DCT
3:16-cv-03321
Sabinsa Corp v. Olive Lifesciences Pvt Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sabinsa Corporation (New Jersey)
- Defendant: Olive Lifesciences Pvt. Ltd. (India)
- Plaintiff’s Counsel: Saiber LLC; Arent Fox LLP
- Case Identification: 3:16-cv-03321, D.N.J., 06/08/2016
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey based on Defendant’s business activities directed toward the state, including the sale of nutritional and cosmetic supplement products. The complaint also asserts that Defendant previously stipulated to and consented to personal jurisdiction in the district in a prior patent case.
- Core Dispute: Plaintiff alleges that Defendant’s cosmetic-grade turmeric extract, containing tetrahydrocurcuminoids, infringes a patent covering methods of using such compositions for skin protection.
- Technical Context: The technology concerns the use of colorless derivatives of curcumin (the active compound in turmeric) as ingredients in cosmetic and nutraceutical products to provide antioxidant, anti-inflammatory, and skin-lightening benefits.
- Key Procedural History: The complaint alleges that Defendant’s founder is a former director of Plaintiff's affiliate, Sami Labs, and was familiar with Plaintiff’s intellectual property. Plaintiff also sent a notice letter to Defendant approximately one month before filing the complaint, alleging infringement and requesting information, to which Defendant reportedly replied but refused to provide the requested information.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-09 | Priority Date for U.S. Patent No. 6,653,327 |
| 2003-11-25 | Issue Date for U.S. Patent No. 6,653,327 |
| 2007 | Defendant’s founder allegedly leaves Plaintiff's affiliate to start Defendant |
| 2008 | Plaintiff publishes a paper identifying the '327 Patent in connection with the use of Tetrahydrocurcuminoids (THC) |
| 2016-05-03 | Plaintiff sends notice letter to Defendant regarding the '327 Patent |
| 2016-05-18 | Defendant replies to Plaintiff’s notice letter |
| 2016-06-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,653,327 - "Cross-Regulin Composition of Tumeric-Derived Tetrahydrocurcuminoids for Skin Lightening and Protection Against UVB Rays"
The Invention Explained
- Problem Addressed: The patent addresses skin damage caused by free radicals generated from exposure to ultraviolet (UVB) radiation and other environmental stressors ('327 Patent, col. 1:28-35). It also notes that while traditional turmeric-derived compounds (curcuminoids) have known antioxidant properties, their yellow color makes them undesirable for many cosmetic applications ('327 Patent, col. 1:53-58).
- The Patented Solution: The invention is a method using a specific mixture of colorless tetrahydrocurcuminoids (THC), which are derived from curcuminoids, to protect the skin. The patent claims this THC mixture provides antioxidant and anti-inflammatory effects through a "cross-regulin" mechanism that regulates intracellular protein cross-linking, thereby protecting skin cells from damage, lightening skin tone, and protecting against UVB rays ('327 Patent, Abstract; col. 2:63-col. 3:15).
- Technical Importance: The technology purports to offer the therapeutic benefits of turmeric derivatives for skin health without the unwanted yellow pigmentation, thereby creating a commercially viable ingredient for colorless cosmetic and food products ('327 Patent, col. 1:53-58).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2–7 and 10–12 ('Compl. ¶25).
- Independent Claim 1 recites:
- A method for regulating random, intracellular protein cross-linking and optimizing cell electric potential in a patient in need of such regulation,
- comprising administering an effective amount of a mixture of tetrahydrocurcuminoids (THC) to the a patient in need of such regulation.
III. The Accused Instrumentality
Product Identification
- The primary accused product is identified as “Tetrahydrocurcuminoids 95% - Cosmetic grade Organic Turmeric Extract” (Compl. ¶21).
Functionality and Market Context
- The complaint alleges this product is an extract containing THC that Defendant manufactures, imports, and sells to customers in New Jersey for use in dietary, cosmetic, and nutritional supplements (Compl. ¶¶20-21). The complaint points to Defendant's product brochure listing the accused extract. This product brochure page is presented as a visual to support the identification of the accused product (Compl. ¶21, Ex. B at 10). The complaint further alleges that Defendant’s marketing materials for its turmeric extract products claim an “Anti-inflammatory” indication, which Plaintiff connects to the patented method (Compl. ¶22). A screenshot from Defendant's website is provided as a visual to demonstrate this marketing claim (Compl. ¶22, Ex. C). Plaintiff characterizes Defendant as a "fierce direct competitor," allegedly started by a former executive from Plaintiff's affiliate (Compl. ¶16).
