The bitter sweet taste of patent infringement litigation – PURECIRCLE v. SWEEGEN

Food is typically not an invention which can patented. It is very difficult to demonstrate that combining ingredients is not obvious. However, the ingredients that go into foods and the process by which those ingredients are produced, are ripe for patent protection. Manufacturers are constantly looking for new ways to produce ingredients more efficiently and at a lower cost. If a manufacturer comes up with a new method of producing an ingredient then that invention can be protected with a patent.

A patent is a set of exclusive rights granted to the inventor of a new invention. To get a patent on an invention the inventor must submit a patent application. In the United States the agency which grants patents is the United States Patent and Trademark Office. When an inventor submits a patent application to the United States Patent and Trademark Office, the agency will review the application to make sure the invention is worthy of patent protection. To be worthy of patent protection an invention must be new, useful and not obvious. If the United States Patent and Trademark Office determines that a patent application meets the requirements the inventor will be granted a patent on the invention. A patent grants an inventor the exclusive right to make, use, sell, distribute and import the invention in the United States. If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement. A patent owner can file a lawsuit to stop patent infringement. A patent owner can request and injunction from a court to stop patent infringement and monetary damages for patent infringement which has occurred.

An example of a food ingredient manufacturer enforcing its patent rights is PURECIRCLE v. SWEEGEN, INC., 18-cv-01679 (C.D. CA 2018). This case revolves around the manufacturing of Stevia. Stevia is a sugar substitute that comes from the Stevia plant, and has no calories. Many food and drink companies that want to reduce the calories in their product but retain sweetness use Stevia as a substitute for sugar. Purecircle owns U.S. Patent No. 9,243,273, titled Method for Making Rebaudioside X, on a method of manufacturing Stevia. The patented process is more efficient that other processes at extracting Stevia from the plant. The method involves the conversion of Rebaudioside D to Rebaudioside X using an enzyme called UDP-glucosyltransferase. Rebaudioside X is another name for Rebaudioside M.

SweeGen, in its marketing materials, states that it has licensed a method of extracting Rebaudioside X. That method is described in U.S. Patent No. 10,023,604 which is titled Non-caloric sweeteners and methods for synthesizing. That method also uses UDP-glycosyltransferase to convert Rebaudioside D to Rebaudioside M.

Purecircle makes a convincing argument in its complaint that patent infringement has occurred. The claims of Purecircle’s patent are outlined in a grid explaining how each step of the SweeGen process infringes on the patent. This is one of the nuances of patent law that is tricky, a patent gives you the right to exclude others from practicing an invention, it does not grant the patent owner the right to practice the invention. SweeGen may have licensed its patent thinking that the license would make it immune from patent infringement lawsuits, but that is not the case. If it turns out that the SweeGen patent cannot be practiced without infringing on the Purecircle patent, this case may end quickly. We will have to wait for SweeGen’s answer to see what their defense is.

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