Federal Circuit overturns 9.1 million dollar fee award in vitamin patent case
Judges ruled that ChromaDex presented a reasonable Section 101 defense for its isolated milk nutrient invention.
By Giovanni Sapere
2 min readHuman-Edited, AI-Assisted
The U.S. Court of Appeals for the Federal Circuit reversed a district court order requiring ChromaDex to pay 9.1 million dollars in legal fees to rival Elysium Health. The decision settles an exceptional-case dispute over dietary supplement intellectual property licensed from Dartmouth College. Judges ruled that while ChromaDex lost on patent eligibility, its arguments were neither frivolous nor foreclosed by Supreme Court precedent.
A disputed compound from cow milk
The intellectual property conflict began in 2018, when ChromaDex filed a patent infringement suit against Elysium Health, Inc. in the U.S. District Court for the District of Delaware, as reported by IPWatchdog. The litigation involved U.S. Patent No. 8,197,807, which covers compositions containing isolated nicotinamide riboside (NR), a natural form of vitamin B3 found in cow milk. ChromaDex licenses the patent from Dartmouth College and sells commercial dietary supplements designed to boost the coenzyme nicotinamide adenine dinucleotide (NAD+) in the body.
Elysium responded to the lawsuit by seeking summary judgment under Section 101 of the Patent Act, arguing that the asserted claims covered an unpatentable product of nature rather than a protectable innovation, according to IPWatchdog. The Delaware district court agreed, invalidating the claims. The Federal Circuit affirmed that invalidity ruling in 2023 under precedents established in Ass'n for Molecular Pathology v. Myriad Genetics, Inc. and Diamond v. Chakrabarty.
“While ChromaDex’s arguments ultimately did not prevail, it cannot be said that the substantive strength of its § 101 position was so [exceptionally] meritless or unreasonable as to make this case stand out from others.”
— U.S. Court of Appeals for the Federal Circuit
The nine million dollar penalty
After securing the invalidity judgment, Elysium petitioned under 35 U.S.C. § 285 to classify the litigation as an exceptional case, according to IPWatchdog. Section 285 allows judges to award reasonable attorneys' fees to prevailing parties when a case stands out regarding the substantive strength of a position or the manner of litigation. Elysium claimed ChromaDex acted unreasonably because its claims could not survive the legal standards set by Myriad.
The district court adopted that view and awarded Elysium $9.1 million in attorneys' fees, IPWatchdog reported. ChromaDex appealed the fee order, arguing that its patent defense involved legitimate legal distinctions rather than baseless claims.
Beyond the Myriad precedent
In its ruling reversing the fee award, the Federal Circuit concluded that the lower court committed a legal error by treating Myriad as the beginning and end of the patent-eligibility inquiry, as noted by IPWatchdog. The appellate panel explained that evaluating ChromaDex's claims required working through several distinct considerations, such as whether the claimed compositions possessed markedly different characteristics and significant utility.
The court observed that ChromaDex had pointed to functional distinctions from ordinary milk, including higher NAD+ biosynthesis, according to IPWatchdog. Although those patent arguments failed because the claims lacked a minimum required amount of isolated NR and were broad enough to encompass natural milk, the appellate judges decided the substantive position was not so exceptionally meritless as to justify shifting millions of dollars in fees.
