JDS Therapeutics et. al. v. Church & Dwight | Patent Infringement | Patent

3.

Upon information and belief, Defendant Church & Dwight is a corporation

organized under the laws of Delaware having a principal place of business in Ewing, New Jersey. JURISDICTION AND VENUE 4. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and

1338 because this action arises under the patent laws of the United States, including 35 U.S.C. § 271 et seq. 5. This Court has personal jurisdiction, general and specific, over Church &

Dwight because, among other things, Defendant is registered to do business in New York and is engaged in substantial and not isolated activity within this judicial district by regularly transacting business within this judicial district, regularly selling product within this judicial district, and deriving substantial revenues from sales in this judicial district. Also, Defendant has performed and continues to perform infringing activity within this judicial district. 6. 1400. NATURE OF THE ACTION 7. This civil action for patent infringement arises out of a multi-year relationship Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and

between Nutrition 21, Inc. (“N21”), a predecessor of Plaintiffs, and Supplement Sciences, Inc. (“Supplement Sciences”) and Avid Health, Inc. (“Avid Health”), predecessor entities of Defendant. Over a period of years, Defendant or its predecessor entities (1) purchased Chromax® chromium picolinate product from Plaintiffs and Plaintiffs’ predecessors that it incorporated into some of its Vitafusion product line and (2) received notice of and information on Plaintiffs’ patent portfolio, including the patents asserted in this action. When purchasing Chromax® chromium picolinate product from Plaintiffs and Plaintiffs’ predecessors, Defendant -2NY 75016162

and its predecessor entities were granted a license under and to N21’s patents to sell the particular Chromax® chromium picolinate product purchased from N21 for the uses covered by N21’s patents. 8. Through use of information and materials received from Plaintiffs or Plaintiffs’

predecessors, Defendant and its predecessor entities developed a new formulation for the Vitafusion line of multi-vitamins and dietary supplements which utilized Plaintiffs’ intellectual property. Defendant’s stopped purchasing Chromax® chromium picolinate product from Plaintiffs and Plaintiffs’ predecessors and instead purchased chromium picolinate from an alternative, cheaper supplier that does not include a license under Plaintiffs’ patents and such usage infringes or induces others to infringe Plaintiffs’ patent portfolio, including the Patents-inSuit. THE PATENTS IN SUIT 9. Plaintiffs and Plaintiffs’ predecessors are, inter alia, a supplier of ingredients to

the nutritional and dietary supplement industry and retailer of nutritional and dietary supplements. Plaintiffs’ market segments include glucose metabolism and insulin resistance, appetite control and weight management. In particular, Plaintiffs and their predecessors sell and market a highly refined dietary form of chromium picolinate, under the brand Chromax®, to leading manufacturers. Plaintiffs are small entities (as was their predecessor company N21) having intellectual property as one of their primary assets. 10. Plaintiffs and their predecessor entities conceived and developed their

intellectual property at much expense and effort, and have developed and maintained an extensive patent portfolio to cover formulations comprising chromium picolinate in combination with other compounds, and uses for such formulations.

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11.

For example, the United States Patent and Trademark Office (”USPTO”) duly

and legally issued United States Patent No. 5,948,772 (“the ‘772 patent”), entitled “Chromium Picolinate Compositions and Uses Thereof” on September 7, 1999, to AMBI Inc., formerly known as N21. A true and correct copy of the ‘772 patent is attached as Exhibit A. JDS received by assignment all rights, title, and interest in and to the ‘772 patent, including the right to enforce and collect damages for all past, present and future infringements. By further agreement, Nutrition 21 jointly owns the ‘772 patent with JDS as co-owners, whereby Nutrition 21 and JDS each have an equal and undivided one-half interest in all rights, title, and interest in and to the ‘772 patent, including the right to enforce and collect damages for all past, present and future infringements. 12. Also, the USPTO duly and legally issued United States Patent No. 6,136,317

(“the ‘317 patent”), entitled “Chromium Picolinate Compositions” on October 24, 2000, to AMBI Inc., formerly known as N21. A true and correct copy of the ‘317 patent is attached as Exhibit B. JDS received by assignment all rights, title, and interest in and to the ‘317 patent, including the right to enforce and collect damages for all past, present and future infringements. By further agreement, Nutrition 21 jointly owns the ‘317 patent with JDS as co-owners, whereby Nutrition 21 and JDS each have an equal and undivided one-half interest in all rights, title, and interest in and to the ‘317 patent, including the right to enforce and collect damages for all past, present and future infringements. The ‘317 patent is related to and claims priority to the ‘772 patent. 13. Additionally, the USPTO duly and legally issued United States Patent No.

