When Life Hands you Lemons, Make CoQ10July 27, 2017

In the Federal Circuit Decision of Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., the Court found three related Soft-Gel patents invalid for obviousness. The three patents describe a way to dissolve CoQ10 in monoterpenes for enhanced delivery to the body. The patents disclosed two suitable examples, limonene and carvone and derivatives thereof. However, prior to suit, the Patent Trial and Appeal Board found five references that affect the validity of the three patents. The first reference discloses the high solubility of CoQ10 in the monoterpene carvone. The second and third, U.S. Patent No. 7,588,786 and a dissertation, disclose the use of various essential oils as solvents for CoQ10, including peppermint, spearmint, and lemon oil. The fourth and fifth references teach that lemon oil contains about 90% limonene by weight and that the d form of limonene is about 98-100% of the limonene in most citrus oils.

Soft Gel attempted to argue that d-limonene is not the main constituent of lemon oil, the ‘786 patent teaches away from the claimed invention, and a person of ordinary skill would not have had a reasonable expectation of success regarding the combination [of CoQ10 and d-limonene]. However, the Court found that Soft Gel’s cited reference actually maintained that d-limonene was the main constituent of lemon oil. The Court also found that Soft Gel’s focused attack on the ‘786 patent was unpersuasive and did not preclude the Board’s decision because the decision was based on a combination of references. Finally, it was found that Soft Gel failed to apply the correct legal standard for obviousness of “a reasonable expectation of success” and instead applied the standard of “absolute predictability.”

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