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Florida Attorney Wins Supplement Patent Infringement Case

Phase 2

On behalf of Vitacost.com Inc., Patent attorney William R. Trueba, Jr. (Miami, FL) won a motion obtaining a ruling that invalidated all asserted claims of two nutritional supplement patents by  so-called “patent trolls.”

“This ruling sends a clear message that defending against meritless patent infringement claims may be the better approach over settling,” said 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 a non-practicing entity (NPE) also known as patent trolls, and the Senate was also considering additional legislation earlier this year.

On June 13, 2014, 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 more than 85 defendants that sell nutritional supplements nationwide.

In this matter, Trueba represented Vitacost.com, Inc. (Boca Raton, FL). Tawnsaura alleged that Vitacost.com’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, reported Trueba, adding 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.

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.

Though Trueba was to co-counsel the motion, two days prior to the argument, the two other attorneys designated to argue informed Trueba that their clients had in fact settled and 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, reported Trueba, adding 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.

Speaking to VRM Media after the case, Trueba said it was helpful to the industry to have attorneys’ cooperate and form a group to fight the case. “We were able to all together hire an expert, whose testimony was critical to winning the case,” said Trueba. “I thought that was really critical. The judge honed in on the testimony of the expert we hired collectively.”

For more information, visit www.vitacost.com or www.etlaw.com.