DCT
3:16-cv-03323
Sabinsa Corp v. Nachurel Ingredients LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sabinsa Corporation (New Jersey)
- Defendant: Nachurel Ingredients LLC (New Jersey)
- Plaintiff’s Counsel: Saiber LLC
- Case Identification: 2:16-cv-03323, D.N.J., 06/14/2016
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated in New Jersey and regularly conducts business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s sale of a nutritional supplement ingredient containing tetrahydrocurcuminoids infringes a patent covering methods of using such compositions for skin protection and lightening.
- Technical Context: The technology relates to the field of cosmeceuticals and nutritional supplements, specifically the use of turmeric-derived compounds as antioxidants and skin-lightening agents.
- Key Procedural History: The complaint alleges that the Vice President of Defendant, Mr. Velmurugan Shanmugham, was previously a senior manager at Plaintiff and its related company, Sami Labs. This prior employment, which allegedly occurred around the time the patent-in-suit issued, is asserted as the basis for Defendant's knowledge of the patent and its alleged willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-09 | '327 Patent Priority Date |
| 2003-11-25 | '327 Patent Issue Date |
| 2008-01-01 | Start date of Mr. Shanmugham's alleged employment at Sami Labs (approx.) |
| 2008-01-01 | Sabinsa allegedly published a paper identifying the '327 Patent (approx.) |
| 2016-06-14 | Complaint Filing Date |
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," issued November 25, 2003
The Invention Explained
- Problem Addressed: The patent describes the problem of skin damage caused by free radicals generated from exposure to environmental stressors like UVB radiation (ʼ327 Patent, col. 1:24-33). While turmeric-derived curcuminoids are known antioxidants, their strong yellow color makes them unsuitable for many colorless ("achromatic") cosmetic and food applications (ʼ327 Patent, col. 1:47-51).
- The Patented Solution: The invention claims a method of using tetrahydrocurcuminoids (THC)—colorless compounds derived from curcuminoids—to protect the skin. The patent describes a specific "cross-regulin" mechanism where a particular mixture of THCs regulates intracellular protein cross-linking, providing anti-inflammatory and cancer-preventive benefits that are asserted to be superior to prior art compositions (ʼ327 Patent, col. 2:55-65; col. 3:9-15). This allows for the benefits of curcuminoids in a formulation that is aesthetically suitable for broad cosmetic use.
- Technical Importance: The invention provided a way to use the known antioxidant and skin-protective properties of turmeric derivatives in colorless formulations, expanding their commercial applicability in the cosmetics industry (ʼ327 Patent, col. 1:47-51).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2-7 and 10-12 (Compl. ¶20).
- Independent Claim 1 requires:
- 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.
- The complaint reserves the right to assert other claims (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a product identified on Defendant's website as "Tetrahydrocurcuminoids" (Compl. ¶16).
Functionality and Market Context
- The product is described as being derived from curcuma longa and standardized to contain "95% Tetrahydrocurcuminoids by HPLC" (Compl. ¶16). It is marketed for the purpose of "skin whitening" (Compl. ¶16). The complaint alleges that Defendant manufactures, imports, sells, and offers this product for sale as a dietary and nutritional supplement ingredient (Compl. ¶15). A screenshot from the Defendant's website, attached as Exhibit D to the complaint, is offered as evidence of the product's identity and marketed purpose (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, | The complaint alleges that Defendant's product is sold for "skin whitening," which is a purpose covered by the patent's claimed methods of skin protection and lightening. The act of using the product for its intended purpose is alleged to constitute performance of the claimed method. | ¶16, ¶20, ¶43 | col. 4:51-64 |
| comprising administering an effective amount of a mixture of tetrahydrocurcuminoids (THC) to the a patient in need of such regulation. | Defendant manufactures, imports, sells, and offers for sale a product containing a mixture of "95% Tetrahydrocurcuminoids by HPLC." This product is administered by Defendant's customers. | ¶16, ¶21 | col. 1:42-46 |
- Identified Points of Contention:
- Technical Questions: A primary question is whether using a "skin whitening" product necessarily performs the specific method step of "regulating random, intracellular protein cross-linking and optimizing cell electric potential." The complaint does not provide specific factual allegations or evidence detailing the biological mechanism of the accused product, instead relying on the product's marketed purpose.
