The long legal battle between OmniActive Health Technologies and Kemin Industries over lutein and zeaxanthin patents is now over, after the pair decided to withdraw separate legal and regulatory complaints, cross license certain "use patents" and work together to establish a lutein and zeaxanthin trade association.
Under terms of the settlement, Kemin will withdraw its complaint at the International Trade Commission (ITC), and OmniActive will move to dismiss its New Jersey-based Declaratory Judgment lawsuit, as well as its two Inter Partes Review petitions at the U.S. Patent Office.
“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 and CEO of OmniActive. “
This is an effort to provide customers of both suppliers additional marketing claims and the opportunity to focus on developing and growing the marketplace. This cross license excludes unique products, compositions and patents—OmniActive Lutemax 2020’s unique composition of lutein, RR-zeaxanthin and RS-(meso)-zeaxanthin will not be licensed to Kemin, nor will Kemin’s ZeaONE patent for RR-zeaxanthin from marigold be licensed to OmniActive under the agreement.
“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," Mariwala noted.
Chris Nelson, Ph.D., president and CEO of Kemin, said the litigation ultimately forced the companies 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," he explained. “To do this, Kemin and OmniActive jointly commit to advancing the science supporting the human health benefits of carotenoids."
The new trade association will be designed to advance lutein and zeaxanthin research and education in various population groups around the world. The association will be open to all industry members interested in investing in innovation and advancement of macular carotenoids. The two companies are still working on the details of the new organization and said details will be available soon.