Law firm wins major victory for citrulline case

Law firm wins major victory for citrulline case

Lawyer says this ruling sends a clear message that defending against meritless patent infringement claims may be the better approach over settling.

Patent attorney William R. Trueba, Jr., a founding member of the intellectual property law firm of Espinosa | Trueba PL, argued a motion for summary judgment on behalf of a joint defense group before a California federal judge, obtaining a ruling that invalidated all asserted claims of two nutritional supplement patents by a non-practicing entity (NPE).

“This ruling sends a clear message that defending against meritless patent infringement claims may be the better approach over settling,” said Mr. Trueba. “This is a major victory for the client and it illustrates the positive risk/benefit analysis between settling and defending on the merits when you know that the patents should never have been granted in the first place.” Late in 2013, the U.S. House of Representatives passed a bill to curb infringement lawsuits by NPEs and the Senate was also considering additional legislation earlier this year.

On June 13, 2014, the Honorable Judge S. James Otero of the United States District Court for the Central District of California ruled from the bench memorializing his decision. This decision strikes a huge setback against the Tawnsaura Group, a well-known California NPE who filed suit in mid-2012 against over 85 defendants that sell nutritional supplements nationwide. Judge Otero has taken a strong interest in patent infringement cases and is a founding member of the Judge Michel Intellectual Property American Inn of Court and is a Central District Patent Pilot Judge. Judge Otero has sat by designation on the United States Courts of Appeals for the Federal Circuit, the appellate court that hears all patent appeals. He has also been a panel speaker for the Federal Circuit Bar Association, the American Bar Association Section of Intellectual Property Law, the Intellectual Property Law Section of the State Bar of California, American Business Trial Lawyers, the Los Angeles Intellectual Property Law Association, and the NAPABA Convention on Patent Damages. 

After filing suit, Judge Otero effectively consolidated the cases for purposes of streamlining the pre-trial activities in the various cases, thus causing the creation of a joint defense group representing the various defendant companies. Throughout that time, dozens of the defendant companies settled with the Tawnsaura Group, paying the NPE licensing fees. Based upon the judge’s pretrial schedule, the defendants jointly filed a motion for summary judgment seeking to invalidate the patent claims at issue in the two patents. Trueba and two other attorneys were chosen by the joint defense group of remaining defendants to divide the topics and argue the motion for summary judgment. In the days leading up the hearing, there was a flurry of settlement discussions between the Tawnsaura Group and various defendants. Two days prior to the argument, the two other attorneys designated to argue informed Trueba that their clients had in fact settled and they would not participate in the argument. Trueba reviewed the other two attorneys’ topics and argued the motion. During the hearing, the Judge issued a positive ruling from the bench, an uncommon occurrence in a patent infringement lawsuit. The Court held that the various patent claims being asserted were invalid on the basis of prior technology and prior knowledge of the claimed methods.

In this matter, Trueba represented Inc. (NASDAQ: VITC), a leading online retailer of health and wellness products, including dietary supplements. Tawnsaura alleged that’s sales of a vitamin supplement called L-citrulline, whose benefits on the human body were well known for many years prior to the inventor applying for his two patents, infringed Tawnsaura’s patent rights. During the course of the case, the defendants uncovered information that showed that the methods of administering L-citrulline claimed in the patents had already been practiced and used many years prior to the critical date of the patents. In fact, the defendants also learned that the named inventor of the patents, Dr. William Waugh, had attempted to publish an article on his purported discoveries, but the publication rejected the article on the basis that his disclosure did not provide any information that was not already well known. 

Furthermore, defendants learned that Dr. Waugh was made aware of the commercial sales of Stimol by a French company in the early 1990’s. Stimol was an L-citrulline based supplement that was provided to patients. Dr. Waugh failed to inform the U.S. Patent & Trademark Office about these particular events, though he had a duty to do so. Thus, the defendants asked for judgment in their favor stating that the relevant portions of two patents were invalid in view of the pre-existing knowledge and use of the claimed inventions.

Earlier this year, the judge in the case asked the parties to provide supplemental briefing on the issue of whether the claimed inventions were invalid on the basis that the difference between inventions and the prior use of L-citrulline was “obvious” to those skilled in the technology. The parties did so and the matter proceeded to oral argument. Trueba’s practice focuses on the domestic and international enforcement of intellectual property rights. In addition to his electrical engineering academic background, Trueba has practical experience from his years of working in the industry. He is a patent attorney registered with the United States Patent and Trademark Office. In addition to litigation, he is also experienced in the prosecution of patent and trademark applications. 


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