DCT
1:22-cv-04023
Karmagreen LLC v. United Wholesale & Distributor Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Karmagreen, LLC (Delaware)
- Defendant: United Wholesale & Distributor Inc. (Georgia)
- Plaintiff’s Counsel: Bloom Parham, LLP; Wiley Rein LLP (Of Counsel)
- Case Identification: 1:22-cv-04023, N.D. Ga., 10/06/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant is a Georgia corporation that maintains its principal place of business and resides in the District.
- Core Dispute: Plaintiff alleges that Defendant’s dietary supplement products infringe four patents directed to methods of forming compositions containing tianeptine, sakae naa, and/or kava.
- Technical Context: The technology relates to specific combinations of chemical and herbal compounds formulated as dietary supplements, a market category involving products intended to provide various physiological effects.
- Key Procedural History: The complaint alleges that Defendant had actual knowledge of the ’902 Patent as early as November 2021, due to receiving a subpoena in a separate litigation, an allegation which directly supports the claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-08 | Priority Date for ’902, ’754, ’755, and ’146 Patents |
| 2020-04-21 | U.S. Patent No. 10,624,902 Issues |
| 2021-11-01 | (Approx.) Defendant allegedly receives subpoena regarding ’902 Patent |
| 2022-05-03 | U.S. Patent No. 11,318,146 Issues |
| 2022-5-10 | U.S. Patent No. 11,324,754 Issues |
| 2022-5-10 | U.S. Patent No. 11,324,755 Issues |
| 2022-10-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,624,902 - Dietary Supplement, issued April 21, 2020 (’902 Patent)
The Invention Explained
- Problem Addressed: The patent does not articulate a specific problem in the prior art but is directed toward the general object of providing a dietary supplement containing multiple ingredients to achieve a "desired effect or benefit" (’902 Patent, col. 1:10-14).
- The Patented Solution: The invention is a method of forming a dietary supplement by creating a specific composition of matter and encapsulating it (’902 Patent, col. 2:9-14). The core combination involves tianeptine, described as a tricyclic antidepressant, and sakae naa, an herbal extract, along with excipients like stearate and silicate to facilitate manufacturing (’902 Patent, col. 3:11-13, col. 3:49-51, col. 3:20-27). Figure 1 of the patent illustrates exemplary percentage ranges for these ingredients in a final composition (’902 Patent, Fig. 1).
- Technical Importance: The patent seeks to protect specific formulations of known active compounds, combining a pharmaceutical agent (tianeptine) with an herbal substance (sakae naa) to create a novel dietary supplement product (’902 Patent, col. 1:17-22).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 4 and 7 (Compl. ¶42).
- Independent Claim 1 requires:
- A method of forming a dietary supplement, comprising steps of:
- creating a composition of matter comprising a first ingredient of tianeptine sodium, a second ingredient of sakae naa, a third ingredient of stearate, and a fourth ingredient of silicate; and
- filling a capsule with the composition of matter to form the dietary supplement.
U.S. Patent No. 11,324,754 - Dietary Supplement, issued May 10, 2022 (’754 Patent)
The Invention Explained
- Problem Addressed: As with the parent ’902 Patent, the ’754 Patent is directed to the object of providing a multi-ingredient dietary supplement for human or animal absorption (’754 Patent, col. 1:16-21).
- The Patented Solution: The invention claims a method of creating a dietary supplement by combining tianeptine and sakae naa and providing the resulting composition in either a liquid or solid form (’754 Patent, Abstract; col. 2:20-24). The independent claim is broader than that of the ’902 Patent, as it does not require the specific excipients (stearate and silicate) or the specific salt form of tianeptine.
- Technical Importance: This patent claims a more generalized method for combining tianeptine and sakae naa, potentially covering a wider array of final product forms beyond the specific encapsulated powder detailed in the ’902 Patent.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 27, and 28 (Compl. ¶47).
- Independent Claim 1 requires:
- A method of forming a dietary supplement, comprising steps of:
- creating a composition of matter comprising a first ingredient of tianeptine and a second ingredient of sakae naa; and
- providing the composition of matter in one of a liquid and a solid form as the dietary supplement.
