Since 2013, one company in the bodybuilding supplement industry has been making rounds in many IP blogs. It has earned some accolades from the industry, like being the third most litigious patent holder of 2013. Last but not least, it has been running its patent litigation spree since 2013, filing more than 100 patent infringement lawsuits.

All of these efforts helped it earn the moniker of a patent troll.

You may have guessed that we are talking about none other but Thermolife, a company founded by professional bodybuilder ‘Ron Kramer’ that has several Pre and Post workout supplements. Today, most of the bodybuilding supplement players are under a threat of getting sued if they launch a new Nitric Oxide (NO) supplement.

What is a Nitric Oxide (NO) supplement? – NO supplements affect the release of hormones and adrenaline. These supplements not only speed up growth and recovery time of muscles but increase blood flow as well to deliver more nutrients. Many athletes believe NO supplements help them in an intense workout of a long session.

Over the last five years, Thermolife has sued multiple companies for infringing its different patents. The patent asserted by Thermolife are on these three types of workout supplements:

1. D-Aspartic Acid
2. NO/Arginine
3. Nitrated/ Nitrited Amino Acids (Nitrated Aminos)

For most of the patent infringement lawsuits by Thermolife, defendants have decided to settle with Ron Kramer. Recently Hi-Tech Pharma won a patent lawsuit by invalidating four patents of Thermolife (licensed from Stanford). However, many other patents in Thermolife’s portfolio are still being asserted in 25+ litigations, and are yet to be challenged.

We wanted to know what is so special about Ron’s patent arsenal which is making a defendant settle instead of fighting. Hence, we asked our Chemical Research team to take a look at some of the patents Thermolife has asserted.

The Chemical Research team at GreyB reverted within few hours and they weren’t impressed with Ron’s patent arsenal. Want to know why? Well, read on:

US8202908 (Title: D-aspartic acid supplement, Priority Date: March 28, 2008)

The US’908 patent claims a method of increasing testosterone/growth hormone by oral ingestion of a D-aspartic acid compound.

A quick look made team find multiple pieces of evidence challenging novelty of US’908:

In 1987, Eugene H. Man of the University of Miami and Jeffrey L. Bada of the University of California published a paper titled ‘Dietary D-Amino Acids’ in the Annual Review of Nutrition. Their paper discusses how D-aspartic acid can be availed from a variety of nutritional sources like bread, chicken, bacon, soy, etc.

Further, research articles like Free D-Aspartate in Mammals, and The effect of D-aspartate on luteinizing hormone-releasing hormone.. reveal that the effect of D-aspartic acid on a stimulating release of testosterone and growth hormones was well known before 2008.

These prior art points that US’908’s may not survive litigation if its novelty gets challenged.

To add a little more flavors, researchers went ahead for patent prior art and found as US6525203 one reference. US’203, published in 2003, discloses compounds consisting N-BOC-D-aspartic acid 0-benzyl ester, for stimulating growth hormone secretion. N-Butyloxycarbonyl (BOC) is a protective group.

This quick preliminary analysis of US’908 hints existence of more prior art that could attack its validity.

A side note from the author: Do you know how we find prior art? We build technology timeline which helps us select right keywords. You can explore more about it here: How Technology Timeline Helps in A Prior Art Search 

US8466187, US8952046, US8957100 (Title: Amino acid compositions, Priority Date: Sept 18, 2007)

These 3 patents are from the same family and claim a composition consisting of Nitrates, Nitrites, and Arginine, which is administered in humans to stimulate the production of Nitric Oxide to increase athletic performance.

Again, the team performed a quick preliminary analysis to find the type of prior art available on the subject patents. The team was able to find multiple pieces of evidence putting the validity of these patents in question:

US5543430, filed by W. H. Kaesemeyer this patent discloses a method of treating a condition of blood vessel constriction by administering a mixture of the biological source of nitric oxide (L-arginine), ) and a stimulator of Nitric Oxide Synthase (which may be nitroglycerin, or sodium nitroprusside, nitrate esters, isoamylynitrite, SIN-1, cysteine, dithiothreitol, N-acetylcysteine, mercaptosuccinic acid, thiosalicylic acid, and methylthiosalicylic acid).

WO2005007173A1, cited during the prosecution discloses a method of treating a condition of blood vessel constriction, by administering a mixture of nitrite in combination with at least one additional agent, where the additional agent is one or more selected from the list consisting of penicillin, hydroxyurea, butyrate, clotrimazole, arginine, or a phosphodiesterase inhibitor

Further, we found another reference US20050043287 with a publication date of Feb 2005. Dr. Allen Ann De Wees –a renowned leader of L-Arginine Biochemistry – is the inventor of this patent. The patent discloses a food supplement of arginine composed of a salt of L-arginine and suitable anions such as nitrite, nitrate, bromide, fluoride, iodide, borate, hypobromite, hypochlorite.

All these prior art references point to the chinks in Ron Kramer’s patents armor. A more focused search has a high probability of finding bang-on prior art to knock Ron’s patent on NO out.

A similar analysis was performed by me on the first patent of Hoverboard. You can download the free preliminary analysis report here: Preliminary Analysis Report – Hoverboard Patent (US8738278B2

Authored By: Lindce Sabi Varghese, Senior Associate, IP Solutions Team and Divya Goyal, Senior Research Analyst, Chemical Research Team