DCT
2:23-cv-01385
Eight IP LLC v. Element Nutrition
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Eight IP, LLC (Delaware)
- Defendant: Element Nutrition, Inc. (Ontario, Canada), Canaccord Genuity Corp. (Ontario, Canada), and Stuart Lowther (Individual)
- Plaintiff’s Counsel: Price, Parkinson & Kerr PLLC
- Case Identification: 2:23-cv-01385, D. Nev., 09/06/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant Element’s prior consent to jurisdiction in a sublicense agreement and because infringement allegedly occurred in the district.
- Core Dispute: Plaintiff, an exclusive licensee, alleges that its former sublicensee, Defendant Element Nutrition, continued to sell products embodying a patented amino acid formulation after Plaintiff terminated the sublicense agreement for non-payment of royalties.
- Technical Context: The technology relates to nutritional compositions, specifically amino acid supplements formulated to improve muscle recovery, particularly after surgery or trauma.
- Key Procedural History: The central procedural event is Plaintiff’s termination of two sublicense agreements with Defendant Element in May 2023 due to Element’s alleged failure to pay royalties since the first quarter of 2022. The complaint alleges that Element was aware of the termination but continued to sell the products, which are marked with the patent number, thereby transitioning from a licensee to an alleged infringer.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-18 | U.S. Patent No. 9,364,463 Priority Date |
| 2016-06-14 | U.S. Patent No. 9,364,463 Issued |
| 2020-10-27 | Plaintiff and Defendant Element enter first sublicense agreement |
| 2021-12-14 | Plaintiff and Defendant Element enter second sublicense agreement |
| 2022-01-01 | Approximate start of Defendant Element’s alleged non-payment of royalties |
| 2023-05-26 | Plaintiff’s license termination notice delivered to Defendant Element |
| 2023-07-14 | Defendant Element issues press release on funding and product sales |
| 2023-09-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,364,463 - "Use of Amino Acid Supplementation for Improved Muscle Recovery"
- Issued: June 14, 2016
The Invention Explained
- Problem Addressed: The patent addresses the problem of muscle atrophy and the associated morbidity and mortality in older adults following major muscle tissue damage from events like trauma or reconstructive surgery (’463 Patent, col. 1:26-34). The patent notes that conventional nutritional management, such as high-protein diets, has proven "largely unconvincing" in addressing this specific metabolic stress response (’463 Patent, col. 1:47-50).
- The Patented Solution: The invention is a specific formulation of essential amino acids (EAA) and arginine designed to optimally stimulate muscle recovery (’463 Patent, Abstract). The formulation is characterized by particular weight-percentage ranges of its constituent amino acids, with a notably high concentration of leucine, which is disclosed as effective in stimulating muscle strength and function recovery, even in older adults where such recovery is typically problematic (’463 Patent, col. 2:14-25).
- Technical Importance: The claimed formulation purports to offer a more effective, targeted nutritional intervention for muscle recovery than general protein supplementation, addressing a specific metabolic need during rehabilitation from trauma or intense physical exercise (’463 Patent, col. 2:19-25).
Key Claims at a Glance
- The complaint does not specify which claims are asserted, but Independent Claim 1 is representative of the core invention.
- Independent Claim 1: A method for improving recovery of muscle strength, comprising:
- administering to a subject a composition
- comprising specific weight-by-weight (w/w %) concentrations of histidine (about 1-2%), isoleucine (about 9-11%), leucine (about 35-38%), lysine (about 14-17%), methionine (about 2-4%), phenylalanine (about 5-7%), threonine (about 8-9%), valine (about 9-11%), tryptophan (about 0.01-0.2%), and arginine (about 8-11%).
- The complaint does not explicitly reserve the right to assert other claims, but this is standard practice.
III. The Accused Instrumentality
Product Identification
The accused products are nutritional supplements sold under the names "Rejuvenate" and "Promino" (the latter under the "JaktRX" brand) (Compl. ¶¶ 19-20).
Functionality and Market Context
- The "Rejuvenate" and "Promino" products are marketed as supplements for muscle recovery, with advertisements claiming they are "clinically proven to support muscle recovery" or are a "patented muscle activator" (Compl. ¶¶ 19-20).
- The complaint alleges that these products "contain[] the amino acid blend identified in the 463 Patent" and that Defendant Element identifies the ’463 Patent on the product packaging and on its websites (Compl. ¶¶ 19, 20, 22, 36).
