DCT

1:23-cv-07483

Kaneka Corp v. Cocrystal Technology Jiaxing Co Ltd

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-07483, E.D.N.Y., 11/16/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendants having committed acts of infringement and transacted business in the Eastern District of New York.
  • Core Dispute: Plaintiff alleges that Defendant’s health supplement, Crystal QH, which contains a form of coenzyme Q10, infringes a patent related to methods for stabilizing this chemical compound.
  • Technical Context: The technology concerns chemical compositions for health supplements, specifically methods to prevent the degradation of reduced coenzyme Q10 (ubiquinol), a popular but unstable antioxidant.
  • Key Procedural History: The complaint alleges that Defendants continued to market and offer the accused product for sale at a trade show after the initial complaint in this action was filed and served.

Case Timeline

Date Event
2006-04-28 U.S. Patent No. 7,829,080 Priority Date
2007 Plaintiff Kaneka began manufacturing and selling ubiquinol in the United States
2010-11-09 U.S. Patent No. 7,829,080 Issued
2022-07 Defendants offered to sell the Accused Product to Tishcon Corporation in New York
2022-10-06 Plaintiff conducted its first analysis of samples of the Accused Product
2023-04 Defendants attended the Supply Side East tradeshow and offered the Accused Product for sale
2023-06-12 Plaintiff conducted its second analysis of samples of the Accused Product
2023-07-11 Defendants advertised the Accused Product in an electronic newsletter
2023-10-05 Plaintiff filed the original complaint in this action
2023-10-23 Defendants attended the Supply Side West trade show after the original complaint was filed
2023-11-16 First Amended 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 (’080 Patent).

  • The Invention Explained:

    • Problem Addressed: The patent addresses the instability of reduced coenzyme Q10 (ubiquinol), which is easily oxidized by molecular oxygen into oxidized coenzyme Q10 (ubiquinone) (’080 Patent, col. 1:23-28). This degradation poses quality problems for products like health supplements, and prior stabilization methods were either complex or involved adding reducing agents that could create "highly noxious" by-products (’080 Patent, col. 2:13-22).
    • The Patented Solution: The invention claims to stabilize reduced coenzyme Q10 by creating a composition that includes the co-presence of its own chemical analogs, specifically reduced coenzyme Q9 and/or reduced coenzyme Q11 (’080 Patent, Abstract; col. 2:36-42). This approach allegedly protects the reduced coenzyme Q10 from oxidation without requiring the addition of other potentially unsafe reducing agents (’080 Patent, col. 2:42-49).
    • Technical Importance: This solution provides a method for maintaining the stability and safety of reduced coenzyme Q10, a compound with greater bioavailability than its oxidized form, for use in foods, supplements, and pharmaceuticals (’080 Patent, col. 1:29-34; Compl. ¶12).

  • Key Claims at a Glance:

    • The complaint asserts independent claims 5 and 15 (’080 Patent, Compl. ¶26).
    • Independent Claim 5 requires:
      • A reduced coenzyme Q10-containing composition
      • Comprising reduced coenzyme Q10
      • And comprising one or both of: (a) 1.5 wt % to 99 wt % of reduced coenzyme Q9 relative to the reduced coenzyme Q10, and (b) reduced coenzyme Q11
      • Wherein at least 0.01 wt % of reduced coenzyme Q10 is in the composition
      • And wherein the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is at least 90 wt %
    • Independent Claim 15 requires:
      • A method for producing a reduced coenzyme Q10-containing composition
      • Comprising providing a composition with oxidized coenzyme Q10 and one or both of oxidized coenzyme Q9 and oxidized coenzyme Q11
      • Then reducing the oxidized forms of coenzymes Q10, Q9, and/or Q11 to prepare the final composition
      • Wherein the final composition meets the same component and proportion limitations as claim 5

III. The Accused Instrumentality

  • Product Identification: The accused product is “Crystal QH,” a health supplement described as containing reduced coenzyme Q10 (ubiquinol) (Compl. ¶2).
  • Functionality and Market Context: The complaint alleges Crystal QH is a powder supplement that Defendants market as a direct competitor to Plaintiff’s ubiquinol products (Compl. ¶23). Marketing materials included in the complaint describe the product as having "Best-In-Class Bioavailability & Stability" (Compl. p. 8). The complaint further alleges that Defendants offered the product for sale to Tishcon Corporation, a New York-based company, for between $400 and $600 per kilogram (Compl. ¶¶17, 20). The complaint includes a photograph of sample packets provided to Tishcon, labeled "Coenzyme Q10 (reduced form)" (Compl. p. 6).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,829,080 Infringement Allegations

