Kemin claimed that Piveg has violated a patent licensed to Kemin on purified lutein compositions, a nutritional eye-health boosting ingredient used in supplement and food products. But the US Court of Appeals three-judge panel this week denied the injuction.
"We strongly believe in the validity of our patents for the manufacture and compositions of purified lutein and disagree with this decision. We plan to pursue further review of the decision," said Elizabeth Nelson, general counsel for Kemin.
In January last year Kemin filed the injunction against Piveg alleging that the Mexican company had infringed two US patents held by Kemin for the manufacture of purified lutein. The injunction set out to prohibit Piveg from selling its purified lutein products for human consumption in the United States.
The patents at issue are US patents 5,382,714 and 5,648,564. Piveg claims that the scope of US patent 5,382,714 was broadly misinterpreted to apply to lutein 'suitable for human consumption' instead of the narrower patent subject, 'substantially pure' lutein crystals. The Mexican company claims that the patent is unenforceable due to relevant prior art (Tyczkowski and Hamilton, Research Note: Preparation of Purified Lutein and its Diesters from Extracts of Marigold, 1991 Poultry Science 70:651-54) that existed when Kemin filed its patent application.
According to Piveg, Kemin knowingly failed to disclose the prior art when filing the patent application in the US, making the patent unenforceable. On filing for similar patents in Japan and Europe, reported the Mexican company last year, Kemin was required to modify their patent application on the basis of this relevant prior art.
"We have developed our own proprietary processes and capabilities and will continue to defend our right to provide our high quality products to the US market. Kemin's allegation that Piveg is infringing these patents is frivolous and an attempt to eliminate competition through the judicial process rather than the marketplace," said at the time Roberto Espinoza, CEO of Piveg.
The inclusion of purified lutein in health food products as well as supplements, has been steadily growing as numerous peer-reviewed studies link the important eye-health benefits of the natural antioxidant lutein with reducing the risk of age-related macular degeneration and cataracts. Newer science also has suggested lutein may promote healthy skin.
In January this year a new technology developed by Kemin that allows the health ingredient lutein to be delivered to clear beverages achieved GRAS (Generally Recognized As Safe) status from the US Food and Drug Administration.
The new delivery method involves the use of a sucrose monolaurate emulsifier, called ClearTec, that coats Kemin's FloraGLO brand purified lutein. The lutein is successfully dispersed in clear, water-based beverages while maintaining optical clarity, according to the firm.