DCT
1:23-cv-07483
Kaneka Corp v. Cocrystal Technology Jiaxing Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kaneka Corporation (Japan)
- Defendant: Cocrystal Technology (Jiaxing) Co., Ltd. (China) and Cocrystal Health Industry (Zhejiang) Co., Ltd. (China)
- Plaintiff’s Counsel: Carter Ledyard & Milburn LLP
- Case Identification: 1:23-cv-07483, E.D.N.Y., 10/05/2023
- Venue Allegations: Venue is asserted based on Defendants allegedly committing acts of infringement and transacting business within the Eastern District of New York.
- Core Dispute: Plaintiff alleges that Defendants’ health supplement containing reduced coenzyme Q10 infringes a patent related to methods and compositions for stabilizing the compound.
- Technical Context: The case concerns coenzyme Q10 (CoQ10), a compound used in health supplements, specifically its reduced form (ubiquinol), which is more bioavailable but chemically unstable and prone to oxidation.
- Key Procedural History: The complaint alleges that Plaintiff Kaneka has over thirty-seven U.S. patents on its CoQ10 technology and began manufacturing and selling ubiquinol in the United States in 2007. No prior litigation between the parties or administrative proceedings concerning the patent-in-suit are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2006-04-28 | Earliest Priority Date for U.S. Patent No. 7,829,080 |
| 2007-XX-XX | Plaintiff Kaneka begins manufacturing and selling ubiquinol in the U.S. |
| 2010-11-09 | U.S. Patent No. 7,829,080 Issues |
| 2022-02-21 | Manufacturing date listed on samples of the Accused Product |
| 2022-07-XX | Defendants offer to sell the Accused Product to Tishcon Corporation |
| 2022-10-06 | Plaintiff analyzes samples of the Accused Product |
| 2023-04-XX | Defendants attend Supply Side East tradeshow and offer Accused Product |
| 2023-06-12 | Plaintiff performs a second analysis of samples of the Accused Product |
| 2023-07-11 | Defendants advertise the Accused Product in an electronic newsletter |
| 2023-10-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 7,829,080, "Stabilization Method of Reduced Coenzyme Q10," issued November 9, 2010.
The Invention Explained
- Problem Addressed: The patent addresses the technical challenge that reduced coenzyme Q10 (ubiquinol), while beneficial, is "easily oxidized by molecular oxygen." This instability presents a significant quality problem when processing ubiquinol into products like nutritional supplements, as any exposure to oxygen can degrade the active ingredient into its less bioavailable, oxidized form ('080 Patent, col. 1:24-38). Prior methods to prevent this oxidation were described as potentially unsafe or overly complex ('080 Patent, col. 2:1-22).
- The Patented Solution: The invention provides a method for stabilizing reduced coenzyme Q10 by creating a composition that includes the co-presence of its "analogs," specifically reduced coenzyme Q9 and/or reduced coenzyme Q11 ('080 Patent, Abstract; col. 2:36-49). This combination is asserted to protect the reduced coenzyme Q10 from oxidation without requiring the addition of other reducing agents that could introduce noxious by-products ('080 Patent, col. 2:40-45).
- Technical Importance: This approach provided a way to formulate highly bioavailable ubiquinol into a stable composition suitable for commercial products like foods and supplements, which was a significant hurdle for its widespread use ('080 Patent, col. 1:26-33).
Key Claims at a Glance
- The complaint asserts independent composition claim 5 and independent method claim 15 ('Compl. ¶25).
- Independent Claim 5 recites the following essential elements:
- A reduced coenzyme Q10-containing composition, comprising reduced coenzyme Q10 and one or both of (a) and (b):
- (a) not less than 1.5 wt % to not more than 99 wt % of reduced coenzyme Q9 relative to reduced coenzyme Q10, and
- (b) reduced coenzyme Q11,
- wherein not less than 0.01 wt % of reduced coenzyme Q10 is contained in the composition, and
- wherein the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %.
III. The Accused Instrumentality
Product Identification
- The accused product is a health supplement identified as "Crystal QH" ('Compl. ¶2).
Functionality and Market Context
- Crystal QH is a supplement containing reduced coenzyme Q10 (ubiquinol) ('Compl. ¶2). The complaint alleges that Defendants manufacture and offer this product for sale in the U.S., including through offers made to Tishcon Corporation in New York and marketing at a trade show in New Jersey ('Compl. ¶¶17, 20). Plaintiff alleges that its own analysis of samples of the Accused Product, provided by Defendants, confirms the presence of the claimed chemical components ('Compl. ¶¶19, 21, 26). The complaint includes a photograph of sample packages of the "Coenzyme Q10 (reduced form)" provided by Defendants to Tishcon, which bear the "Cocrystal Technology" name ('Compl. ¶18).
