Federal Circuit Reverses Patent Ineligibility Finding at Pleading Stage in Natural Alternatives

Held: At the pleading stage of a patent infringement action, the CAFC performs patent eligibility analysis under the patent owner’s proposed claim constructions. Claims covering a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific result are considered treatment claims and are patent eligible.

Federal CircuitIn Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, the Federal Circuit reversed the decision of the United States District Court for the Southern District of California, which had held that a series of patents owned by Natural Alternatives International, Inc. (“Natural Alternatives”) were directed to laws of nature and lacked an inventive concept sufficient to render them patent eligible under 35 U.S.C. § 101. Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, No. 18-1295, 2019 U.S. App. LEXIS 7647 (Fed Cir. March 15, 2019) (Before Moore, Reyna, and Wallach, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge) (Concurring-in-part and dissenting in part, Reyna, Circuit Judge).

The patents at issue were directed to the use of beta-alanine in dietary supplements to “increas[e] the anaerobic working capacity of muscle and other tissue.” After Natural Alternatives asserted the patents in multiple lawsuits in California, Creative Compounds, LLC (“Creative Compounds”) moved for judgment on the pleadings. The district court granted the motion. In performing its eligibility analysis, the district court accepted Natural Alternatives’ proposed claim construction and held that the asserted claims were patent ineligible. Natural Alternatives appealed, and the Federal Circuit reversed and remanded.

Looking at the Claims

The Federal Circuit held that “the complaint’s factual allegations, together with all reasonable inferences, plausibly establish the eligibility of the representative claims.” In conducting its analysis, the Court applied Natural Alternatives’ proposed claim constructions,  defining “effective” as “elevates beta-alanine above natural levels to cause an increase in the synthesis of beta-alanylhistidine dipeptide in the tissue”; “dietary supplement” as “an addition to the human diet, which is not a natural or conventional food, which effectively increases athletic performance when administered to the human over a period of time”;. and “increasing anaerobic working capacity” as “increasing the amount of work performed by a muscle under lactate producing conditions.”

A number of the asserted patents claim methods of treatment using beta-alanine (“the Method Claims”). Representative Claim 1 of the ‘596 patent recites:

  1. A method of regulating hydronium ion concentrations in a human tissue comprising:

providing an amount of beta-alanine to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis in the human tissue; and

exposing the tissue to the blood or blood plasma, whereby the concentration of beta-alanylhistidine is increased in the human tissue.

Patent Eligibility Analysis

Although the claims covered a natural product—beta-alanine—they covered the product in unnatural quantities in order to alter a patient’s natural state and treat a patient with specific dosages, said the Court. As such, the Federal Circuit found the method claims patent eligible treatment claims—directed to “a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.”  As the Court explained, “[a]dministering certain quantities of beta-alanine to a human subject alters that subject’s natural state. Specifically, homeostasis is overcome, and the subject’s body will produce greater levels of creatine. . . . This, in turn, results in specific physiological benefits for athletes engaged in certain intensive exercise. . . . The claims not only embody this discovery, they require that an infringer actually administer the dosage form claimed in the manner claimed, altering the athlete’s physiology to provide the described benefits.”

Unlike the claims in Mayo, which merely described an existing natural relationship, the method claims not only “rely on the relationships between the administration of beta-alanine and beta-alanylhistidine dipeptide synthesis, but . . . require specific steps be taken in order to bring about a change in a subject, altering the subject’s natural state.”  The Court elaborated that “[t]he fact that the human body responds to the treatment through biochemical processes does not convert the claim into an ineligible one. . . . [T]he ‘natural ability of the subject matter to undergo the process does not make the claim “directed to” that natural ability.’”

