The companies are also exploring the formation of a Lutein and Zeaxanthin Trade Organization to boost research and education into the macular carotenoids.
“With this agreement, Kemin and OmniActive agree to cross license our current and future ‘use patents’ on lutein, zeaxanthin and their isomers, worldwide and royalty free,” said Sanjaya Mariwala, Managing Director & CEO of OmniActive Health Technologies. “This agreement removes patent road blocks, unleashes Kemin’s and OmniActive’s innovation for our customers worldwide and helps elevate the global usage of carotenoids.”
“Litigation brought us together to find common ground. We see great value in eliminating lutein and zeaxanthin deficiencies in the human population to optimize human health through nutritional guidance. To do this Kemin and OmniActive jointly commit to advancing the science supporting the human health benefits of carotenoids,” said Dr. Chris Nelson, President and CEO of Kemin Industries Inc.
The dispute started in August when OmniActive filed a complaint in the District Court for New Jersey for a declaratory judgement that its products do not infringe United States Patent Nos. 8,815,955 and 9,226,940. This was filed in response to cease and desist demands from Kemin regarding OmniActive's "What's Your B.L.U.E ? (Blue Light User Exposure)" marketing campaign.
Kemin subsequently filed a motion to dismiss this complaint in September, and followed this up with a complaint under Section 337 of the Tariff Act of 1930 with the International Trade Commission a seeking institution of an investigation, which the ITC has since launched.
After the ITC announced the launch of its investigation OmniActive petitioned the US Patent and Trademark office for Inter Partes Review, seeking cancellation of both the 955 and 940 patents.
To read our previous in-depth article about the legal differences ,please click here,
Both companies have now withdrawn all legal complaints, and agreed to cross license each other’s “use patents” and begin to form a Lutein and Zeaxanthin Trade Organization.
“The first step to ensuring global alignment is to create a Lutein and Zeaxanthin Trade Organization to further Lutein and Zeaxanthin research and education for all population groups across the world. The organization will be open to all industry members,” said Mariwala.
“The world is evolving, the importance of supplementation is growing, and Kemin and OmniActive are both committed to helping improve the health of our families through combined innovation and discovery,” said Dr Nelson.
Global cross licensing
The companies explained that the agreement to cross license their current and future "method of use patents" on lutein, zeaxanthin and their isomers globally is intended to increase the marketing claims available to both parties' customers, to the extent those claims are covered by OmniActive's or Kemin's method of use patents- current and future.
Both parties believe the global cross license will help their customers stay focused on developing and growing the market place.
However, OmniActive's Lutemax 2020's unique composition including lutein, RR-Zeaxanthin and RS-(meso)-zeaxanthin is not licensed to Kemin as a part of this settlement, nor is Kemin's ZeaONE patent for RR zeaxanthin from marigold licensed to OmniActive.