6,251,889 (“the ‘889 patent”), entitled “Chromium Picolinate Compositions” on June 26, 2001, to AMBI Inc., formerly known as N21. A true and correct copy of the ‘889 patent is attached as

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Exhibit C. JDS received by assignment all rights, title, and interest in and to the ‘889 patent, including the right to enforce and collect damages for all past, present and future infringements. By further agreement, Nutrition 21 jointly owns the ‘889 patent with JDS as co-owners, whereby Nutrition 21 and JDS each have an equal and undivided one-half interest in all rights, title, and interest in and to the ‘889 patent, including the right to enforce and collect damages for all past, present and future infringements. The ‘889 patent is related to and claims priority to the ‘772 patent. 14. And, the USPTO duly and legally issued United States Patent No. 6,143,301

(“the ‘301 patent”), entitled “Chromium Picolinate Compositions and Uses Thereof” on November 7, 2000, to AMBI Inc., formerly known as N21. A true and correct copy of the ‘301 patent is attached as Exhibit D. JDS received by assignment all rights, title, and interest in and to the ‘301 patent, including the right to enforce and collect damages for all past, present and future infringements. By further agreement, Nutrition 21 jointly owns the ‘301 patent with JDS as coowners, whereby Nutrition 21 and JDS each have an equal and undivided one-half interest in all rights, title, and interest in and to the ‘301 patent, including the right to enforce and collect damages for all past, present and future infringements. The ‘301 patent is related to and claims priority to the ‘772 patent. 15. Still further, the USPTO duly and legally issued United States Reissue Patent

No. 39,480 (“the Re ‘480 patent”), entitled “Chromium/Biotin Treatment of Type II Diabetes” on January 23, 2007, to N21. A true and correct copy of the Re ‘480 patent is attached as Exhibit E. The Re ‘480 patent is a reissue of United States Patent No. 5,929,066 (“the ‘066 patent”), the scope of claims 1-10 of the Re ‘480 patent being substantially identical, if not identical, to the scope of claims 1-10 of the ‘066 patent. JDS received by assignment all rights,

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title, and interest in and to the Re ‘480 patent, including the right to enforce and collect damages for all past, present and future infringements. By further agreement, Nutrition 21 jointly owns the Re ‘480 patent with JDS as co-owners, whereby Nutrition 21 and JDS each have an equal and undivided one-half interest in all rights, title, and interest in and to the Re ‘480 patent, including the right to enforce and collect damages for all past, present and future infringements. 16. The ‘772 patent, ’317 patent, ‘889 patent, ‘301 patent, and Re ‘480 patent

(collectively referred to as “the Patents-in-Suit”) relate to compositions comprising chromium picolinate and other compounds, and methods for use thereof. 17. The patents-in-suit are among approximately 20 patents and pending patent

applications owned by Plaintiffs that concern compositions containing chromium and uses thereof. BACKGROUND 18. Defendant is a multi-billion dollar corporation with worldwide sales, facilities

and resources. Defendant makes, markets, offers to sell, sells and distributes, among other products and services, nutritional supplements, dietary supplements and/or multi-vitamins, including nutritional supplements, dietary supplements and/or multi-vitamins under at least the Vitafusion brand, including, but not limited to, Vitafusion Women’s, Vitafusion Men’s, Vitafusion Platinum 50+, Vitafusion MultiVites and Vitafusion MultiVites Sour (collectively the “Vitafusion Products”), which, among other ingredients, include chromium picolinate, ascorbic acid, inositol niacinate and biotin. 19. On information and belief, Defendant and its predecessor entities did not use

chromium picolinate in nutritional supplements and/or multi-vitamins, including their Vitafusion Products, prior to July 2008.

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20.

Upon information and belief, Defendant or its predecessor entities in 2008

sought out a relationship with N21, in part, because of N21’s expertise and intellectual property in nutritional supplements, including their expertise in chromium. 21. Prior to 2008, and from 2008 through 2010, N21 sold Chromax® chromium

picolinate by weight and its price was dependent upon the volume (weight amount) of Chromax chromium picolinate purchased by a customer. N21 sold its Chromax® chromium picolinate according to a business policy and practice that granted its customers a license under N21’s patents to sell Chromax® chromium picolinate for the particular uses covered by its patents, including the Patents-in-Suit. The fee for the license was bundled on an unallocated basis with the price that N21 charges to its customers for the Chromax® chromium picolinate product that N21 sells to them. When a customer purchased Chromax® chromium picolinate from N21 it received a license to use and practice all of the chromium picolinate patents owned by N21, including the Patents-in-Suit. 22. Starting in 2008, and through 2010, Defendant and its predecessor entities were

in regular contact with N21. During this time period N21 dedicated resources to work with Defendant and its predecessor entities, and over the years, a number of Defendant’s and its predecessor entities’ own employees interacted with N21’s staff. 23. On or about July 2008, N21 supplied samples of Chromax® chromium

picolinate to Supplement Sciences for testing purposes. 24. On or about December 15, 2008, N21 and Supplement Sciences entered a

Confidential Disclosure Agreement so that Supplement Sciences could receive confidential information from N21.