Similarly, although the asserted claims directed to a dietary supplement were directed to specific treatment formulations that incorporated the natural product beta-alanine, they nonetheless have characteristics and can be used in ways that beta-alanine in nature does and cannot. For example, in claim 1 of the ‘084 patent, the “dietary supplement” uses beta-alanine at a dosage of “between about 0.4 grams to 16 grams” to “effectively increase[] athletic performance.” The Court said that Natural Alternatives had sufficiently alleged that the claimed dosage forms could be used to increase athletic performance in a way that naturally occurring beta-alanine cannot and that the claimed combination of glycine and beta-alanine could have effects far greater than the sum of its parts.

Finally, the majority held that claims directed to the manufacture of a human dietary supplement containing beta-alanine with certain characteristics were not directed to a law or product of nature, but instead to an application of a natural law and new use of the product.

Judge Reyna Concurs-in-Part, Dissents-in-Part

According to Judge Reyna, the majority’s analysis relied on an erroneous claim construction. Judge Reyna concurred in the decision to remand, which would permit the court to conduct formal claim construction and revisit the Section 101 analysis under a proper claim construction. Judge Reyna further invited the Court to consider whether conducting a Section 101 analysis at the pleading stage is appropriate: “[t]his case, and the general development of the law concerning § 101 analysis at the pleading stage, causes me to ask whether the time has come for this court to reconsider whether a Rule 12(c) motion based on § 101 should be decided before claim construction.”

 

The Author

Dustin Weeks

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Dustin Weeks

Robert Schaffer & Joseph Robinson  

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 8 Comments comments.

  1. B March 25, 2019 6:01 pm

    The only reason the s101 rejection was reversed was Judge Moore, who is the only judge on the CAFC capable of reading s101, applying case law, and using common sense.

    No evidence of well-understood, routine,and conventional. End of story. Simple analysis, yet beyond the ken of the other CAFC judges.

    Reyna’s dissent is VACUOUS. The CAFC often addresses claim construction all on its own and issues a decision without remand regardless of whether or not the lower court made a claim construction error.

    Reyna, the author of Ariosa and various other atrocities, is well on record as declaring that evidence is immaterial to a s101 decision. What’s different here?

  2. B March 25, 2019 6:25 pm

    “whether the time has come for this court to reconsider whether a Rule 12(c) motion based on § 101 should be decided before claim construction.”

    Yes, we may not understand what a claim means, but we can still reject it — Jimmie Reyna.

  3. concerned March 26, 2019 4:17 am

    Claims covering a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific result are considered treatment claims and are patent eligible.

    Hopefully the above statement bodes well for my appeal at PTAB. My process uses specific concrete steps for a specific group of people at a specific time frame to achieve a specific outcome to overcome oversights of working professionals and experts that have occurred for 63 years.

    My process has a very applicable practical application in which facts and evidence on the record have never been addressed by the examiner.

  4. FarColdNorth March 26, 2019 7:13 am

    There seems to be a conflict between this case (Natural Alternatives) and In re Bhagat. The ruling in Bhagat was that a composition of matter composed of a mixture of known compounds is patent ineligible. The Product claims in Natural Alternatives seem to be no more than a mixture of known compounds. Is the dietary supplement limitation really sufficient to make the difference?

  5. Anon March 26, 2019 10:35 am

    Reyna is truly atrocious.

  6. B March 30, 2019 12:54 pm

    @ FarColdNorth “There seems to be a conflict between this case (Natural Alternatives) and In re Bhagat. The ruling in Bhagat was that a composition of matter composed of a mixture of known compounds is patent ineligible.”

    Judge Newman screwed the pooch on Bhagat. Newman rarely makes bad mistakes but the Bhagat decision is just idiotic. It’s based on a pre-1952 case (Funk Brothers) that the 1952 Patent Act was designed in part to do away with. The decision also contradicts the statutory language of s101 and it contradicts Bilski.

    The Bhagat decision is Taranto-esque its so bad

  7. Anon April 4, 2019 10:13 am

    B,

    Do you have a link to Bhagat?

  8. B April 4, 2019 4:47 pm

    Just check the CAFC website