IV. Analysis of Infringement Allegations
'327 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for regulating random, intracellular protein cross-linking and optimizing cell electric potential in a patient in need of such regulation, | Defendant sells its THC product with an advertised "Anti-inflammatory" indication. The patent links its claimed method of regulating protein cross-linking to providing anti-inflammatory effects and protection against skin damage. | ¶¶22, 25-26 | col. 2:63–col. 3:15 |
| comprising administering an effective amount of a mixture of tetrahydrocurcuminoids (THC) to the a patient in need of such regulation. | Defendant manufactures, imports, offers to sell, and sells products containing THC, specifically its "Tetrahydrocurcuminoids 95% - Cosmetic grade Organic Turmeric Extract," for use in supplements and cosmetics that are administered to end-users. | ¶¶21, 25-26 | col. 8:1-2 |
- Identified Points of Contention:
- Scope Questions: A principal issue may arise from the fact that the asserted claim is a method of use claim ("A method for...administering"), while the Defendant is an ingredient supplier. The complaint alleges direct infringement by Defendant for its acts of "manufacturing, using, exporting, importing, selling, and/or offering for sale" the THC product (Compl. ¶25). This raises the question of whether Defendant, as a supplier, can be held liable for direct infringement of a method performed by an end-user, or if liability must be established through the more stringent standards of indirect infringement.
- Technical Questions: What evidence does the complaint provide that the accused product, when used as intended, performs the specific functions of "regulating random, intracellular protein cross-linking" and "optimizing cell electric potential"? The infringement theory appears to rely on Defendant’s marketing claim of an "Anti-inflammatory" indication (Compl. ¶22) as evidence of the claimed method. A dispute may arise over whether this general marketing term is sufficient to prove that the product operates via the specific mechanisms recited in the claim.
V. Key Claim Terms for Construction
The Term: "regulating random, intracellular protein cross-linking"
- Context and Importance: This phrase defines the core function and mechanism of the patented method. Its construction will be critical to determining the type and sufficiency of evidence required to prove infringement. Practitioners may focus on this term because the dispute may turn on whether a general anti-inflammatory effect is sufficient to meet this limitation, or if proof of a specific molecular pathway is required.
- Intrinsic Evidence for a Broader Interpretation: The specification links this mechanism to observable, high-level effects, such as the inhibition of TPA-induced ear edema in mice, and describes it as an "anti-inflammatory and cancer preventive mechanism" ('327 Patent, col. 3:16-20). A party could argue this supports a construction where any composition that achieves these observable anti-inflammatory results is "regulating" cross-linking.
- Intrinsic Evidence for a Narrower Interpretation: The specification also describes the mechanism in more specific terms, discussing its effect on "post-translational modification of proteins" and its role in regulating specific enzymes like transglutaminases and proteins such as Ras p21 ('327 Patent, col. 4:48-65). A party could argue this language requires proof of a specific mode of action, not just a general anti-inflammatory outcome.
The Term: "administering"
- Context and Importance: The identity of the actor who "administers" the composition is central to the direct infringement allegation. If "administering" is construed to mean only the physical application or ingestion by an end-user, it could preclude a finding of direct infringement against the ingredient supplier.
- Intrinsic Evidence for a Broader Interpretation: The complaint does not offer a basis for a broad interpretation where "selling" equals "administering." The plaintiff's theory of direct infringement may rely on a legal argument under 35 U.S.C. § 271(a) concerning control or direction over the end-user, though this is not explicitly pleaded.
- Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "administering" in a medical or cosmetic context suggests the physical act of applying or consuming a substance. The patent describes topical, oral, and parenteral administration, all of which are actions typically performed by or on the "patient" ('327 Patent, col. 8:34-45), not by the manufacturer of a bulk ingredient.
VI. Other Allegations
- Indirect Infringement: The complaint includes separate counts for induced and contributory infringement. The allegations for inducement are based on Defendant supplying the THC product with the alleged intent that its customers will directly infringe by using it in an infringing manner (Compl. ¶38). This is supported by allegations that Defendant's product literature and website promote infringing uses (Compl. ¶39). Contributory infringement is alleged on the basis that the THC product is a material component especially adapted for infringing use and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶52).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged on two grounds: first, that Defendant’s founder was a director at Plaintiff’s affiliate and was familiar with the patent (Compl. ¶27); and second, that Plaintiff sent a formal notice letter to Defendant on May 3, 2016 (Compl. ¶29). Continued alleged infringement after the filing of the suit would form the basis for post-suit willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability theory: given that the asserted patent claim recites a method of use, can the plaintiff's direct infringement claim against an ingredient supplier survive, or will the case depend entirely on proving the heightened knowledge and intent requirements for indirect infringement?
- A key evidentiary question will be one of functional proof: does the accused product’s general "anti-inflammatory" marketing claim suffice to prove infringement of the specific method of "regulating random, intracellular protein cross-linking," or will the court require direct scientific evidence mapping the product's function to the specific mechanism described in the patent?
- Finally, the case may turn on a question of imputed knowledge: to what extent can the alleged prior knowledge of Defendant’s founder, stemming from his employment at Plaintiff's affiliate, be used to establish corporate intent for the claims of willful and induced infringement, particularly for conduct preceding the formal notice letter?