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25.

From 2008 through 2010, Supplement Sciences purchased from Plaintiffs and

their predecessors over one (1) million dollars of Chromax® chromium picolinate for use in making Vitafusion multi-vitamins and dietary supplements. Supplement Sciences purchased Plaintiffs’ Chromax® chromium picolinate according to Plaintiffs’ standard business practice and policy of incorporating in its price for Chromax® chromium picolinate a license under N21’s patent portfolio on chromium picolinate, including the Patents-in-Suit. 26. During the course of the business relationship in 2008-2010, Plaintiffs and its

predecessors advised Defendant and its predecessor entities of Plaintiffs’ patent portfolio, including the Patents-in-Suit. 27. In the second half of 2010, and at least by November 22, 2010, Avid Health

and Supplement Sciences advised N21 that Supplement Sciences was planning on no longer purchasing Chromax® chromium picolinate from N21. 28. On or about December 2, 2010, N21 discussed its patent portfolio with Avid

Health and Supplement Sciences, and in addition sent a copy of the Re ‘480 patent and the ‘772 patent, which is the priority application for the ‘317 patent, the ‘889 patent and the ‘302 patent, from the United States Patent Office database to Trisha Olson, Karen Holterhoff and Rick Falconer of Avid Health and/or Supplement Science. On information and belief, in December 2010, Trisha Olson was a purchasing manager for Supplement Sciences, Karen Holterhoff was Chief Operating Officer of Avid Health, and Rick Falconer was Chief Financial Officer of Avid Health. 29. On or about January 18, 2011, after discussions with N21 regarding N21’s

patent portfolio including the Patents-in-Suit, Supplement Sciences confirmed that Supplement Sciences intended to purchase chromium picolinate for use in its Vitafusion line of products from

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an alternative, cheaper supplier notwithstanding that Supplement Sciences had received notice that such use of an alternative chromium picolinate in its Vitafusion multi-vitamin and dietary supplement line of products would constitute infringement of the Patents-in-Suit. Defendant and its predecessor entities refused to continue to purchase chromium picolinate from N21 for its products. 30. On January 27, 2011, N21 again communicated to Supplement Sciences and

Avid Health, including, but not limited to, Trisha Olson, Karen Holterhoff, Rick Falconer and Nathan Gerhardt, that Supplement Sciences and Avid Health would infringe N21’s patents should they proceed to use chromium picolinate from an alternative supplier in their Vitafusion products. On information and belief, Nathan Gerhardt was General Counsel at Avid Health in January 2011. 31. Defendant’s and its predecessor entities purchased and continues to purchase

chromium picolinate from a supplier other than Plaintiffs for use in their Vitafusion Products. The chromium picolinate used in the Vitafusion Products is chromic tripicolinate. In addition, the Vitafusion Products contain inositol niacinate, also referred to as inositol nicotinate. Inositol niacinate comprises an inositol molecule covalently bonded to six (6) nicotinic molecules. On information and belief, the inositol niacinate in the Vitafusion Products is metabolized when orally ingested into inositol and nicotinic acid thereby supplying the body with nicotinic acid. The Vitafusion Products also include ascorbic acid and biotin. 32. On or about November 22, 2011, N21 Acquisition Holding, LLC purchased

certain assets and the Patents-in-Suit from N21, and further retained and employed key employees of N21. N21 Acquisition Holding, LLC later renamed itself JDS.

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33.

As a result of the long discourse and relationship between the parties, as well

as discussions between N21 and Defendant and its predecessor entities, Defendant and its predecessor entities were and are well aware of Plaintiffs’ patent portfolio and the Patents-inSuit. 34. As described in more detail below, Defendant and its predecessor entities

engaged in behavior purposely designed and orchestrated to violate N21’s patent rights. In so doing, Defendant and its predecessor entities willfully and intentionally violated and infringed the patent rights owned by Plaintiffs. As a result of Defendant’s and its predecessor entities’ actions, N21 was severely damaged by Defendant’s and its predecessor entities’ willful and deliberate infringement of the Patents-in-Suit as described in more detail below. 35. On or about October 1, 2012, Dwight & Church purchased Avid Health and its

subsidiary Supplement Sciences for $650 million. 36. As a result of previous litigation, on or about March 8, 2014, Pfizer, Inc.

acknowledged the validity of and took a license under the Patents-in-Suit. COUNT I: INFRINGEMENT OF THE ‘772 PATENT 37. Plaintiffs reallege and incorporate herein by reference the preceding paragraphs

as though fully set forth herein. 38. Defendant and its predecessor entities, among other things, makes, uses, offers

for sale, sells, distributes and/or imports within the United States multi-vitamins and dietary supplements, such as, for example, the Vitafusion Products which contain chromium picolinate and inositol niacinate. In addition, Defendant and its predecessor entities, among other things, have created and distributed suggested instructions for use and have promoted the sale of such Vitafusion Products to end users and customers.

