Alston & Bird client Hubei Grand Life Science & Technology Co. Ltd. (HGL), a subsidiary of China Grand Enterprises Inc., scored a hat trick of victories before the United States Patent and Trademark Office (USPTO). The wins came on top of another victory secured by HGL in an earlier patent infringement investigation by the U.S. International Trade Commission (ITC).
In three separate inter partes review (IPR) proceedings conducted at the USPTO’s Patent Trial and Appeal Board (PTAB), HGL successfully invalidated all challenged claims of three patents asserted against the company in a 2017 lawsuit by Vitaworks IP, LLC.
In its complaint, Vitaworks asserted against HGL three patents related to a process for manufacturing taurine, of which HGL is one of the world’s largest and leading suppliers. Taurine is an important amino sulfonic acid essential for the human body’s metabolic processes and physical as well as mental wellbeing. It is also a fundamental ingredient in a large variety of foods and nutritional supplements.
In response to the suit, HGL challenged these patents’ validity by filing three separate IPR petitions with the PTAB in 2018. Despite Vitaworks’s opposition, the PTAB instituted trials on all the petitions. Shortly after, Vitaworks conceded that the challenged claims of two of the three patents – Nos. 9,428,451 and 9,573,890 – were unpatentable in view of the prior art cited by HGL. For the remaining patent – No. 9,428,450 – the PTAB, after oral argument, found in favor of HGL that the challenged patent claims were also unpatentable as obvious in view of the prior art references – alone and in combination – as cited by HGL.
While these three IPR trials were pending, Vitaworks also initiated a Section 337 investigation before the ITC against HGL and more than 30 other taurine manufactures and distributors. In that case, which was filed in 2019, HGL forced Vitaworks to withdraw its complaint just one month after its filing after the ITC invoked its 100-day pilot program to limit unnecessary litigation in certain Section 337 investigations.
Representing HGL before the PTAB was an Alston & Bird team led by senior associate Stephen Yang, assisted by partners Thomas Parker and Kirk Bradley, associates Charles Naggar and Maddy Byrd, and paralegals Linda Sanchez and Chris Timony of the firm’s Intellectual Property Litigation Group. The Alston & Bird team representing HGL in the ITC investigation was led by Yang, Parker, partner Adam Swain, and senior associate Brian Hill, again of the firm’s Intellectual Property Litigation Group
The PTAB IPR proceedings were Nos. IPR2018-01766, -01767, and -01768. The ITC investigation was titled Certain Taurine (2-aminoethanesulfonic acid), Methods of Production and Processes for Making the Same, and Products Containing the Same, No. 337-TA-1146.