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Univ sues over SmartBalance patents

Published: September 16, 2011
Section: Front Page


Brandeis is suing more than a dozen national food companies for patent infringement and resulting monetary damages, contained in a Sept. 9 filing in the federal district court in Madison, Wisc. The patents at issue stem from the formula used for the popular SmartBalance brand butter substitute, developed by a Brandeis professor and researcher in 1995.

SmartBalance’s holding unit GFA Brands and the university have accused, in the case known as Brandeis University v. East Side Ovens, some of the largest and most famous companies in the nation of violating the brand’s exclusive right to use the formula as purchased from Brandeis, including Nestle and their Tollhouse Cookie Dough, Pillsbury’s biscuits and crescent rolls, and Kellogg’s “Keebler elf” wafers and cookies.

All of the companies have been previously warned by the university and SmartBalance-GFA against illegally using the Brandeis-original formula. Since their use has continued, Brandeis and GFA have now brought suit seeking an injunction to force them to stop and repay profits made from it.

Brandeis’ patents “are based on the discovery made by Professor K.C. Hayes and research scientist Dan Perlman, which showed that a ratio of saturated fats to polyunsaturated fats lowered cholesterol better than only eating polyunsaturated fats,” Irene Abrams, associate provost for innovation and director of the Office of Technology Licensing, said. The patent was officially issued in 1998.

Hayes, still at Brandeis, developed the ratio and accompanying scientific discovery that saturated fats could actually be good for health in his research on fatty acids and human lipids, in collaboration with Perlman. Hayes’ research continues and his work at Brandeis in both capacities is ongoing.

“This finding was surprising at the time because the belief [before] was that saturated fats were always bad for you and this proved that in the right ratio, eating saturated fats improved cholesterol,” Abrams said. She added that SmartBalance is based on this ratio and that since Brandeis has said it alone may legally do so, the university believes the larger companies to be in violation.

As a part of the contract that gave SmartBalance-GFA exclusive rights, Brandeis receives considerable royalty payments in exchange. (The university makes at least $1.6 million per year from its more than 300 patents, and much of this amount is derived from this landmark one and its famous brand.)

And is the exclusivity provided to SmartBalance that empowered GFA to exercise its right, contracted to it by Brandeis, to enforce that privilege in court. Brandeis, as holder of the patent, is the named plaintiff in the case while GFA, as exclusive licensee, is leading the case. Lawyers for both entities are involved, according to Andrew Gully, the university’s senior vice president for communications.

Brandeis University was also a plaintiff, along with the nation’s other top research institutions, chiefly Stanford, in another recent patent case, Stanford v. Roche. It claimed that universities had primary ownership rights to their professors’ inventions in all cases where the research involved federal funds. The Supreme Court, in a June opinion written by Chief Justice John Roberts, and with a 7-2 vote, ruled against the colleges and limited their patent ownership generally.

But Hayes’ research did not employ federal funds and thus will not be affected by the Roche decision at all, Abrams said, and Brandeis is confident this time of finding infringement by the food companies. Brandeis and GFA are also suing for recovery and even punitive damages against them.