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39.

On information and belief, Defendant directly or through the actions of their

employees, divisions, subsidiaries, and/or predecessors, has infringed and continues to infringe the ‘772 patent directly, indirectly (by inducing infringement by others or contributing to infringement), jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate that embody, or include instructions encouraging the practice of, at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent. 40. On information and belief, Defendant and its predecessor entities have

infringed and continue to infringe the ‘772 patent directly, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate that embody at least claims 1-3, and 6 of the ‘772 patent. 41. On information and belief, end users and consumers take Vitafusion Products

according to its suggested instructions of orally ingesting them. End users and consumers have infringed and continue to infringe at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent directly, jointly, literally and/or by equivalents by using the Vitafusion Products in the United States in a manner that practices at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent. 42. On information and belief, Defendant had and continues to have actual and

constructive knowledge of and is aware of the Patents-in-Suit, including the ‘772 patent. 43. With knowledge of the ‘772 patent and the specific intent to encourage,

promote, instruct, contribute to and induce the infringement of the ‘772 patent, Defendant and its

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predecessor entities did and continue to infringe at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent, indirectly, jointly, literally and/or by equivalents, by, among other things, encouraging, promoting, instructing, teaching, contributing to and inducing end users and customers to infringe at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent by, among other things, (1) making, using, offering for sale, selling, distributing, marketing and importing within the United States nutritional supplements and/or multi-vitamins under the Vitafusion name that contain chromium picolinate and inositol niacinate, and (2) creating and distributing suggested instructions for use and promotional advertising materials that encourage, promote, instruct, teach, contribute to and induce use of these Vitafusion nutritional supplements in a manner that practices at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent. For example, Defendant and its predecessor entities makes, offers for sale, sells and/or imports into the United States the Vitafusion Products, and provide instructions for consumers, and otherwise promotes such products, such that customers and end users orally take and use the Vitafusion Products in a manner that practices at least claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent. 44. On information and belief, Defendant’s nutritional supplements and/or multi-

vitamins, including but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate, are a material part of the method of the ‘772 patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses. 45. At the very least, Defendant and its predecessor entities were willfully blind as

to the existence of the ‘772 patent, and/or willfully blinded themselves to end users direct infringement of the ‘772 patent as a result of use of Vitafusion Products in a manner that follows the methods set forth in the suggested use of the Vitafusion Products, whereby such instructions

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and promotional activities encourage, promote, instruct, and teach methods and use that meet at least the limitations of claims 1-3, 6, 8-11, 14-18 and 21 of the ‘772 patent. 46. On information and belief, Defendant’s and its predecessor entities knew of the

‘772 patent, ignored and/or disregarded that their actions constituted infringement of a valid patent, and acted despite an objectively high likelihood that their actions constituted infringement of the ‘772 patent, and therefore Defendant’s and its predecessor entities’ infringement is and has been willful, wanton, deliberate and without license, thereby rendering this case exceptional within the meaning of 35 U.S.C. §§ 284 and 285. 47. Defendant’s acts have caused and will continue to cause irreparable harm and

injury to Plaintiffs for which Plaintiffs have no adequate remedy at law. 48. Unless preliminarily and permanently enjoined, Defendant has been and will

continue to infringe the ‘772 patent to Plaintiffs’ substantial and irreparable harm. COUNT II: INFRINGEMENT OF THE ‘317 PATENT 49. Plaintiffs reallege and incorporate herein by reference the preceding paragraphs as

though fully set forth herein. 50. Defendant and its predecessor entities, among other things, makes, uses, offers

for sale, sells, distributes and/or imports within the United States multi-vitamins and dietary supplements, such as, for example, the Vitafusion Products which contain chromium picolinate and inositol niacinate. In addition, Defendant and its predecessor entities, among other things, have created and distributed suggested instructions for use and have promoted the sale of such Vitafusion Products to end users and customers. 51. On information and belief, Defendant directly or through the actions of their

employees, divisions, subsidiaries, and/or predecessors, has infringed and continues to infringe the ‘317 patent directly, indirectly (by inducing infringement by others or contributing to -13NY 75016162

infringement), jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate that embody, or include instructions encouraging the practice of, at least claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent. 52. On information and belief, Defendant and its predecessor entities have