- These products are allegedly sold through various retailers, including Amazon, CVS, and Walgreens, in both adult nutrition and sports nutrition channels of trade (Compl. ¶¶ 19, 20, 23).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,364,463 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for improving recovery of muscle strength, the method comprising administering to a subject a composition... | Defendant Element sells the Rejuvenate and Promino products, which are marketed as "muscle recovery products." | ¶¶ 19, 20, 53 | col. 11:59-61 |
| ...comprising the following concentrations of amino acids in terms of w/w %: about 1 to 2% of histidine... [and other specified amino acids and ranges]... | The accused Rejuvenate and Promino products are alleged to "contain the amino acid blend identified in the 463 Patent." | ¶¶ 19, 20, 53 | col. 11:61-68 |
| ...wherein recovery of muscle strength of the subject is improved relative to recovery of muscle strength in a subject not administered said amino acid composition. | The accused products are advertised as clinically proven to support muscle recovery and as patented muscle activators that build muscle and speed recovery. | ¶¶ 19, 20 | col. 13:1-4 |
- Identified Points of Contention:
- Technical Question: A primary evidentiary question for the court may be whether Plaintiff can produce sufficient evidence to demonstrate that the precise formulation of the "Rejuvenate" and "Promino" products sold by Defendant Element after the alleged license termination date meets the specific weight-percentage limitations recited in the asserted claims. The complaint alleges the products contain the patented blend, which Defendant will have to admit or deny (Compl. ¶53).
- Legal Question: The central dispute appears to be contractual: was the sublicense agreement validly terminated? If the termination was not effective, Defendant Element would have a license defense to the infringement claim. The patent infringement claim is predicated on the allegation that Element lost its rights to practice the patent on May 26, 2023 (Compl. ¶52).
V. Key Claim Terms for Construction
- The Term: "about"
- Context and Importance: This term modifies every numerical range in the asserted independent claim (e.g., "about 35 to 38% of leucine") (’463 Patent, col. 11:61-68). The interpretation of "about" will define the literal scope of the claimed formulation. Practitioners may focus on this term because its construction could determine whether a product whose formulation is close to, but not strictly within, the recited numerical ranges is infringing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent drafters chose to use the word "about," which may suggest to the court that they did not intend for the ranges to be read with mathematical precision and that some degree of variability around the stated endpoints is permissible.
- Evidence for a Narrower Interpretation: The patent provides an exemplary embodiment with a highly specific formulation (e.g., Leucine at exactly 36.4% w/w) (’463 Patent, Table 3, col. 10). A party could argue that "about" should be interpreted narrowly in light of this specific example, limiting the scope of the ranges to values that are functionally and statistically equivalent to the disclosed embodiment.
VI. Other Allegations
- Indirect Infringement:
- Inducement: The complaint alleges that Defendant Stuart Lowther, Element’s CEO, actively induced infringement by causing Element to continue marketing and selling the accused products despite his awareness that the sublicense agreements had been terminated (Compl. ¶¶ 64, 66-67).
- Contributory Infringement: The complaint alleges that Defendant Canaccord Genuity Corp. contributorily infringed by assisting Element in raising funds. The complaint alleges Canaccord knew or should have known that its assistance would lead to continued infringement because it was aware of the sublicenses and did not conduct due diligence to confirm their status (Compl. ¶¶ 80, 82, 85).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' knowledge of the ’463 Patent through the now-terminated sublicense agreements and their continued sales after receiving a written termination notice (Compl. ¶¶ 29, 30, 35). The fact that Element allegedly marks its products with the patent number provides a strong basis for alleging knowledge (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may depend on the court's findings on three central questions:
- A dispositive threshold question will be one of contract law: Was the sublicense agreement between Plaintiff and Defendant Element validly terminated according to its terms? An effective termination is a prerequisite for the patent infringement claim.
- An evidentiary question will be central to the infringement analysis itself: Can the Plaintiff prove, through discovery or other means, that the chemical composition of the accused products sold after the termination date falls within the specific weight-percentage ranges required by the patent's claims?
- Finally, if infringement is found, a key question will relate to culpability and damages: Did the Defendants' actions, particularly given the prior licensing relationship and express notice of termination, constitute willful infringement, potentially justifying enhanced damages and attorneys' fees?