A proposed settlement of the suit against Indian firm Prakruti Products Private Limited was submitted to the United States District Court in New Jersey on February 18, 2015. The lawsuit, filed in the US District Court, New Jersey on July 30, 2014, alleged Prakruti was selling products that infringed upon Sabinsa’s Curcumin C3 Complex US Patent 5,861,415, which protects compositions, methods of use, and methods of extraction of a nutritional supplement in the US.
The suit was one of four that Sabinsa filed against four suppliers that were manufacturing ingredients and selling them into the US market that violated the patent, said Sabinsa marketing director Shaheen Majeed. The other three suits are still ongoing.
Unwinding the supply web
The launch of that patent defense effort is noteworthy in several respects, Majeed told NutraIngredients-USA. For one thing, the cases seek to unwind the web of global supply and how patents apply to ingredients that have complicated histories. Legal experts had given Sabinsa little hope of prevailing in taking on—under the aegis of US patent law—companies doing business in other countries.
“We were told even by our own lawyers that it would be a hell of a fight to go after foreign suppliers. But we have been looking at this for the last five years. We have been collecting data and gathering a lot of documentation from all of these infringers. We decided it was time to take on these Indian suppliers,” Majeed told us.
Sabinsa, which is based in New Jersey with operations in Utah and in India, has patents related to Curcumin both in the United States and Europe. In the United States, Sabinsa continues to litigate the willful infringement of the ‘415’ patent by HerbaKraft, Inc., NutriBioLink LLC, and Olive Lifesciences Private Limited. In Germany, Sabinsa continues to litigate a European Curcumin patent infringed by Olive Lifesciences.
Marketers and manufacturers are next up
Another aspect of the effort is that these suits against suppliers are only the tip of the iceberg, Majeed said. Over the years the company had heard from potential customers of their ingredient who were buying infringing versions that the overseas origin of those ingredients meant that the US patent (or in the case of the EU, the European patent) didn’t apply.
“We just finally decided to do something about our standard 95% curcumin ingredient that a lot of people were copying," said Majeed. "These are just the first four companies we decided to go after. The next step is to go after manufacturing and marketing companies. There are marketing companies that think they are not infringing because they are taking on supply from a foreign company."
And Majeed said the patent defense effort is a reassurance to its customers that they can rely on the market differentiation that Sabinsa’s patents on C3 provide.
Majeed said that other companies can market curcumin ingredients in the US and the EU. But if they intend to adhere to patent law they may not sell copy cat versions of Sabinsa’s unique composition ratio, nor market it for its antioxidant use, nor use the Ethyl Acetate extraction method developed by Sabinsa and outlined in Sabinsa’s patent.