infringed and continue to infringe the ‘317 patent directly, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate that embody at least claims 12-14, and 18 of the ‘317 patent. 53. On information and belief, end users and consumers take Vitafusion Products

according to its suggested instructions of orally ingesting them. End users and consumers have infringed and continue to infringe at least claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent directly, jointly, literally and/or by equivalents by using the Vitafusion Products in the United States in a manner that practices at least claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent. 54. On information and belief, Defendant had and continues to have actual and

constructive knowledge of and is aware of the Patents-in-Suit, including the ‘317 patent. 55. With knowledge of the ‘317 patent and the specific intent to encourage,

promote, instruct, contribute to and induce the infringement of the ‘317 patent, Defendant and its predecessor entities did and continue to infringe at least the claims 12-14, 18, 33-35, 37, 42, 49

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and 51 of the ‘317 patent, indirectly, jointly, literally and/or by equivalents, by, among other things, encouraging, promoting, instructing, teaching, contributing to and inducing end users and customers to infringe at least the claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent by, among other things, (1) making, using, offering for sale, selling, distributing, marketing and importing within the United States nutritional supplements and/or multi-vitamins under the Vitafusion name that contains chromium picolinate and inositol niacinate, and (2) creating and distributing suggested instructions for use and promotional advertising materials that encourage, promote, instruct, teach, contribute to and induce use of these Vitafusion nutritional supplements in a manner that practices at least the claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent. For example, Defendant and its predecessor entities makes, offers for sale, sells and/or imports into the United States the Vitafusion Products, and provide instructions for consumers, and otherwise promotes such products, such that customers and end users orally take and use the Vitafusion Products in a manner that practices at least claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent. 56. On information and belief, Defendant’s nutritional supplements and/or multi-

vitamins, including but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate, are a material part of the method of the ‘317 patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses. 57. At the very least, Defendant and its predecessor entities were willfully blind as

to the existence of the ‘317 patent, and/or willfully blinded themselves to end users direct infringement of the ‘317 patent as a result of use of Vitafusion Products in a manner that follows the methods set forth in the suggested use of the Vitafusion Products, whereby such instructions

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and promotional activities encourage, promote, instruct, and teach methods and use that meet at least the limitations of claims 12-14, 18, 33-35, 37, 42, 49 and 51 of the ‘317 patent. 58. On information and belief, Defendant and its predecessor entities knew of the

‘317 patent, ignored and/or disregarded that their actions constituted infringement of a valid patent, and acted despite an objectively high likelihood that their actions constituted infringement of the ‘317 patent, and therefore Defendant’s and its predecessor entities’ infringement is and has been willful, wanton, deliberate and without license, thereby rendering this case exceptional within the meaning of 35 U.S.C. §§ 284 and 285. 59. Defendant’s acts have caused and will continue to cause irreparable harm and

injury to Plaintiffs for which Plaintiffs have no adequate remedy at law. 60. Unless preliminarily and permanently enjoined, Defendant has been and will

continue to infringe the ‘317 patent to Plaintiffs’ substantial and irreparable harm. COUNT III: INFRINGEMENT OF THE ‘889 PATENT 61. Plaintiffs reallege and incorporate herein by reference the preceding paragraphs

as though fully set forth herein. 62. Defendant and its predecessor entities, among other things, makes, uses, offers

for sale, sells, distributes and/or imports within the United States multi-vitamins and dietary supplements, such as for example, the Vitafusion Products which contain chromium picolinate and inositol niacinate. In addition, Defendant and its predecessor entities, among other things, have created and distributed suggested instructions for use and have promoted the sale of such Vitafusion Products to end users and customers. 63. On information and belief, Defendant directly or through the actions of their

employees, divisions, subsidiaries, and/or predecessors, has infringed and continues to infringe the ‘889 patent directly, indirectly (by inducing infringement by others or contributing to -16NY 75016162

infringement), jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate that embody, or include instructions encouraging the practice of, at least claims 9-12 and 15 of the ‘889 patent. 64. On information and belief, Defendant and its predecessor entities have

infringed and continue to infringe claims 9-12 and 15 the ‘889 patent directly, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multivitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate. 65. On information and belief, end users and consumers take Vitafusion Products

according to its suggested instructions of orally ingesting them. End users and consumers have infringed and continue to infringe at least claims 9-12 and 15 of the ‘889 patent directly, jointly, literally and/or by equivalents by using the Vitafusion Products in the United States in a manner that practices at least claims 9-12 and 15 of the ‘889 patent. 66. On information and belief, Defendant had and continues to have actual and

constructive knowledge of and is aware of the Patents-in-Suit, including the ‘889 patent. 67. With knowledge of the ‘889 patent and the specific intent to encourage,

promote, instruct, contribute to and induce the infringement of the ‘889 patent, Defendant and its predecessor entities did and continue to infringe at least claims 9-12 and 15 of the ‘889 patent, indirectly, jointly, literally and/or by equivalents, by, among other things, encouraging, promoting, instructing, teaching, contributing to and inducing end users and customers to

