Cookie “Companies” sued by University and Exclusive Licensee thereof

Infringement suit was filed on September 7^th 2011 in Western District of Wisconsin by Brandeis University, USA (Brandeis) along with its exclusive licensee GFA brands (“Plaintiffs”), against a dozen of cookie companies including Nestle USA, Inc., The Pillsbury Company, LLC, Keebler Co., Famous Amos Chocolate Chip Cookie Company, LLC, East Side Ovens, Inc., Murray Biscuit Co. LLC, Voortman Cookies Ltd., Bremner Food Group, Inc., Wessanen U.S.A., Inc., Cookie Specialties, Inc., Topco Associates LLC (collectively “Defendants”) for illegally using a formula that manipulates the balance between good cholesterol and bad cholesterol, providing “significant health improvements”.

US patent 5,843,497 issued on December 1998 (Patent ‘497) and its family patent US patent 6, 630,192 issued on October 2003 (Patent ‘192) assigned to Brandeis University discloses a method of “Increasing the HDL Level in the HDL/LDL Ratio in Human Serum by Balancing Saturated and Polyunsaturated Dietary Fatty Acids”. Brandeis granted a worldwide, sole, and exclusive license of ‘497 and ‘192 patents, with the right to sublicense to GFA Brands. This license grants GFA Brands the right to sue for infringement of the ‘497 and ‘192 patents.

The claimed inventions in the ‘497 and ‘192 patents are directed to fats and fat blends that decrease low-density lipoprotein cholesterol (LDL) and increase high-density lipoprotein cholesterol (HDL) in the human serum. This adjustment/balance of the LDL/HDL ratio according to the claimed inventions results in significant health benefits.

Claim(s) Proposed to be Infringed by Companies:

Cookie companies mentioned above are said to have found to be infringing one or more claims of either ‘497 or ‘192 patent or both, by manufacturing, using and marketing the products in the US claimed in the patented invention. Typically, independent claim 7 of ‘497 patent and claim 1 of ‘192 patent are found to be infringed by cookie manufacturers.

Claim 7 of ‘497 patent recites:

“7. A prepared food product, comprising a cholesterol-free fat composition suitable for human or animal ingestion for increasing the HDL concentration and the HDL/LDL concentration ratio in the blood serum, comprising one part by weight polyunsaturated fat and at least one part by weight cholesterol-free saturated fat, where said fat composition comprises linoleic acid and at least one saturated fatty acid selected from the group including lauric acid, myristic acid, and palmitic acid, said linoleic acid constituting between 15% by weight and 40% by weight of the fat in said fat composition and said saturated fatty acid constituting between 20% and 40% by weight of the fat in said fat composition.”

Claim 1 of ‘192 patent recites:

“1. Cholesterol-free margarine, comprising a blend of at least one polyunsaturated fat and at least one saturated fat, forming a cholesterol-free blended fat composition, wherein said blended fat composition comprises between 15% by weight and 40% by weight linoleic acid, between 20% and 40% by weight saturated fatty acids, wherein said saturated fatty acids comprise at least one saturated fatty acid selected from the group consisting of lauric acid and palmitic acid, and no more than 1% elaidic acid or other unnatural trans-fatty acids by weight; wherein the ratio of polyunsaturated fatty acids to saturated fatty acids is from 0.5:1 to 2:1, and wherein said cholesterol-free margarine is suitable for ingestion by a human as a food product and for increasing the HDL concentration and the HDL/LDL concentration ratio in the blood serum following ingestion by a human.”

Cookies, cookie doughs and products used in making/producing such cookies and selling under company’s respective brand names include for example:

– Nestle’s: Tollhouse Chocolate Chip Cookie Dough;

– Pillsbury’s: Grands Flaky Layers Reduced Fat Biscuits and Reduced Fat Crescent Rolls; Topco’s: ShurFine® Vanilla Wafers and ShurFine® Animal Crackers;

– East Side Ovens’s: Cranberry Orange Cookies;

– Keebler’s: Chips Deluxe Chocolate Lovers Cookies, Chips Deluxe Oatmeal Chocolate Chip Cookies, and Chips Deluxe Rainbow Cookies;

– Famous Amos’s: Bite Size Chocolate Chip & Pecans Cookies and Chocolate Chip Cookies; Murray’s: Murray Sugar Free Chocolate Chip Cookies;

– Voortman’s: Fudge Striped Oatmeal Cookies;

– Bremner’s: Rippin’ Good® Vanilla Wafers and Rippin’ Good® Animal Cookies

– Wessanen’s: Baker’s Row Mini Oyster Crackers;

– Cookie Specialties’: Matt’s® Oatmeal Raisin Cookies

which have been claimed to be infringing at least Claim 7 of the ‘497 patent either directly or indirectly under the doctrine of equivalents.

Similarly, it has also been mentioned that cookies and/or products for making the same by companies like Unilever, Keebler, and Bremner, constitute to wilful infringement of at least Claim 1 of the ‘192 patent either directly or indirectly under the doctrine of equivalents. Some of the products of the specified companies include but for example:

– Unilever’s: Promise Buttery Spread;

– Keebler’s: Vanilla Wafers and Mini Vanilla Wafers;

– Bremner’s: Rippin’ Good® Vanilla Wafers

The plaintiffs seek relief from the court about its judgment and respective award of damages from the cookie companies for wilful infringement of their patents. We look forward to the analyze the final outcome on infringement but believe that this trend of university’s exclusive licensee suing potential infringers would grow on a larger scale going forward, with more technology transfer offices looking forward to granting exclusive licenses or sell the IP rights in totality.

Minusmita Ray, Patent Associate, IIPRD, [email protected]