The firms were accused of infringing NAI’s US patent #8,067,381 covering its CarnoSyn beta-alanine product in lawsuits filed in Texas earlier this year along with DNP International, Woodbolt Distribution, Vitaquest International (doing business as Garden State Nutritionals) and F.H.G. Corporation (doing business as Integrity Nutraceuticals).
NAI claims that the only licensed distributor of its CarnoSyn beta-alanine product is the distributor Compound Solutions, Inc, but said neither defendant had purchased beta-alanine from Compound Solutions.
The settlement
Under the terms of the settlement agreement with BPI and Image, both will purchase CarnoSyn beta-alanine from Compound Solutions pursuant to a separate supply agreement between the parties and will receive a license from NAI to its IP rights regarding CarnoSyn.
NAI did not say whether Woodbolt et al and DNP – which recently insisted NAI’s ‘381 patent was invalid and predicted it would be “ultimately be vindicated” by the courts - were also discussing a settlement.
NAI chief executive Mark LeDoux said: “We look forward to partnering with these prominent brands who chose to respect NAI's extensive beta-alanine patent rights in return for a long-term business solution to exclusively use NAI's CarnoSyn beta-alanine in their products.”
Beta-alanine. The ‘381 patent
According to Patton Boggs partner Kevin Bell, the ‘381 patent, entitled ‘Methods and compositions for increasing the anaerobic working capacity in tissues’, “generally covers any human dietary supplement containing the amino acid beta-alanine”.
Beta-alanine is the rate-limiting precursor of carnosine, which is claimed to decrease fatigue in athletes.