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infringe at least the claims 9-12 and 15 of the ‘889 patent by, among other things, (1) making, using, offering for sale, selling, distributing, marketing and importing within the United States nutritional supplements and/or multi-vitamins under the Vitafusion name that contains chromium picolinate and inositol niacinate, and (2) creating and distributing suggested instructions for use and promotional advertising materials that encourage, promote, instruct, teach, contribute to and induce use of these Vitafusion nutritional supplements in a manner that practices the method of, at least the claims 9-12 and 15 of the ‘889 patent. For example, Defendant and its predecessor entities makes, offers for sale, sells and/or imports into the United States the Vitafusion Products, and provide instructions for consumers, and otherwise promotes such products, such that customers and end users orally take and use the Vitafusion Products in a manner that practices at least the method of claims 9-12 and 15 of the ‘889 patent. 68. On information and belief, Defendant’s nutritional supplements and/or multi-

vitamins, including but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate, are a material part of the method of the ‘889 patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses. 69. At the very least, Defendant and its predecessor entities were willfully blind as

to the existence of the ‘889 patent, and/or willfully blinded themselves to end users direct infringement of the ‘889 patent as a result of use of Vitafusion Products in a manner that follows the methods set forth in the suggested use of the Vitafusion Products, whereby such instructions and promotional activities encourage, promote, instruct, and teach methods that meet at least the limitations of claims 9-12 and 15 of the ‘889 patent. 70. On information and belief, Defendant and its predecessor entities knew of the

‘889 patent, ignored and/or disregarded that their actions constituted infringement of a valid

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patent, and acted despite an objectively high likelihood that their actions constituted infringement of the ‘889 patent, and therefore Defendant’s and its predecessor entities’ infringement is and has been willful, wanton, deliberate and without license, thereby rendering this case exceptional within the meaning of 35 U.S.C. §§ 284 and 285. 71. Defendant’s acts have caused and will continue to cause irreparable harm and

injury to Plaintiffs for which Plaintiffs have no adequate remedy at law. 72. Unless preliminarily and permanently enjoined, Defendant has been and will

continue to infringe the ‘889 patent to Plaintiffs’ substantial and irreparable harm. COUNT IV: INFRINGEMENT OF THE ‘301 PATENT 73. Plaintiffs reallege and incorporate herein by reference the preceding paragraphs as

though fully set forth herein. 74. Defendant and its predecessor entities, among other things, makes, uses, offers

for sale, sells, distributes and/or imports within the United States multi-vitamins and dietary supplements, such as for example, the Vitafusion Products which contain chromium picolinate and ascorbic acid. In addition, Defendant and its predecessor entities, among other things, have created and distributed suggested instructions for use and have promoted the sale of such Vitafusion Products to end users and customers. 75. On information and belief, Defendant directly or through the actions of their

employees, divisions, subsidiaries, and/or predecessors, has infringed and continues to infringe the ‘301 patent directly, indirectly (by inducing infringement by others or contributing to infringement), jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which

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contain chromium picolinate and ascorbic acid that embody, or include instructions encouraging the practice of, at least claims 20-21, 26-27 and 32-33 of the ‘301 patent. 76. On information and belief, Defendant and its predecessor entities have

infringed and continue to infringe the ‘301 patent directly, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Products, which contain chromium picolinate and ascorbic acid that embody at least claims 20-21 of the ‘301 patent. 77. On information and belief, end users and consumers take Vitafusion Products

according to its suggested instructions of orally ingesting them. End users and consumers have infringed and continue to infringe at least claims 20-21, 26-27 and 32-33 of the ‘301 patent directly, jointly, literally and/or by equivalents by using the Vitafusion Products in the United States in a manner that practices at least claims 20-21, 26-27 and 32-33 of the ‘301 patent. 78. On information and belief, Defendant had and continues to have actual and

constructive knowledge of and is aware of the Patents-in-Suit, including the ‘301 patent. 79. With knowledge of the ‘301 patent and the specific intent to encourage,

promote, instruct, contribute to and induce the infringement of the ‘301 patent, Defendant and its predecessor entities did and continue to infringe at least claims 20-21, 26-27 and 32-33 of the ‘301 patent, indirectly, jointly, literally and/or by equivalents, by, among other things, encouraging, promoting, instructing, teaching, contributing to and inducing end users and customers to infringe at least claims 20-21, 26-27 and 32-33 of the ‘301 patent by, among other things, (1) making, using, offering for sale, selling, distributing, marketing and importing within the United States nutritional supplements and/or multi-vitamins under the Vitafusion name that