- Scope Questions: The infringement analysis for the method claims will depend on the actions of Defendant's customers. The complaint alleges direct infringement by the Defendant "by manufacturing, using, selling, offering to sell, and importing" the product (Compl. ¶21). A key question for the court will be whether the act of selling an ingredient can constitute direct infringement of a method claim, or whether the case will depend more heavily on the allegations of indirect infringement.
V. Key Claim Terms for Construction
The Term: "regulating random, intracellular protein cross-linking"
- Context and Importance: This functional language is at the heart of the claimed method and the patent's "cross-regulin" theory. The definition will be critical for determining infringement, as Plaintiff will need to prove that the accused product, when used by customers, actually performs this specific biological function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests this regulation is a general protective mechanism, stating that "inhibition of crosslinking will prevent initiation and progression of the malignancy" (ʼ327 Patent, col. 5:5-7). This could support an interpretation where any demonstrable effect on protein cross-linking meets the limitation.
- Evidence for a Narrower Interpretation: The patent repeatedly links this regulation to specific outcomes, such as inhibiting TPA-induced inflammation by more than 80% (ʼ327 Patent, col. 3:9-15). A defendant may argue that the term should be limited to a mechanism that achieves these specific, heightened results described as the "crossregulin's action" (ʼ327 Patent, col. 3:15-22).
The Term: "a mixture of tetrahydrocurcuminoids (THC)"
- Context and Importance: The composition of the THC mixture is central to distinguishing the invention from prior art. Whether the claim covers any mixture of THCs or is limited to a specific ratio will be a pivotal issue for both infringement and validity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Independent claim 1 broadly recites "a mixture," which could suggest that any combination of THC compounds falls within the scope.
- Evidence for a Narrower Interpretation: Dependent claim 8 recites a specific mixture comprising "70-80% tetrahydrocurcumin, 15-20% tetrahydrodemethoxycurcumin, and 2.5-6.5% tetrahydrobisdemethoxycurcumin" (ʼ327 Patent, col. 8:24-29). The specification also touts the unique benefits of a particular composition (ʼ327 Patent, col. 3:9-15). A defendant could argue that the term "a mixture" in claim 1 should be interpreted in light of these more specific disclosures, effectively limiting it to the preferred embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant intends for its customers to infringe by supplying them with the THC product with "full knowledge that its customers' actions constitute direct infringement" (Compl. ¶31). It also alleges contributory infringement, asserting the accused product is a "material part" of the invention, is "especially made or especially adapted for use in an infringing manner," and is not a "staple article or commodity of commerce suitable for substantial non-infringing use" (Compl. ¶43).
- Willful Infringement: Willfulness is alleged based on Defendant’s alleged "full knowledge" of the ’327 Patent. This knowledge is primarily attributed to the employment history of Defendant's Vice President, Mr. Shanmugham, who allegedly worked for Plaintiff at the time the patent issued and had access to confidential information (Compl. ¶¶ 22, 33, 44). The complaint also cites a 2008 paper published by Plaintiff as a source of public knowledge of the patent (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- Infringement of Method Claims: A central issue will be one of evidentiary proof: can Plaintiff demonstrate that Defendant's customers, by using a "skin whitening" product, necessarily perform the specific biological method of "regulating random, intracellular protein cross-linking" as required by Claim 1? This may present a significant hurdle for proving direct infringement by end-users.
- Imputation of Knowledge: The case for willful and indirect infringement appears to hinge on imputing knowledge from a key employee to the defendant corporation. A key question will be whether the alleged past employment of Defendant's Vice President at Plaintiff's company is sufficient to establish corporate knowledge and intent at the time of the alleged infringement.
- Claim Scope and Composition: The dispute will likely involve a critical question of definitional scope: does the claim term "a mixture of tetrahydrocurcuminoids" cover any product containing THCs, or is its scope implicitly limited by the specification to the specific high-performance "cross-regulin" composition described in the patent's preferred embodiments and dependent claims? The answer will likely determine whether the accused "95% Tetrahydrocurcuminoids" product infringes.