Federal Circuit erases $9.15 million fee penalty—but ChromaDex’s vitamin B3 patents stay invalid

The story

The US Court of Appeals for the Federal Circuit has removed a $9,151,133 attorneys’ fee award from a long-running patent fight over nicotinamide riboside, a form of vitamin B3 used in dietary supplements. The October 30 ruling is a significant reprieve for ChromaDex and the Trustees of Dartmouth College, but it is not a patent revival. Their asserted claims remain invalid as patent-ineligible products of nature, and the infringement case against Elysium Health does not return.

The distinction is the point of the new decision. In 2023, the Federal Circuit affirmed summary judgment against claims from US Patent Nos. 8,197,807 and 8,383,086. The patents described orally administered compositions containing isolated nicotinamide riboside, or NR, with other ingredients, intended to increase biosynthesis of nicotinamide adenine dinucleotide, commonly called NAD+. NR occurs naturally in cow’s milk, where the court said it is present only in trace amounts and bound to whey protein.

ChromaDex argued that the claimed supplements differed meaningfully from milk because isolated NR could be bioavailable and increase NAD+ biosynthesis. The earlier panel was not persuaded. Among other weaknesses, it found that the claims did not require a particular quantity of isolated NR, did not specifically attribute the increase in NAD+ biosynthesis to that NR, and were broad enough to include forms that might remain bound to whey protein. That eligibility judgment remains the controlling outcome between the parties.

After winning on invalidity, Elysium sought fees under Section 285 of the Patent Act. That provision permits a court to award reasonable attorneys’ fees in an exceptional case. The Delaware district court concluded that ChromaDex’s position stood out as substantively weak because the Supreme Court’s 2013 Myriad decision had already established that merely isolating a naturally occurring molecule does not make it patentable. The court eventually awarded Elysium $9,151,133, including roughly $3.9 million incurred before claim construction.

The Federal Circuit reversed that award. Judge Raymond Chen, writing for a three-judge panel, agreed that Myriad mattered but rejected the idea that it was the beginning and end of the eligibility analysis. ChromaDex’s argument did not rest only on separating NR from milk. It also relied on asserted functional differences, potential significant utility and a Federal Circuit case involving beta-alanine supplements. Assessing that theory required considering the amount of NR, its role in the claimed biological result and whether the compositions had markedly different characteristics from their natural counterpart.

Those arguments ultimately lost, but the panel said that losing is not enough. Under the Supreme Court’s Octane Fitness framework, an exceptional case is one that stands out because of the substantive weakness of a litigating position or the unreasonable way the case was conducted. The appeals court found legal error in treating Myriad as automatically dispositive of whether ChromaDex’s defense was unreasonable. Its position, the panel concluded, was not so exceptionally meritless that fee shifting was justified.

The court also declined Elysium’s request to send the dispute back for another attempt to support an exceptionality finding. It reversed the award outright and assigned appellate costs to ChromaDex. Bloomberg Law independently reported the same practical result: ChromaDex escaped more than $9 million in fees even though the supplement claims remained nullified. The Federal Circuit labeled its disposition nonprecedential, limiting its formal authority in future disputes.

INNOVOX analysis: the decision creates a useful boundary for innovation disputes involving natural materials. Patent eligibility and litigation reasonableness ask different questions. A claim may be too close to nature to survive Section 101, yet the owner may still have a technically grounded argument about formulation, quantity, bioavailability or a new functional characteristic. Automatically turning every unsuccessful eligibility defense into an exceptional case would raise the cost of testing uncertain boundaries, especially for universities and smaller life-sciences companies licensing early research.

The ruling is not a license to draft natural-product claims loosely. The original invalidity analysis shows why measurable limitations matter: specifying an effective amount, linking it to the asserted result and defining a composition that is demonstrably different from what occurs in nature can be decisive. What to watch now is whether Elysium seeks further review and whether future panels treat this decision as persuasive. For inventors and licensees, the immediate lesson is narrower: an invalid natural-product patent does not, by itself, prove that enforcing it was exceptional litigation.

INNOVOX analysis

The ruling separates patent validity from litigation misconduct. Natural-product claims can fail under Section 101 without making the owner’s attempt to defend them exceptional under Section 285. That distinction preserves room to test technically and legally contested eligibility questions, while leaving courts free to shift fees when a position truly stands out as unreasonable.

What to watch

Watch whether Elysium seeks rehearing or Supreme Court review, and whether later Federal Circuit panels cite the reasoning despite its nonprecedential status. Life-sciences patent drafters should also watch how courts evaluate claimed quantities, bioavailability, functional results and causal links when a composition contains a naturally occurring molecule.