Patent reissue won’t affect legal battle, says lutein player

By Shane Starling

- Last updated on GMT

Related tags: Patent, Patent application

New York-based OmniActive Health Technologies says the reissue of a lutein patent to Kemin Industries in June will not have any bearing on the legal dispute between the two lutein suppliers.

Kemin sued OmniActive for breach of its marigold-derived lutein patent in 2007 – a case that is ongoing – and said recently that its patent reissue from the United States Patent Office Board of Patent Appeals would strengthen its chances of winning the case in defense of its patent (5,382,714) in a Florida federal court.

Iowa-based Kemin said the patent reissue contained two additional claims relating to composition and process, something OmniActive disputes because it says patent reissues cannot be extended if the application to do so is made more than two years after the initial patent is issued.

The two-year rule

That occurred in 1995, while Kemin did not apply for renewal until at least 10 years later. At the time of the reissue in June, Kemin said the expanded patent strengthened its legal case against OmniActive.

But OmniActive business development director, Hiren Doshi, said since the original patent could not be expanded, Kemin’s case was therefore not strengthened.

Kemin was not able to be contacted before publication deadlines.

Chapter 35 of the US Code, section 251, states: “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.”

OmniActive has mounted an action against Kemin in the same Florida court, “seeking summary judgment of non- infringement”​, and is counter-suing Kemin for invalidity of its patent and unfair competition.

OmniActive claims to be the number two lutein supplier behind Kemin, which dominates the area.

Lutein is best known for its ability to combat age-related macular degeneration (AMD) and benefit eye health.

According to Chicago-based attorney, Janine A. Moderson, from the firm, Amin Talati, patent reissues are typically sought for three reasons:

(1) the claims in the original patent are too broad (the invention doesn't work as claimed or the claim is invalid because the broad claim covers an earlier reference);

(2) the claims in the original patent are not broad enough (i.e. they forgot to claim everything they were entitled to claim);

(3) there is some significant error in the specification of the original patent.

In regard to errors Moderson noted that new claims can only be issued when it is established that the error was made without deceptive intent; does not contain matter not found anywhere in the original application; and the new claim does not contain subject matter that was deliberately given up in order to obtain the original patent.

She said the two year deadline was absolute otherwise.

Kemin said the additional claims granted in the patent were:

1. “a lutein composition comprising (a) at least about 90% lutein having been extracted and purified from plant extracts which contain 10% or less of non-lutein carotenoids, (b) no traces of toxic chemicals that would render the lutein composition unsuitable for human consumption, and (c) significantly less than about 10% of non-lutein carotenoids obtained by purification of said plant extracts as well as …

2. a method for providing such lutein compositions to humans.”

Moderson said a legal principle known as “intervening rights”​ meant companies and individuals may be able to continue to sell, “products that were in actual existence prior to the issue date of the reissue patent so long as the product doesn't also infringe another claim that had been in the original patent and remains substantively unchanged in the reissue patent.”

AMD affects over 30 million people worldwide, and is the leading cause of blindness in people over 50.

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