March 2012

March 20, 2012, by Mandour & Associates, APC

San Diego – Natural Alternatives International, Inc., a formulator, manufacturer, and marketer of customized nutritional supplements, has settled a patent infringement dispute with BPI Sports and Image Sports. The lawsuit was settled with the companies entering into an agreement allowing for Natural Alternatives to provide BPI and Image with its patented CarnoSyn beta-alanine.

The terms of the settlement agreement indicate that BPI and Image will purchase CarnoSyn beta-alanine from Natural Alternatives’ licensed distributor, Compound Solutions, Inc. (CSI) under a separate supply agreement. BPI and Image will also receive a license from Natural Alternatives to use its intellectual property for CarnoSyn beta-alanine. CarnoSyn beta-alanine is an amino acid used for strength training, aerobic and anaerobic endurance, and delays muscle fatigue so the athlete can train harder.

Also negotiated in the terms of the settlement agreement is Natural Alternatives’ dismissal of two patent infringement cases filed in the U.S. District Court for the Southern District of Texas against BPI and Image for their alleged infringement of Natural Alternatives’ U.S. Patent No. 8,067,381 entitled “Methods and compositions for increasing the anaerobic working capacity in tissues.” Additionally, BPI and Image have agreed to drop a countersuit they filed against Natural Alternatives.

Natural Alternatives Chief Executive Office and Chairman of the Board, Mark A. LeDoux, stated, “NAI is pleased to amicably resolve its intellectual property dispute with BPI and Image. We look forward to partnering with these prominent brands who choose to respect NAI’s extensive beta-alanine patent rights in return for a long-term business solution to exclusively use NAI’s CarnoSyn beta-alanine in their products. NAI will continue to build its CarnoSyn brand and where necessary, enforce its beta-alanine intellectual property.”

Founded in 1980, Natural Alternatives International is a leading formulator and manufacturer of customized nutritional supplements. The Company’s comprehensive partnership approach to client servicing is unique within the industry combining clinical research, science-based formulation, advanced quality assurance testing methodologies, superior manufacturing and packaging capabilities, and broad marketing experience to create nutritional products that are formulated to address specific health conditions.

March 12, 2012, by Mandour & Associates, APC

San Diego – In a patent infringement lawsuit filed in October 2009 in a Wisconsin district court, a jury came back with a unanimous verdict in favor of Incomm, finding Blackhawk Network liable for infringing an Incomm patent related to prepaid card transactions.

In its complaint, Incomm alleged that Blackhawk infringed its patent “by practicing, making, using, selling or offering for sale in this judicial district and elsewhere the inventions claimed in the patent-in-suit” by offering its gift-card mall program. At the time, the Incomm patent in question was still pending, but had received a notice of allowance with the United States Patent and Trademark Office (USPTO).

During litigation proceedings for the case, Blackhawk Network, a provider of prepaid products, attempted to have Incomm’s patent invalidated with the USPTO to support its defense. Unable to prove the patent was invalid, Blackhawk has since removed the portions of the unused code found to infringe Incomm’s patent. The modification will reportedly have no effect on how Blackhawk’s business operates nor will it affect any Blackhawk customers.

The patent involved in the case is U.S. Patent No. 7,578,439 entitled “System and Method for Authorizing Stored Value Card Transactions.” After the verdict was read, Incomm was awarded approximately $3.5 million in compensatory damages as a result of Blackhawk Network’s repeated infringement of its patented computer system and method during the period from August 2009 to February 2012, with no further payments due as a result of Blackhawk’s removal of the lines of code.

Blackhawk is reportedly considering appealing the jury’s verdict.

Founded in 1992, Incomm has become an industry leader in the innovation, marketing, and distribution of store-value gift and prepaid products using its patented point-of-sale transaction technology and payment solutions. With over $15 billion in processed retail sales transactions for 2011, Incomm is the nation’s largest provider of gift cards, prepaid wireless products, reloadable debit cards, digital music downloads, content, games, software and bill payment solutions.

Incomm partners with well-known consumer brands all over the world, providing approximately 250,000 retail locations the products and services in demand from their customers. The company is headquartered in Atlanta, Georgia with satellite offices in other states as well as around the world.


March 2, 2012, by Mandour & Associates, APC

San Diego – San Diego-based life sciences company Sequenom has sued Aria Diagnostics for patent infringement alleging that the San Jose-based company infringed on its patent to detect abnormal chromosomes in utero.

First introduced to the public in October 2011, Sequenom’s MaterniT21 prenatal blood test can detect a genetic chromosomal anomaly known as Trisomy 21, the most common cause for Down Syndrome. The test also has the capability to detect trisomies 18 and 13, which are often the cause of severe birth defects. Although it has not yet been approved by the U.S. Food and Drug Administration, the MaterniT21 test is close to 99% accurate in detecting the anomalies, according to Sequenom’s website.

Following its patent infringement complaint filed in late January against Aria, Sequenom filed a motion for preliminary injunction to bar Aria from manufacturing, marketing, and distributing its new Harmony Prenatal Test. In the lawsuit, Sequenom contends that Aria’s alleged infringement of its Patent No. 6,258,540 was “intentional, deliberate, and willful.”

Founded in San Diego in 1994, Sequenom maintains that its Center for Molecular Medicine was the first to develop a noninvasive diagnostic laboratory test to screen for chromosomal aneuploidy in pregnant women. Aria’s Harmony Prenatal Test was announced to the public in early February and is described as a new technology to efficiently analyze patients’ blood samples with a noninvasive approach to cell-free DNA analysis in maternal blood to detect common trisomies linked to genetic disorders.

In addition to its patent infringement complaint against Aria, Sequenom has filed another complaint against genetic testing company Natera for allegedly infringing the same patent. The lawsuit accuses Natera’s noninvasive paternity test, which analyzes fragments of fetal DNA in maternal plasma from a blood sample, of infringing the MaterniT21 patent and claims that Natera “knowingly encouraged others” to infringe when it licensed its test to paternity testing lab DNA Diagnostics Center.

In both lawsuits, Sequenom is requesting judgments that both companies willfully infringed the MaterniT21 patent and a permanent injunction that would stop the defendants from infringing the patented technology. Sequenom is also reportedly asking for monetary damages sufficient to compensate the company for the infringement, attorneys’ fees, and for costs incurred because of the lawsuit, specifically “increased damages” that are “not less than three times the amount of actual damages awarded to Sequenom due to the companies’ willful infringement.”