U.S. Patent No. 11,324,755 - Dietary Supplement (’755 Patent)
- Patent Identification: U.S. Patent No. 11,324,755, Dietary Supplement, issued May 10, 2022.
- Technology Synopsis: The ’755 Patent claims a method of forming a dietary supplement by creating a composition comprising tianeptine and a second ingredient of kava, and then providing that composition in a liquid or solid form for consumption (’755 Patent, Claim 1). The patent’s specification notes that kava can provide a calming effect and relieve anxiety (’755 Patent, col. 3:60-64).
- Asserted Claims: Independent claims 1 and dependent claims including 2 (Compl. ¶52).
- Accused Features: The complaint alleges infringement based on the presence of both tianeptine and piper methysticum (identified as kava) in the Accused Products (Compl. ¶¶ 27, 29, 31, 33, 36).
U.S. Patent No. 11,318,146 - Dietary Supplement (’146 Patent)
- Patent Identification: U.S. Patent No. 11,318,146, Dietary Supplement, issued May 3, 2022.
- Technology Synopsis: The ’146 Patent claims a method of forming a dietary supplement by creating a composition comprising a first ingredient of sakae naa and a second ingredient of kava, and providing it in a liquid or solid form (’146 Patent, Claim 1).
- Asserted Claims: Independent claim 1 and dependent claim 2 (Compl. ¶57).
- Accused Features: Infringement is alleged based on the presence of combretum quadrangulare leaf (identified as sakae naa) and piper methysticum (kava) in the Accused Products (Compl. ¶¶ 27, 29, 31, 33, 37).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are four dietary supplement products: Pegasus, TD Mega, TD Plus, and TD Red (Compl. ¶1).
Functionality and Market Context
The products are sold in capsule form as dietary supplements (Compl. ¶¶ 26, 28, 30, 32). The complaint provides visual evidence of the product labels, which list the key ingredients. For example, the label for the "Pegasus" product shows a "Proprietary Blend" containing "Combretum Quadrangulare Leaf," "Tianeptine," and "Piper Methsticum" (Compl. ¶26). These listed ingredients correspond to the combinations claimed across the four patents-in-suit: tianeptine and sakae naa ('902, '754), tianeptine and kava ('755), and sakae naa and kava ('146) (Compl. ¶¶ 27, 34-37). The complaint alleges Defendant sells these products through various channels, including wholesalers and retail stores, and that they are intended to replicate Plaintiff's own "TIANAA" brand products (Compl. ¶¶ 22, 24).
IV. Analysis of Infringement Allegations
’902 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of forming a dietary supplement, comprising steps of: creating a composition of matter comprising a first ingredient of tianeptine sodium,... | The labels of the Accused Products indicate that they contain tianeptine (tianepten). | Table 1 | col. 1:19-20 |
| a second ingredient of sakae naa; | The labels of the Accused Products indicate that they contain combretum quadrangulare leaf, which is sakae naa. | Table 1 | col. 1:21 |
| a third ingredient of stearate, | On information and belief, the Accused Products contain stearate. | Table 1 | col. 1:25-26 |
| and a fourth ingredient of silicate | On information and belief, the Accused Products contain silicate. | Table 1 | col. 1:26-27 |
| and filling a capsule with the composition of matter to form the dietary supplement. | The labels of the Accused Products indicate that the composition is contained within capsules. | Table 1 | col. 2:12-14 |
- Identified Points of Contention:
- Scope Question: A primary issue may be whether the term "tianeptine sodium" in claim 1 reads on the ingredient listed as "Tianeptine" or "Tianapten" on the accused product labels (Compl. ¶26, p. 7). The patent specification discusses tianeptine sodium, tianeptine sulfate, and tianeptine free acid as distinct forms, which may support a narrow construction of the claim term (’902 Patent, col. 3:25-48).
