DCT
1:23-cv-06073
Karmagreen LLC v. Super Chill CBD Products
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Karmagreen, LLC (Delaware)
- Defendant: Super Chill CBD Products (New York) and Rajinder S. Singh (New York)
- Plaintiff’s Counsel: Wiley Rein LLP
- Case Identification: 1:23-cv-06073, S.D.N.Y., 07/14/2023
- Venue Allegations: Venue is alleged to be proper as Defendant Super Chill is a New York corporation and both defendants reside or conduct business in the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendants’ dietary supplements infringe six patents related to specific chemical compositions, in addition to claims of trademark and copyright infringement.
- Technical Context: The technology concerns dietary supplements formulated from specific combinations of ingredients, including tianeptine and sakae naa, intended to produce certain physiological effects.
- Key Procedural History: The six patents-in-suit are all continuations of the same U.S. patent application filed in 2017, suggesting a coordinated patenting strategy. The complaint alleges Defendants had knowledge of the patents as of May 22, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-08 | Earliest Priority Date for all Patents-in-Suit |
| 2020-04-21 | U.S. Patent No. 10,624,902 Issues |
| 2022-05-03 | U.S. Patent No. 11,318,147 Issues |
| 2022-05-10 | U.S. Patent No. 11,324,754 Issues |
| 2022-05-10 | U.S. Patent No. 11,324,756 Issues |
| 2022-05-24 | U.S. Patent No. 11,337,986 Issues |
| 2022-05-31 | U.S. Patent No. 11,344,560 Issues |
| 2023-05-22 | Date of Defendants' Alleged Knowledge of Patents-in-Suit |
| 2023-07-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,624,902 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 10,624,902, "Dietary Supplement", issued April 21, 2020.
The Invention Explained
- Problem Addressed: The patent does not explicitly state a technical problem in its background, but the specification describes various active ingredients with known physiological effects, such as the antidepressant and anxiolytic properties of tianeptine and the energizing or mood-lifting properties of sakae naa (Compl., Ex. 1, ’902 Patent, col. 3:11-57). The implicit problem is how to combine these and other substances into a single dietary supplement formulation.
- The Patented Solution: The invention is a method for forming a dietary supplement by creating a specific composition of matter and then packaging it, for example, by filling a capsule (’902 Patent, col. 5:8-16). The patent discloses and claims various combinations of ingredients, including tianeptine (in different forms), sakae naa, kava, CDP Choline, and Alpha GPC, along with excipients like stearate and silicate (’902 Patent, col. 2:4-14).
- Technical Importance: The claimed invention provides specific formulations that combine known active ingredients, potentially for synergistic or multi-faceted effects, in a single dosage form (’902 Patent, col. 1:11-16).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10 (’902 Patent, col. 5:10-16, col. 6:50-64; Compl. ¶64).
- Claim 1 recites a method of forming a dietary supplement comprising the steps of:
- creating a composition of matter comprising a first ingredient of tianeptine sodium, a second ingredient of sakae naa, a third ingredient of stearate, and a fourth ingredient of silicate; and
- filling a capsule with the composition of matter to form the dietary supplement.
- Claim 10 recites a method of forming a dietary supplement comprising the steps of:
- creating a composition of matter comprising a first ingredient of tianeptine sodium, a second ingredient of tianeptine free acid, a third ingredient of cytidine diphosphate-choline (CDP Choline), a fourth ingredient of alpha glycerylphosphorylcholine (Alpha GPC), a fifth ingredient of stearate, and a sixth ingredient of silicate; and
- filling a capsule with the composition of matter to form the dietary supplement.
- The complaint also asserts dependent claim 4 (Compl. ¶64).
U.S. Patent No. 11,324,754 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 11,324,754, "Dietary Supplement", issued May 10, 2022.
The Invention Explained
- Problem Addressed: As with its parent, the ’902 Patent, the ’754 Patent addresses the formulation of dietary supplements from specific combinations of active ingredients to achieve desired physiological benefits (Compl., Ex. 2, ’754 Patent, col. 1:15-21).
- The Patented Solution: The patent claims methods of creating dietary supplements by combining the active ingredients tianeptine and sakae naa, with optional further inclusion of kava, CDP Choline, and Alpha GPC, and providing the resulting composition in a liquid or solid form, such as by filling a container (’754 Patent, col. 6:47-53, col. 8:26-32). The specification discusses the distinct properties and potential benefits of each component (’754 Patent, col. 3:32-4:24).
- Technical Importance: This patent, part of a larger family, claims alternative formulations and methods, thereby broadening the scope of protection around dietary supplements containing tianeptine and related compounds.
Key Claims at a Glance
- The complaint asserts independent claims 1, 27, and 29 (Compl. ¶66).
- Claim 1 recites a method of forming a dietary supplement comprising the steps of:
- creating a composition of matter comprising a first ingredient of tianeptine and a second ingredient of sakae naa; and
- providing the composition of matter in one of a liquid and a solid form as the dietary supplement.
