Designs for Health Wins Migraine Patent Case
PALM COAST, Fla. (PRWEB) May 21, 2018 -- Designs for Health, Inc. (DFH) the premier, practitioner-channel dietary supplement company, announced today a recent legal victory in the continuing effort to protect its brand. On April 26, 2018, a California Federal District Court judge ruled that Akeso Health Sciences, LLC, gave up the right to sue DFH over a migraine supplement patent by waiting 10 years to file a complaint after threatening litigation, thereby creating a misleading impression that it didn’t plan to sue.
“We have a reputation for ethical and fair practices and we wanted to protect that reputation,” stated DFH Co-founder and Chairman Jonathan Lizotte. “From a purely financial standpoint, a settlement would have cost significantly less than the legal fees we expended, but that would just encourage other meritless claims. We are prepared to go to trial to protect our reputation and other parties should be prepared to do the same.”
U.S. District Judge S. James Otero granted DFH’s motion for summary judgment that Akeso’s infringement suit is barred by the doctrine of equitable estoppel, which prohibits suits when a patent holder misleads an accused infringer into believing it would not enforce the patent.
“We are very satisfied with the outcome of this case,” commented Designs for Health General Counsel Stephen Carruthers. “We’re confident that DFH did not infringe Akeso’s patent and, in any event, that the patent is invalid, but the court never had to address those issues because it was able to dispose of the case on the basis of equitable estoppel.”
In April 2006 the attorney for Akeso’s founder and patent holder Curt Hendrix sent a letter to DFH, alleging that DFH’s Migranol™ supplement infringed its patent. The letter demanded that DFH cease marketing and distributing Migranol™ and destroy its entire inventory. The letter demanded an answer by May 1, 2006. DFH responded that it needed more time to analyze the allegation and would respond by May 12, which it did not. The companies exchanged no further written communications until Akeso filed suit in October 2016.
During Akeso’s 10-year silence, DFH increased marketing and investment in Migranol™ and quadrupled its revenue. The judge ruled that DFH was wrongly led to believe that no lawsuit was forthcoming and rejected Akeso’s argument that DFH’s increased investment was just a business decision unrelated to the lawsuit. “These facts indicate more strongly that Akeso saw a market opportunity to resuscitate its previously abandoned claims in order to capitalize on Designs for Health’s stronger revenues. After ten years of failing to follow up on its threat of infringement, Designs for Health would be undeniably prejudiced if the court allowed Akeso to bring forth its claims only after Designs for Health made substantial investments in its product,” the judge ruled.
In order for a lawsuit to be barred by equitable estoppel, the patentee must lead the alleged infringer to believe that it will not be sued through misleading conduct or silence, and the alleged infringer must rely on that conduct and show it would be prejudiced if the suit was allowed. Since both parties agreed that Akeso didn’t do anything actively misleading, the only question was whether the 10-year silence was misleading enough on its own to trigger equitable estoppel. The judge ruled that it was.
Designs for Health was represented by Pete Peterson, of Delio, Peterson & Curcio of New Haven, Connecticut and Doug G. Muehlhauser of Knobbe, Martens, Olson & Bear of Irvine, California.
The case is Akesi Health Sciences LLC v. Designs for Health Inc., case number 2:16-07749, in the U.S. District Court for the Central District of California.
The patent-in-suit is US Patent No. 6.500.450
For further information please contact Giselle Chollett: [email protected], 212-693-2151
About Designs for Health:
Family-owned Designs for Health offers high-quality dietary supplements and medical foods to healthcare professionals and their patients. Guided by its founding philosophy of “Science First,” the company holds an unwavering commitment to creating research-driven formulations with meaningful quantities of therapeutic ingredients that maximize the potential for successful treatment outcomes. For nearly 30 years, Designs for Health has been many healthcare professionals’ trusted source for not only product innovation, but also leadership in clinical education and practice development solutions. To learn more, visit http://www.designsforhealth.com or call 800.847.8302.
Danielle Schufreider, ADinfinitum, +1 2126932150 Ext: 314, [email protected]
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