-20NY 75016162

contains chromium picolinate and inositol niacinate, and (2) creating and distributing suggested instructions for use and promotional advertising materials that encourage, promote, instruct, teach, contribute to and induce use of these Vitafusion nutritional supplements in a manner that practices at least claims 20-21, 26-27 and 32-33 of the ‘301 patent. For example, Defendant and its predecessor entities makes, offers for sale, sells and/or imports into the United States the Vitafusion Products, and provide instructions for consumers, and otherwise promotes such products, such that customers and end users orally take and use the Vitafusion Products in a manner that practices at least claims 20-21, 26-27 and 32-33 of the ‘301 patent. 80. On information and belief, Defendant and its predecessor entities nutritional

supplements and/or multi-vitamins, including but not limited to, the Vitafusion Products, which contain chromium picolinate and inositol niacinate, are a material part of the method of the ‘301 patent and are not staple articles or commodities of commerce suitable for substantial noninfringing uses. 81. At the very least, Defendant and its predecessor entities were willfully blind as

to the existence of the ‘301 patent, and/or willfully blinded themselves to end users direct infringement of the ‘301 patent as a result of use of Vitafusion Products in a manner that follows the methods set forth in the suggested use of the Vitafusion Products, whereby such instructions and promotional activities encourage, promote, instruct, and teach methods and use that meet at least the limitations of claims 20-21, 26-27 and 32-33 of the ‘301 patent. 82. On information and belief, Defendant and its predecessor entities knew of the

‘301 patent, ignored and/or disregarded that their actions constituted infringement of a valid patent, and acted despite an objectively high likelihood that their actions constituted infringement of the ‘301 patent, and therefore Defendant’s and its predecessor entities’

-21NY 75016162

infringement is and has been willful, wanton, deliberate and without license, thereby rendering this case exceptional within the meaning of 35 U.S.C. §§ 284 and 285. 83. Defendant’s acts have caused and will continue to cause irreparable harm and

injury to Plaintiffs for which Plaintiffs have no adequate remedy at law. 84. Unless preliminarily and permanently enjoined, Defendant has been and will

continue to infringe the ‘301 patent to Plaintiffs’ substantial and irreparable harm. COUNT V: INFRINGEMENT OF THE Re ‘480 PATENT 85. Plaintiffs reallege and incorporate herein by reference the preceding paragraphs

as though fully set forth herein. 86. Defendant and its predecessor entities, among other things, makes, uses, offers

for sale, sells, distributes and/or imports within the United States multi-vitamins and dietary supplements, such as for example, the Vitafusion Products which contain chromium picolinate and biotin. In addition, Defendant and its predecessor entities, among other things, have created and distributed suggested instructions for use and have promoted the sale of such Vitafusion Products to end users and customers. 87. On information and belief, Defendant, directly or through the actions of their

employees, divisions, subsidiaries, and/or predecessors, has infringed and continues to infringe the Re ‘480 patent directly, indirectly (by inducing infringement by others or contributing to infringement), jointly, literally and/or equivalently, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale, and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, the Vitafusion Women’s vitamins which contain chromium picolinate and biotin that embody, and include instructions encouraging the practice of, at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent, and Vitafusion Men’s vitamins and Vitafusion Platinum 50+ vitamins which -22NY 75016162

contain chromium picolinate and biotin, and include instructions encouraging the practice of at least claims 1, 4-7, and 11 of the Re ‘480 patent. 88. On information and belief, Defendant and its predecessor entities have

infringed and continue to infringe the Re ‘480 patent directly, jointly, literally and/or equivalently, by, among other things, making, using, selling, offering for sale and/or importing into the United States, now and in the past, nutritional supplements and/or multi-vitamins, including, but not limited to, Vitafusion Woman’s vitamins, which contain chromium picolinate and biotin and embody at least claim 10 of the Re ‘480 patent. 89. Upon information and belief, end users and consumers take Vitafusion

Women’s vitamins, Vitafusion Men’s vitamins and Vitafusion Platinum 50+ vitamins according to its suggested instructions of orally ingesting them. End users and customers have infringed and continue to infringe at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent directly, jointly, literally and/or by equivalents by, among other things, orally taking and using the Vitafusion Women’s vitamins in a manner that practices at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent, and orally taking and using the Vitafusion Men’s vitamins and Vitafusion Platinum 50+ vitamins in a manner that practices at least claims 1, 4-7, and 11 of the Re ‘480 patent. 90. On information and belief, Defendant and its predecessor entities have and

continue to have actual and constructive knowledge of and is aware of the Patents-in-Suit, including the Re ‘480 patent. 91. With knowledge of the Re ‘480 patent and the specific intent to encourage,

promote, instruct, contribute to and induce the infringement of the Re ‘480 patent, Defendant and its predecessor entities did and continue to infringe at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent, indirectly, jointly, literally and/or by equivalents, by, among other things,

