At the time the two companies released no details about the deal that came about after OmniActive ceased pursuing a non-infringement claim against the action Kemin filed against it in mid-2007 for breaching its lutein and lutein composition patents.
The statement goes some way to clarifying the manner in which the two companies will proceed with respect to their various lutein compositions.
The deal means OmniActive can continue to sell the original, disputed formulation of its Lutemax Free Lutein outside of the US. Within the US, the version must be converted to formulations based on Omni’s new Lutemax 2020 technology, which is not in breach of the Kemin patent.
The transition must be completed during 2010.
Kemin’s US Patent No. 5,382,714 for ‘Process for Isolation, Purification and Recrystallization of Lutein from Saponified Marigold Oleoresin and Uses Thereof’ remains intact and enforceable in the US meaning the company can continue selling its FloraGLO lutein form as par usual.
The statement spells out that while the two parties have settled amicably and neither party had been found guilty of any wrongdoing, they will not be collaborating in the future,
It also contains a clause stating that Kemin will not sue customers who may have purchased the disputed versions of Lutemax before the resolution was reached on November 25 last year, or during the transition period due to expire this year.
The joint statement can be found here.
Kemin filed its suit against OmniActive on July 17, 2007 at the US District Court for the Middle District of Florida for infringing on methods pertaining to the isolation and purification of lutein and lutein compositions.
The patent at issue in the OmniActive suit was licensed exclusively to Kemin through a research collaborator and Catholic University of America in 1995.
A 2007 report from analysts, Frost & Sullivan, predicts the global lutein market will hit $124.5 million in 2013. In 2006 it was valued the market at $105.1 million. Lutein, a nutrient found in various foods including green leafy vegetables and egg yolk, has a ten-year-plus history in the dietary supplement market as a nutrient to reduce the risk of age related macular degeneration (AMD).
AMD affects the central part of the retina called the macula, which controls fine vision, leaving sufferers with only limited sight. AMD affects over 30 million people worldwide, and is the leading cause of blindness in people over 50.
However, despite structure-function claims being made in the US, the nutrient was one of hundreds that has failed to impress European Food Safety Authority (EFSA) scientists, who issued a negative lutein-eye health opinion in February.