Human Power Of N Co v. ThermoLife Intl LLC

1. Case Identification

• Case #: IPR2022-00819
• Patent #: 8,455,531
• Filed: April 7, 2022
• Petitioner(s): Human Power of N Company
• Patent Owner(s): Thermolife International, LLC
• Challenged Claims: 1, 5-7, 9-11, 13-14, 16-22, 62, 66-67, 70, 74, 77-83, 123-128, 131, 132, and 134-136

2. Patent Overview

• Title: Amino acid compositions
• Brief Description: The ’531 patent relates to solid supplement formulations comprising at least one nitrate salt compound and at least one isolated amino acid compound, where the two compounds are separate from each other. The compositions are intended to enhance athletic performance and vasodilation.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 5-6, 9, 13, 16-22, 62, 66-67, 70, 74, and 77-83 under §102 over Inklaar

• Prior Art Relied Upon: Inklaar (Patent 3,552,978)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Inklaar discloses every limitation of the challenged claims. Inklaar teaches compositions for improving meat quality, which are disclosed as solid powders containing both "amino acids" and "meat curing salts" like sodium nitrate. Petitioner contended this composition meets the claim limitation of a "solid supplement formulation" because Inklaar states its compositions improve the "food value of the meat" and are beneficial for human consumption, thereby supplementing a person's diet. Inklaar's teaching of using "free amino acid" or "pure amino acids" that are "synthetically prepared" meets the "isolated" limitation. Finally, Petitioner asserted that because the amino acids and sodium nitrate are mixed together as distinct ingredients, they meet the limitation that the amino acid is a "separate compound" from the nitrate salt.

Ground 2: Obviousness of Claims 1, 7, 10, 11, 14, 123-128, 131, 132, and 134-136 under §103 over Inklaar in view of Ajinomoto

• Prior Art Relied Upon: Inklaar (Patent 3,552,978) and Ajinomoto (GB 1,089,084)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims requiring specific or "pharmaceutically effective" amounts of nitrate. Petitioner argued that Inklaar teaches the foundational combination of a solid formulation with separate, isolated amino acids and a nitrate salt. Ajinomoto, which also teaches improving meat quality with amino acids and sodium nitrate, provides specific examples of nitrate amounts for this purpose (e.g., 2 grams of sodium nitrate for 1.2 kg of meat). Petitioner contended that these disclosed amounts, when converted, satisfy the claimed minimums (e.g., "at least 30.7 mg nitrate ion") and meet the definition of a "pharmaceutically effective amount" sufficient to increase vasodilation, a known effect of nitrate ingestion.
  • Motivation to Combine: A POSITA looking to implement Inklaar's teaching of using conventional meat curing salts would have looked to analogous art like Ajinomoto to determine a suitable and effective amount of sodium nitrate. Ajinomoto provides an express recipe for a similar purpose (improving meat), motivating a POSITA to use the amounts disclosed therein with Inklaar's composition.
  • Expectation of Success: A POSITA would have had a high expectation of success. Ajinomoto demonstrated that using its specified amount of sodium nitrate successfully cured meat and improved its quality. Therefore, a POSITA would reasonably expect that applying a similar, proven amount of nitrate to Inklaar's composition would successfully achieve the known benefits of meat curing, including color retention.

4. Key Claim Construction Positions

• "Separate": This term was added during reexamination. Petitioner noted the parties in the related litigation agreed to construe it as "different ingredients that are not chemically bonded together." Petitioner argued Inklaar's disclosure of mixing amino acids with sodium nitrate meets this construction.
• "Solid Supplement Formulation": This phrase was also added during reexamination to distinguish prior art involving aqueous solutions. Petitioner argued that a POSITA would understand this to include powders, as disclosed in Inklaar, and that Inklaar’s compositions function as supplements by improving the nutritional value of food for human consumption.
• "Non-Ester Nitrate Compound": Petitioner relied on the district court's construction of this term as "an inorganic nitrate compound." Petitioner argued that the sodium nitrate disclosed in Inklaar is an inorganic nitrate and thus meets this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and §325(d) would be inappropriate. The petition asserted that the primary prior art references, Inklaar and Ajinomoto, are materially different from any art previously considered during prosecution, a prior terminated IPR, or two subsequent reexaminations. Petitioner contended it was not involved in the prior proceedings and did not use them as a "roadmap." Furthermore, Petitioner argued that the Fintiv factors weighed against denial because the trial date in the parallel litigation was uncertain and likely to be moved, and Petitioner stipulated it would not pursue the same invalidity grounds in the district court if the IPR was instituted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-7, 9-11, 13-14, 16-22, 62, 66-67, 70, 74, 77-83, 123-128, 131, 132, and 134-136 of the ’531 patent as unpatentable.