-23NY 75016162

encouraging, promoting, instructing, teaching, contributing to and inducing end users and customers to infringe at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent by, among other things, (1) making, using, offering for sale, selling, distributing, marketing and importing within the United States nutritional supplements and/or multi-vitamins under the Vitafusion name that contains chromium picolinate and biotin, and (2) creating and distributing suggested instructions for use and promotional advertising materials that encourage, promote, instruct, teach, contribute to and induce use of these Vitafusion nutritional supplements in a manner that practices at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent. For example, Defendant and its predecessor entities makes, offers for sale, sells and/or imports into the United States the Vitafusion Women’s, Vitafusion Men’s and Vitafusion Platinum 50+ vitamins, and provide instructions for consumers, and otherwise promotes such products, such that customers and end users orally take and use these Vitafusion vitamins in a manner that practices at least claims 1, 4-7, 10 and 11 of the Re ‘480 patent. 92. On information and belief, Defendant’s nutritional supplements and/or multi-

vitamins, including but not limited to, the Vitafusion Products, which contain chromium picolinate and biotin, are a material part of the method of the Re ‘480 patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses. 93. At the very least, Defendant and its predecessor entities were willfully blind as

to the existence of the Re ‘480 patent, and/or willfully blinded themselves to end users direct infringement of the Re ‘480 patent as a result of use of Vitafusion products in a manner that follows the methods set forth in the suggested use of the Vitafusion products, whereby such instructions and promotional activities encourage, promote, instruct, and teach methods that meet at least the limitations of claims 1, 4-7, 10 and 11 of the Re ‘480 patent.

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94.

On information and belief, Defendant’s nutritional supplements and/or multi-

vitamins, including but not limited to the Vitafusion Women’s vitamins, Vitafusion Men’s vitamins and Vitafusion Platinum 50+ vitamins, which contain chromium picolinate and biotin, are a material part of the method of the Re ‘480 patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses. 95. On information and belief, Defendant and its predecessor entities knew of the

Re ‘480 patent, ignored and/or disregarded that their actions constituted infringement of a valid patent, and acted despite an objectively high likelihood that their actions constituted infringement of the Re ‘480 patent, and therefore Defendant’s and its predecessor entities’ infringement is and has been willful, wanton, deliberate and without license, thereby rendering this case exceptional within the meaning of 35 U.S.C. §§ 284 and 285. 96. Defendant’s acts have caused and will continue to cause irreparable harm and

injury to Plaintiffs for which Plaintiffs have no adequate remedy at law. 97. Unless preliminarily and permanently enjoined, Defendant has been and will

continue to infringe the Re ‘480 patent to Plaintiffs’ substantial and irreparable harm. DAMAGES AND RELIEF 98. Defendant’s infringement of the Patents-in-Suit has caused Plaintiffs

irreparable harm for which there is no adequate remedy at law. 99. Furthermore, as a consequence of Defendant’s infringement of the Patents-in-

Suit, Plaintiffs have suffered damages in an amount not yet determined, and which will be determined at trial, and that a minimum Plaintiffs are entitled to a reasonable royalty. 100. This is an exceptional case as that term is used in 35 U.S.C. § 285.

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PRAYER FOR RELIEF WHEREFORE, Plaintiffs respectfully requests that the Court enter judgment against Defendants: a) Determining that Defendant has infringed and continues to infringe one or more claims of the ‘772 patent; b) Determining that Defendant has infringed and continues to infringe one or more claims of the ‘317 patent; c) Determining that Defendant has infringed and continues to infringe one or more claims of the ‘301 patent; d) Determining that Defendant has infringed and continues to infringe one or more claims of the ‘889 patent; e) Determining that Defendant has infringed and continues to infringe one or more claims of the Re ‘480 patent; f) Permanently enjoining Defendant, its respective officers, agents, servants, directors, employees and attorneys, and all persons acting in concert or participation with it, directly or indirectly, or any of them who receive actual notice of the judgment, from further infringing the Patents-in-Suit, including enjoining the sale of Vitafusion Products; g) Ordering Defendant to recall all infringing products not yet sold to an end user, and further requiring Defendant to publicize such recall; h) Ordering Defendant to account for and pay to Plaintiffs all past, present and future damages suffered by Plaintiffs as a consequence of Defendant’s infringement of the Patentsin-Suit, together with interest and costs as fixed by the Court;

-26NY 75016162

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