IV. Analysis of Infringement Allegations
'080 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A reduced coenzyme Q10-containing composition, comprising reduced coenzyme Q10... | The Accused Product is alleged to be a health supplement containing reduced coenzyme Q10. | ¶¶2, 19 | col. 11:55-56 |
| ...and one or both of (a) and (b): (a) not less than 1.5 wt % to not more than 99 wt % of reduced coenzyme Q9 relative to reduced coenzyme Q10... | Plaintiff alleges its analysis determined the Accused Product contains both reduced coenzyme Q9 and reduced coenzyme Q11. | ¶¶19, 21 | col. 11:57-60 |
| ...and (b) reduced coenzyme Q11... | Plaintiff's analysis allegedly confirmed the presence of reduced coenzyme Q11 in the Accused Product. | ¶¶19, 21 | col. 11:61 |
| ...wherein not less than 0.01 wt % of reduced coenzyme Q10 is contained in the composition... | Plaintiff's lab analysis allegedly determined the Accused Product contained a composition with 86.2% and 86.5% reduced coenzyme Q10 in two separate tests. | ¶¶19, 21 | col. 11:62-64 |
| ...and wherein the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %. | Plaintiff's lab analysis allegedly determined the proportion of reduced coenzyme Q10 relative to the total amount was 93.1% and 95.8% in two separate tests. | ¶¶19-21, 26 | col. 11:65-col. 12:2 |
- Identified Points of Contention:
- Factual Questions: The core of the infringement dispute will likely be factual, centering on the chemical composition of the Accused Product. A primary question will be whether Defendants’ "Crystal QH" product, as commercially sold or offered for sale, contains reduced coenzyme Q9 and Q11 within the specific weight percentage ranges required by the claims. The complaint relies entirely on Plaintiff's own testing (Compl. Exhibits E, H), raising the question of whether this analysis is accurate and can be replicated by a third-party or through discovery.
- Scope Questions: For method claim 15, which recites a process of "reducing oxidized coenzyme Q10," a key question will be whether the Plaintiff can produce evidence that the Defendants’ manufacturing process actually performs this specific reduction step, as opposed to formulating a product from pre-reduced components.
V. Key Claim Terms for Construction
The Term: "the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10"
Context and Importance: This term is critical because it defines the purity and stability threshold that the composition must meet. The infringement allegation rests on Plaintiff's test results showing the Accused Product exceeds the "not less than 90 wt %" limit. Practitioners may focus on this term because its definition is tied to a specific calculation (reduced CoQ10 divided by the sum of reduced and oxidized CoQ10), which must be proven with chemical evidence.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of potential arguments for a broader interpretation.
- Evidence for a Narrower Interpretation: The specification provides an explicit definition, stating that "the proportion of reduced coenzyme Q10 in the total amount of coenzyme Q10 (i.e., the total amount of reduced coenzyme Q10 and oxidized coenzyme Q10) is not particularly limited" but then provides preferable lower limits, including "not less than 90%" ('080 Patent, col. 4:65-col. 5:9). This language provides a clear basis for the claimed limitation and suggests a specific, narrow chemical meaning.
The Term: "relative to reduced coenzyme Q10"
Context and Importance: This phrase, used to define the amount of reduced coenzyme Q9, establishes a ratio between two components rather than an absolute percentage of the total composition. Infringement requires proving this specific ratio falls between 1.5% and 99%. Practitioners may focus on this term because disputes over ratios can involve complex arguments about measurement methodology and statistical variance.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of potential arguments for a broader interpretation.
- Evidence for a Narrower Interpretation: The specification consistently uses the phrase "relative to reduced coenzyme Q10" when describing the amount of the stabilizing analogs ('080 Patent, col. 2:46; col. 5:33-34). The examples also calculate amounts based on this relative relationship ('080 Patent, col. 13:5-11), reinforcing that the term dictates a specific mathematical comparison between the masses of the two substances.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under Count II. The factual basis includes allegations that Defendants knowingly encourage infringement by providing marketing materials and instructions to potential purchasers like Tishcon ('Compl. ¶8, 30). The complaint also points to a "letter of indemnification" offered to Tishcon as evidence of Defendants' intent to encourage sales of the allegedly infringing product ('Compl. ¶20).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ alleged knowledge of Kaneka's patent portfolio ('Compl. ¶27). This knowledge is inferred from Defendants’ marketing materials that allegedly compare the Accused Product to the "current ubiquinol market leader" (implying Kaneka) and correspondence with Tishcon ('Compl. ¶¶22, 27). These allegations suggest pre-suit knowledge of the patent or willful blindness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can Plaintiff’s internal laboratory analyses of a limited number of product samples be sufficiently robust and reproducible to prove, by a preponderance of the evidence, that Defendants’ commercial product consistently meets the precise quantitative limitations of the asserted claims?
- A key question for method claim 15 will be one of process evidence: what proof can be adduced to show that Defendants’ manufacturing method for "Crystal QH" involves the specific claimed step of "reducing oxidized coenzyme Q10," as opposed to other methods of production?
- A third core issue will relate to intent: for the claims of willful and induced infringement, the question will be whether Defendants’ alleged knowledge of Kaneka's general "patent portfolio" and market position is sufficient to establish the specific intent to infringe the ’080 Patent, particularly when weighed against other evidence such as the offer of indemnification.