ChromaDex Stands Out, But Not In A Good Way – Patent

The law of patent eligibility was pretty quiet for decades until
the Supreme Court breathed new life into Section 101 invalidity
challenges in a series of decisions starting in 2010 with
Bilski v. Kappos. In its current state, the law has
repeatedly been described as a “mess.” Courts have used
more delicate language: “the law of patent eligibility has
perhaps become unpredictable and unclear on the fringes.”
Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *1
(D. Del. Mar. 18, 2019). Although the rise of eligibility
challenges has hardly been a boon for patentees, one silver lining
is that, with the law so “unpredictable and unclear,”
patentees that lose on patent eligibility are very rarely on the
hook for attorneys’ fees. They typically have some way of
arguing that an adverse outcome on patent eligibility was far from
certain, and an award of attorneys’ fees would be
unwarranted.

Chief Judge Connelly was having none of that in ChromaDex,
Inc. v. Elysium Health, C.A. No. 18-1434-CFC, 2024 WL 1255520
(D. Del. Mar. 25, 2024). ChromaDex and its co-plaintiff, Dartmouth
College, asserted patents in 2018 claiming an isolated form of a
naturally occurring vitamin present, in non-isolated form, in
cow’s milk. But that argument faced a huge obstacle. Five years
before ChromaDex filed its complaint, the Supreme Court held in
Association for Molecular Pathology v. Myriad Genetics
that merely isolating a natural substance does not give rise to
patentable subject matter. 569 U.S. 576, 580 (2013). Worse, when
Elysium filed its inevitable summary judgment motion based on
Myriad, ChromaDex in Chief Judge Connolly’s view
“essentially ignored” the Supreme Court’s
“dispositive” holding. ChromaDex only referred to
Myriad once in its summary judgment opposition, and the
court described that reference as “confusing–if not
misleading” because Myriad plainly foreclosed
ChromaDex’s argument that any change to the molecule rendered
the resulting compound patent eligible.

Turning to the “exceptional case” standard for
awarding attorneys’ fees, the court concluded that
“ChromaDex’s litigation position generally and with
respect to Myriad specifically was so lacking in substance
that it ‘stands out’ from the dozens of [Section] 101
challenges I have encountered as a judge in the last five
years.” The parties will now turn to determining the amount of
fees that ChromaDex owes to Elysium.

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