- Evidentiary Question: The complaint alleges the presence of "stearate" and "silicate" "on information and belief" (Compl. Table 1). These ingredients are required by claim 1 of the ’902 Patent but do not appear on the product labels depicted in the complaint. Plaintiff will need to substantiate these allegations through discovery and testing.
’754 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of forming a dietary supplement, comprising steps of: creating a composition of matter comprising a first ingredient of tianeptine and | The labels of the Accused Products indicate that they contain tianeptine (tianepten). | Table 2 | col. 1:26-27 |
| a second ingredient of sakae naa; | The labels of the Accused Products indicate that they contain combretum quadrangulare leaf, which is sakae naa. | Table 2 | col. 1:27 |
| and providing the composition of matter in one of a liquid and a solid form as the dietary supplement. | The labels of the Accused Products indicate that the composition is contained within capsules, which is a solid form. | Table 2 | col. 1:31-33 |
- Identified Points of Contention:
- Technical Question: The complaint alleges that "combretum quadrangulare leaf" on the product labels "is sakae naa" as claimed (Compl. Table 2). While the patent specification supports this equivalence (’754 Patent, col. 3:49-51), Defendant may challenge this factual assertion.
V. Key Claim Terms for Construction
The Term: "tianeptine sodium" (’902 Patent, Claim 1)
Context and Importance: This term's construction is critical for the infringement analysis of the ’902 Patent. The claim is facially limited to a specific salt form of tianeptine, while the accused product labels only disclose "Tianeptine" (Compl. p. 7). Infringement will depend on whether this term is strictly limited to the sodium salt or if it can encompass other forms.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "tianeptine sodium" should be understood in the broader context of the invention's goal of providing a supplement with tianeptine, but the plain language of the claim is specific.
- Evidence for a Narrower Interpretation: The specification explicitly distinguishes between "Tianeptine Sodium," "Tianeptine Sulfate," and "Tianeptine Free Acid," treating them as different forms with potentially different properties (’902 Patent, col. 3:25-48). This differentiation strongly supports a narrow construction that restricts the claim to only the sodium salt form.
The Term: "sakae naa" (’902 Patent, Claim 1; ’754 Patent, Claim 1)
Context and Importance: The infringement allegations for both the ’902 and ’754 patents depend on equating "sakae naa" with "combretum quadrangulare leaf," the ingredient listed on the accused product labels (Compl. Table 1, Table 2). Practitioners may focus on this term to determine if there is a factual dispute over the identity of the accused ingredient.
Intrinsic Evidence for Interpretation:
- The specification provides strong evidence for equating the two terms, stating: "Sakae Naa (or Combretum Quadrangulare) is an ingredient derived from leaves of the Combretum Quadrangulare tree" (’902 Patent, col. 3:49-51). This explicit definition by the patentee suggests that the terms were intended to be synonymous.
VI. Other Allegations
- Indirect Infringement: The complaint's formal counts (Counts I-IV) are exclusively for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 41, 46, 51, 56). While there is a boilerplate reference to indirect infringement in the general allegations, no specific facts are pleaded to support theories of inducement or contributory infringement (Compl. ¶25).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge (Compl. ¶¶ 38-40). The allegation is specifically supported by the factual assertion that Defendant had actual knowledge of the ’902 Patent as of November 2021, after receiving a subpoena in a separate litigation, nearly a year before the current suit was filed (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can Plaintiff substantiate its "information and belief" allegations that the Accused Products contain the "stearate" and "silicate" excipients required by claim 1 of the ’902 patent, which are ingredients not listed on the product labels provided in the complaint?
- A related question will be one of chemical identity and claim scope: Does the ingredient listed as "Tianeptine" on the Accused Products literally meet the "tianeptine sodium" limitation of the ’902 patent's claims, and if not, is it an equivalent? The resolution will likely depend on claim construction and scientific evidence regarding the products' precise formulation.
- A key question for damages will be the scope of willful infringement: While the complaint provides a specific factual basis for pre-suit knowledge of the ’902 patent, a court will have to determine whether this knowledge, or other alleged conduct, is sufficient to establish willful infringement for the three other patents-in-suit, all of which issued after the alleged notice date.