The lawsuit, filed by Neptune at the US district court in Delaware last October, claimed Aker and Schiff (which sells MegaRed supplements containing Aker’s krill oil) infringed Neptune’s 8,030,348 patent, which covers marine phospholipids to which the omega-3s EPA and DHA are bound.
A second lawsuit leveled the same allegations against Israeli krill oil supplier Enzymotec; its US subsidiary Enzymotec USA; Mercola.com Health Resources (which sells krill oil Neptune claims infringe its patent); and Azantis, which distributes Enzymotec’s omega-3 phospholipids in the US.
Should Neptune prevail, it could stop its rivals from selling krill oil products in the US without first negotiating some kind of licensing deal with Neptune.
Schiff: 'Neptune’s claims lack merit'
However, the fact that the US Patent and Trademark Office (USPTO) recently granted a request made by Aker to re-examine the patent has prompted the new motion to stay the lawsuit, said Schiff in a press release.
“The motion to stay filing follows the USPTO’s grant of Aker’s request for re-examination of the ‘348 patent. Aker’s request for re-examination cited multiple prior art references that were not included in Neptune’s patent application.”
It added: “Schiff believes Neptune’s claims lack merit and the patent Neptune asserts is invalid. To date, the Delaware Court has not made any rulings regarding Neptune’s claims against Schiff and Aker, and the mere fact that Neptune has filed claims against Schiff and Aker does not in any way affect Schiff’s ability to continue to sell and promote its top-quality krill oil.”
Schiff and Aker entered into a supply agreement in July 2011 under which Aker agreed to supply Schiff with its Superba krill oil, added the firm.
“Aker has agreed to indemnify Schiff under the supply agreement for losses arising out of the patent litigation. Schiff and Aker have agreed to collaborate on future innovations under the supply agreement.”
Neptune: We knew this was coming. ‘It is part of the normal legal process’
Speaking to analysts and investors in a conference call earlier this week, Neptune chief executive Henri Harland said he fully expected competitors would file motions to stay Neptune’s complaints and that this was “part of the normal legal process”.
As for the patent re-examination process, he said: “Neptune is well prepared to defend and re-submit all the necessary arguments for the re-examination process and welcomes this opportunity to re-confirm the validity of its patents with the USPTO.”
He also stressed that the patent in question remained “valid and enforceable” during the re-examination process – which could take two to three years.
He added: “Neptune’s competitors will end up paying Neptune to get the right to sell krill oil in the US… They will have to negotiate rights and royalties to sell krill oil in the US market. We will be open to do so if we cannot produce it.”
Enzymotec was unavailable for comment as this article went to press.