Claim Element (from Independent Claim 5) Alleged Infringing Functionality Complaint Citation Patent Citation
A reduced coenzyme Q10-containing composition... The Accused Product, Crystal QH, is alleged to be a reduced coenzyme Q10-containing composition. ¶27 col. 15:55-56
comprising reduced coenzyme Q10... Plaintiff's lab analysis allegedly determined the Accused Product contained 86.2% and 86.5% reduced coenzyme Q10 in two separate tests. ¶¶19, 21 col. 15:56-57
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... Plaintiff's analysis allegedly determined the Accused Product "contained both reduced coenzyme Q9 and reduced coenzyme Q11." ¶¶19, 21 col. 15:57-62
wherein not less than 0.01 wt % of reduced coenzyme Q10 is contained in the composition... Plaintiff's analysis allegedly found the composition contained over 86% reduced coenzyme Q10, exceeding the 0.01 wt % threshold. ¶¶19, 21 col. 16:1-3
and wherein the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %. Plaintiff's analysis allegedly found this proportion to be 93.1% and 95.8% in two separate tests, exceeding the 90 wt % threshold. ¶¶19, 21 col. 16:4-7
  • Identified Points of Contention:
    • Evidentiary Questions: The infringement allegations for claim 5 rest entirely on Plaintiff’s own lab analyses of product samples (Compl. ¶¶19, 21). A central question will be whether discovery and independent testing confirm the presence and, critically, the specific weight percentages of reduced coenzymes Q9 and Q11 required by the claim. The complaint states the product "contained both" Q9 and Q11 but does not provide the specific weight percentage for Q9 needed to assess infringement of the "not less than 1.5 wt %" limitation (Compl. ¶19).
    • Method Claim Proof: The complaint alleges infringement of method claim 15 but provides no specific factual allegations regarding Defendants' manufacturing process (Compl. ¶26). A key question for the court will be whether Plaintiff can produce evidence that Defendants' method involves the specific steps of providing oxidized precursors and then performing a reduction reaction as required by the claim.

V. Key Claim Terms for Construction

  • The Term: "relative to reduced coenzyme Q10"
  • Context and Importance: This term, appearing in the limitation "not less than 1.5 wt % ... of reduced coenzyme Q9 relative to reduced coenzyme Q10," defines the calculation method for a critical compositional threshold. The interpretation of this ratio will be central to determining infringement, as the complaint does not provide the underlying data from its analysis. Practitioners may focus on this term because its precise mathematical meaning will determine whether the accused product's alleged Q9 content meets the claim's floor.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent frequently uses the phrase "relative to reduced coenzyme Q10" without providing a specific calculation formula in the specification, which may suggest to a fact-finder that it should be given its plain and ordinary meaning as a simple weight ratio (e.g., wt. of Q9 / wt. of Q10) (’080 Patent, col. 4:56-59; col. 5:29-33).
    • Evidence for a Narrower Interpretation: The patent claims and specification consistently distinguish between amounts "relative to reduced coenzyme Q10" (for the Q9 component) and proportions "relative to the total amount of coenzyme Q10" (for the Q10 purity) (’080 Patent, Claim 5). A party could argue this deliberate distinction implies a specific technical meaning for each phrase that must be strictly applied.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, asserting Defendants knowingly encouraged at least one U.S. customer, Tishcon, to "make, use, sell or offer to sell the Accused Product" (Compl. ¶32). It also alleges contributory infringement, stating Defendants offered to sell components that are a material part of the invention and not staple articles of commerce (Compl. ¶24).
  • Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges Defendants knew of Plaintiff’s patent portfolio, as evidenced by marketing materials comparing the Accused Product to "the current ubiquinol market leader" (Compl. ¶¶22, 29). It further alleges that Defendants continued to offer the Accused Product for sale at a trade show after receiving the complaint, which it characterizes as willful conduct (Compl. ¶¶23, 28).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of evidentiary proof: will independent testing confirm that the accused Crystal QH product contains not only reduced coenzyme Q9, but contains it at a concentration of "not less than 1.5 wt % relative to reduced coenzyme Q10," as required by claim 5? The complaint's infringement theory hinges on its own testing, the details of which are not provided.
  • A second key question will be one of process versus product: while the complaint provides compositional data to support infringement of the product claim (Claim 5), it offers no factual basis to allege that Defendants use the specific manufacturing method recited in Claim 15. The case may therefore focus heavily on whether Plaintiff can obtain discovery sufficient to prove the steps of Defendants' manufacturing process align with the patented method.