letter to Thermolife demanding withdrawal of takedown notices |
| 2024-09-18 | Superhuman submitted a response to Amazon explaining no infringement |
| 2024-09-19 | Amazon reinstated one listing for the Accused Products |
| 2024-09-26 | Amazon again deactivated the listing in response to a Thermolife notice |
| 2024-09-30 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,455,531 - “Amino Acid Compositions”
- Patent Identification: U.S. Patent No. 8,455,531, “Amino Acid Compositions,” issued June 4, 2013.
The Invention Explained
- Problem Addressed: The patent seeks to improve upon conventional amino acid and nitrate/nitrite supplements by addressing limitations such as poor water solubility, low bioavailability, and the large doses required to achieve a therapeutic effect, such as vasodilation (’531 Patent, col. 3:12-5:50).
- The Patented Solution: The invention is a composition that combines at least one amino acid (such as Arginine, Creatine, or Citrulline) with a nitrate or nitrite ('531 Patent, Abstract). This combination is intended to increase the bioabsorption and vasodilative characteristics of the amino acids, making them more effective ('531 Patent, col. 2:56-65). The patent suggests this approach provides synergistic results over administering the components separately ('531 Patent, col. 25:50-27:2).
- Technical Importance: By combining amino acids directly with nitrates, the invention purports to create more water-soluble and bioavailable compounds, potentially allowing for smaller, more effective doses for applications like enhancing athletic performance and blood flow ('531 Patent, col. 17:55-58).
Key Claims at a Glance
- The complaint states that "each and every current claim of the '531 Patent requires a 'non-ester nitrate compound' or a 'nitrate salt compound'" (Compl. ¶24). It provides Claim 62, as amended by an ex parte reexamination, as a representative example (Compl. ¶23).
- Independent Claim 62 consists of the following essential elements:
- A solid supplement formulation comprising:
- at least one non-ester nitrate compound; and
- at least one isolated amino acid compound selected from a specified group (including Agmatine, Beta Alanine, Citrulline, etc.);
- wherein the isolated amino acid compound is a separate compound from the non-ester nitrate compound.
- The complaint seeks a declaratory judgment of non-infringement and invalidity for all claims of the patent (Compl. ¶¶ 49, 55).
III. The Accused Instrumentality
Product Identification
The accused products are Superhuman’s “Superhuman Pre” and “Superhuman Extreme” pre-workout supplements (Compl. ¶18).
Functionality and Market Context
- The accused products are dietary supplements intended to enhance athletic performance (Compl. ¶18). The complaint provides an image of the two accused products, "Superhuman Pre" and "Superhuman Extreme," displaying their packaging and branding (Compl. p. 5).
- Crucially, the complaint alleges the products "are non-nitrate supplements" and are "specifically formulated to boost nitric oxide without including nitrates as an ingredient" (Compl. ¶4). To support this, the complaint references Certificates of Analysis from an independent laboratory which allegedly showed "no detected nitrate" in either of the accused products (Compl. ¶¶33-34).
- The complaint alleges the products are commercially significant, with Amazon.com sales accounting for approximately 40% of their total sales prior to the delisting (Compl. ¶19).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The central theory is that the accused products are missing a key element required by all asserted claims of the ’531 Patent.
’531 Patent Infringement Allegations
| Claim Element (from Independent Claim 62) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A solid supplement formulation comprising: at least one non-ester nitrate compound... | The accused Superhuman Supplements are "non-nitrate supplements" and third-party laboratory testing "showed no detected nitrate." | ¶¶4, 33, 34 | ’531 Patent C1, col. 2:27-28 |
| ...and at least one isolated amino acid compound... | The complaint does not dispute the presence of amino acids, but focuses entirely on the absence of a nitrate compound. | ¶4 | ’531 Patent C1, col. 2:29-35 |
- Identified Points of Contention:
- Factual Question: The primary point of contention appears to be a factual one: do the accused products contain a "non-ester nitrate compound" or "nitrate salt compound"? Superhuman's complaint presents this as a definitive "no," supported by third-party testing (Compl. ¶¶33-34). The case may turn on whether Thermolife can produce contrary evidence showing the presence of such a compound, either as a listed ingredient, a component of another ingredient, or a significant contaminant.
- Scope Question: A potential legal dispute could arise over the definition of "non-ester nitrate compound." While Superhuman’s argument relies on a straightforward reading, it raises the question of whether Thermolife might argue that a non-nitrate ingredient in the accused products is a precursor that metabolizes into a nitrate or is otherwise chemically equivalent, although the complaint provides no indication of such a theory.
V. Key Claim Terms for Construction
- The Term: "non-ester nitrate compound" / "nitrate salt compound"
- Context and Importance: The presence or absence of a component meeting this definition appears to be dispositive for the question of literal infringement. Superhuman’s entire non-infringement case, as pled, rests on the absence of such a compound in its products (Compl. ¶¶4, 35, 50).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader reading might point to the specification’s discussion of nitrates from natural sources, such as juice or extracts from vegetables like beetroot or spinach ('531 Patent, col. 7:20-33). An argument could be made that if the accused products contained such extracts, they would meet the limitation even if "nitrate" is not explicitly listed as an ingredient. However, the complaint alleges the products are specifically formulated to be nitrate-free (Compl. ¶4).
- Evidence for a Narrower Interpretation: The plain language of the claims, which requires the formulation to comprise "at least one... nitrate compound," suggests the physical presence of the compound itself. The complaint highlights that the claims were "significantly amended" during two ex parte reexaminations (Compl. ¶23). Such amendments are often made to distinguish over prior art and may serve to narrow the scope of the claims, a point the court would likely consider during claim construction.
VI. Other Allegations
- Indirect Infringement: The complaint includes a blanket denial of any indirect infringement (Compl. ¶49). However, its factual allegations focus exclusively on the composition of the product itself, which pertains to direct infringement.
- Willful Infringement: As this is a declaratory judgment action filed by the accused infringer, willfulness is not asserted as a claim for relief. However, the complaint repeatedly alleges that Thermolife acted in "bad faith," knew its infringement allegations were "objectively baseless," and was aware the '531 patent is invalid (Compl. ¶¶3-4, 31). These allegations form the basis for Superhuman's associated claims of unfair competition and trade libel and could support a motion for attorneys' fees under 35 U.S.C. § 285 should Superhuman prevail.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action presents a dispute centered on extra-judicial patent enforcement and a fundamental disagreement over product composition. The key questions for the court appear to be:
A central evidentiary question: Does the chemical composition of Superhuman’s accused supplements include a "non-ester nitrate compound" or "nitrate salt compound" as required by the claims of the ’531 Patent? Resolution of this factual issue, likely through competing expert analysis, may be dispositive of the infringement claim.
A question of enforcement conduct: Were Thermolife's infringement allegations to Amazon made in bad faith, as Superhuman alleges? The court will likely need to examine the adequacy of Thermolife's pre-enforcement investigation into both infringement and the patent's validity, particularly in light of the patent's extensive reexamination history.
A question of claim scope: Should a dispute arise over the product’s composition, the case will turn on the proper construction of the term "nitrate compound." The key issue will be whether this term is limited to an explicitly added nitrate salt or if it can be construed more broadly to cover other substances, such as natural extracts or chemical precursors.