- The complaint also asserts dependent claims 2, 28, and 30 (Compl. ¶66).
U.S. Patent No. 11,337,986 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 11,337,986, "Dietary Supplement", issued May 24, 2022 (Compl. ¶30).
- Technology Synopsis: This patent claims methods of forming a dietary supplement by creating a composition of tianeptine and cytidine diphosphate-choline (CDP Choline), with an optional third ingredient of Alpha GPC, and providing it in a solid or liquid form (’986 Patent, col. 8:2-8). The technology focuses on combining these specific nootropic and antidepressant compounds.
- Asserted Claims: Independent claims 1 and 15 (Compl. ¶68).
- Accused Features: The accused products are alleged to be made by a process that includes creating a composition containing tianeptine, CDP Choline, and Alpha GPC, and filling it into capsules (Compl. ¶69, Table 3).
U.S. Patent No. 11,344,560 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 11,344,560, "Dietary Supplement", issued May 31, 2022 (Compl. ¶33).
- Technology Synopsis: This patent claims methods of forming a dietary supplement by creating a composition of tianeptine and alpha glycerylphosphorylcholine (Alpha GPC) (’560 Patent, col. 8:2-7). The invention covers the combination of these two specific active ingredients.
- Asserted Claims: Independent claim 1 (Compl. ¶70).
- Accused Features: The accused products are alleged to be made by a process that includes creating a composition containing tianeptine and Alpha GPC and filling it into capsules (Compl. ¶71, Table 4).
U.S. Patent No. 11,324,756 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 11,324,756, "Dietary Supplement", issued May 10, 2022 (Compl. ¶36).
- Technology Synopsis: This patent claims methods of forming a dietary supplement from a composition of sakae naa and diphosphate-choline (CDP choline), with optional inclusion of excipients like stearate and silicate (’756 Patent, col. 8:2-8). The technology is directed to combining these two specific ingredients.
- Asserted Claims: Independent claim 1 (Compl. ¶72).
- Accused Features: The accused products are alleged to be made by a process that includes creating a composition containing sakae naa (as combretum quadrangulare leaf), CDP choline, and stearate, and filling it into capsules (Compl. ¶73, Table 5).
U.S. Patent No. 11,318,147 - "Dietary Supplement"
- Patent Identification: U.S. Patent No. 11,318,147, "Dietary Supplement", issued May 3, 2022 (Compl. ¶39).
- Technology Synopsis: This patent claims methods of forming a dietary supplement from a composition of sakae naa and alpha glyceryl phosphoryl choline (Alpha GPC), with optional inclusion of stearate and silicate (’147 Patent, col. 8:2-8). The invention covers the combination of these two specific active ingredients.
- Asserted Claims: Independent claim 1 (Compl. ¶74).
- Accused Features: The accused products are alleged to be made by a process that includes creating a composition containing sakae naa (as combretum quadrangulare leaf), Alpha GPC, and stearate, and filling it into capsules (Compl. ¶75, Table 6).
III. The Accused Instrumentality
Product Identification
- The accused products are dietary supplements named "TIA POWER Gold" and "TIA POWER Silver" (collectively, the "Accused Products") (Compl. ¶53).
Functionality and Market Context
- The Accused Products are dietary supplements sold in capsule form (Compl. ¶¶ 62-63, 65). The complaint includes an image of the TIA POWER Gold and Silver product labels, which list "PROPRIETARY BLEND 700MG" containing "COMBRETUM QUADRANGULAR LEAF," "ALPHA GPC," "CDP CHOLINE," and "TIANEPTINE" (Compl. ¶¶ 62-63). Plaintiff alleges these are "knock-off" products intended to replicate its own "Tianaa" product line (Compl. ¶¶ 2, 53).
