American River Nutrition’s patent infringement lawsuit against BGG will move forward

Photo © iStockphoto.com/KLH49

A patent infringement lawsuit filed by American River Nutrition LLC (ARN; Hadley MA), manufacturer of DeltaGold tocotrienols, is moving forward after a federal court denied the defendants’ motion to dismiss the complaint. ARN’s suit is against a California corporation called Jinke Group USA Inc., which does business under the name Beijing Gingko Group North America (BGG; Irvine, CA), and two affiliated Chinese corporations called Beijing Gingko Group Biological Technology Company, Ltd., and Jiangsu Xixin Vitamin Company, Ltd.

The U.S. District Court, Central District of California, rejected the defendants’ contention that ARN’s patent claims are not patent-eligible because the “patent’s claims are directed to no more than a natural phenomenon devoid of any inventive concept.” On the contrary, Judge Josephine L. Staton found that the patent was directed at the company’s specific extraction method for obtaining the tocotrienol composition. 

“For process claims, it does not usually matter that the end product is patent-ineligible because such claims are directed to better ways of yielding the end product and not to the product itself,” said Judge Staton in her opinion.

Both ARN’s DeltaGold and BGG’s TheraPrimE are tocotrienol products sourced from annatto seed obtained from the Bixa orellana shrub. According to ARN’s claim, “The underlying technology teaches a byproduct solution of Bixa orellana seed components, which is obtained as an oily material after removing the bulk annatto-whereby removal is achieved from aqueous extract or solvent extract of annatto seeds. Tocotrienol components are recovered from the extracts. As such, one of the inventions taught in the Application-in-Suit was a method of forming a tocotrienol composition, which may include volatizing solvent from a byproduct solution of Bixa orellana seed components to form thereby a tocotrienol composition.”

ARN claims that its patented method of volatizing solvent from the byproduct solution of Bixa orellana seed has been infringed upon because BGG’s TheraPrimeE is derived in the same way. BGG, however, disputes the patentability of the ARN’s method, claiming that its methods are well known and conventional and constitute a naturally occurring phenomenon. (Earlier this year, Nutritional Outlook’s editor Jennifer Grebow wrote about the issue of patenting a naturally occurring phenomenon.)

“It was undisputedly well known that the seeds of Bixa orellana contain trace amounts of delta-tocotrienols and gamma-tocotrienols, and that a byproduct solution, still containing the tocotrienol components, is created during the widely used process of extracting annatto colorant from Bixa orellana seeds,” writes BGG in its motion to dismiss ARN’s complaint. “[ARN’s patent] begins with this tocotrienol-containing byproduct solution, and applies the well-known and conventional techniques of volatilization and distillation to obtain tocotrienol compositions. Contrary to ARN’s position, processing of the seeds and the byproduct solution does not alter the underlying compounds.”

In addition to alleging patent infringement, ARN’s complaint also includes breach of contract of a non-disclosure agreement, and trade secret misappropriation, alleging that BGG obtained samples from ARN under contract and then used these samples to design and develop its competing product.