IV. Analysis of Infringement Allegations
’902 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of forming a dietary supplement, comprising steps of: | The Accused Products are dietary supplements. | ¶65 | col. 6:50 |
| creating a composition of matter comprising a first ingredient of tianeptine sodium, | Based on the product label listing "tianeptine," Plaintiff alleges on information and belief the presence of tianeptine sodium. | ¶65 | col. 6:52-53 |
| a second ingredient of tianeptine free acid, | Based on the product label listing "tianeptine," Plaintiff alleges on information and belief the presence of tianeptine free acid. | ¶65 | col. 6:54-55 |
| a third ingredient of cytidine diphosphate-choline (CDP Choline), | The product label for the Accused Products indicates they contain CDP Choline. | ¶65 | col. 6:56-58 |
| a fourth ingredient of alpha glycerylphosphorylcholine (Alpha GPC), | The product label for the Accused Products indicates they contain Alpha GPC. | ¶65 | col. 6:59-61 |
| a fifth ingredient of stearate, | The product label for the Accused Products indicates they contain stearate. | ¶65 | col. 6:62-63 |
| and a sixth ingredient of silicate; | Based on information and belief, the Accused Products are alleged to contain silicate. | ¶65 | col. 6:62-63 |
| and filling a capsule with the composition of matter to form the dietary supplement. | The Accused Products are sold in capsules containing the composition. | ¶65 | col. 6:64-66 |
’754 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of forming a dietary supplement, comprising steps of: | The Accused Products are dietary supplements. | ¶67 | col. 6:47 |
| creating a composition of matter comprising a first ingredient of tianeptine and | The product label for the Accused Products indicates they contain tianeptine. | ¶67 | col. 6:49-50 |
| a second ingredient of sakae naa; | The product label for the Accused Products indicates they contain "combretum quadrangulare leaf," which the complaint alleges is sakae naa. | ¶67 | col. 6:50-51 |
| and providing the composition of matter in one of a liquid and a solid form as the dietary supplement. | The Accused Products are provided in capsules, which is a solid form. | ¶67 | col. 6:52-53 |
Identified Points of Contention
- Evidentiary Questions: The complaint's infringement allegations for several ingredients, particularly the specific forms of tianeptine (sodium and free acid), are based "on information and belief" (Compl. ¶65). A central question will be whether discovery and chemical analysis of the Accused Products confirm the presence of these specific claimed ingredients, as the product labels themselves only list the generic term "Tianeptine" (Compl. ¶¶ 62-63).
- Scope Questions: The complaint equates "combretum quadrangulare leaf" on the accused label with the claimed ingredient "sakae naa" (Compl. ¶67). While the patent specification appears to support this link (’754 Patent, col. 3:50-52), the defense may still contest whether the ingredient used in the Accused Products falls within the proper construction of "sakae naa."
V. Key Claim Terms for Construction
The Term: "tianeptine" / "tianeptine sodium" / "tianeptine free acid"
- Context and Importance: Several asserted claims require specific forms of tianeptine (e.g., '902 Patent, cl. 10), while others recite the generic term (e.g., '754 Patent, cl. 1). The Accused Product labels list only "tianeptine" (Compl. ¶62-63). The outcome of the case may depend on (1) the construction of the generic term "tianeptine" and whether it is distinct from its specific salt and acid forms, and (2) the plaintiff's ability to prove the presence of the specific forms alleged on "information and belief."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The defense may argue that "tianeptine" is a generic term encompassing all common forms, and that Plaintiff must prove the presence of the specific claimed form.
- Evidence for a Narrower Interpretation: The specifications of the patents-in-suit distinguish between Tianeptine Sodium, Tianeptine Sulfate, and Tianeptine Free Acid, describing their differing properties, such as metabolization rates and hygroscopicity (’902 Patent, col. 3:24-49). This explicit differentiation may support a construction where each term is distinct and not interchangeable, placing a higher evidentiary burden on the Plaintiff for claims reciting specific forms.
The Term: "sakae naa"
- Context and Importance: This ingredient is recited in numerous asserted claims (e.g., ’902 Patent, cl. 1; ’754 Patent, cl. 1). The infringement allegation relies on the Accused Product labels listing "combretum quadrangulare leaf" (Compl. ¶67). Practitioners may focus on this term because if the ingredient in the accused product is found not to be "sakae naa," a key element of many claims would not be met.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term should be interpreted functionally to cover any extract of the Combretum quadrangulare plant that provides the effects described in the patent.
- Evidence for a Narrower Interpretation: The patent specifications explicitly define the term: "Sakae Naa (or Combretum Quadrangulare) is an ingredient derived from leaves of the Combretum Quadrangulare tree" (’902 Patent, col. 3:50-52). This provides a strong basis for directly linking the term to the ingredient listed on the accused labels and may limit arguments about scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants instruct third parties, such as the manufacturer, to make the Accused Products in an infringing manner (Compl. ¶¶ 56, 97). It also alleges contributory infringement on the basis that Defendants sell or supply key ingredients of the claimed compositions, such as tianeptine and sakae naa, knowing them to be especially made or adapted for an infringing use and not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 103-104).
- Willful Infringement: The complaint alleges that Defendants have known of the Patents-in-Suit "since no later than May 22, 2023" and that their continued infringement despite this knowledge is willful (Compl. ¶¶ 60, 76-78).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: can Plaintiff, through chemical analysis during discovery, prove that the Accused Products contain the exact chemical compounds—particularly the specific "tianeptine sodium" and "tianeptine free acid" forms—required by certain asserted claims, when the product labels only disclose the generic term "tianeptine"?
- The case will also present a definitional question: will the court construe the term "sakae naa" as being met by the "combretum quadrangulare leaf" listed on the accused labels? While the patent's own specification provides a direct link, the equivalence of the specific preparations could become a focal point of the technical dispute.
- A third key question relates to contributory infringement: can Plaintiff establish that ingredients like tianeptine and sakae naa are not "staple articles or commodities of commerce suitable for substantial noninfringing use," a necessary showing to sustain that claim?