On December 5, 2016 OmniActive Health Technologies, Ltd. (Morristown, NJ) and Kemin Industries, Inc. (Des Moines, IA) resolved their legal differences, “placing the importance of human health above litigation,” according to a press release issued by the companies. Both parties will withdraw all legal complaints, cross license each other’s “use patents” and begin to form a Lutein and Zeaxanthin Trade Organization.
On October 6, 2016 Kemin filed a complaint with the International Trade Commission (ITC) requesting an investigation under Section 337 of the Tariff Act of 1930 with respect to the unlawful and unauthorized importation of infringing products by OminiActive. OmniActive then filed two inter partes review petitions on November 21 with the United States Patent and Trademark Office challenging the patentability of two patents of Kemin: U.S. Patent Nos. 8,815,955 and 9,226,940.
“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 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,” added Dr. Chris Nelson, president and CEO of Kemin Industries Inc.
“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 details outlining the organization will be mapped out in the near future.
“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 Nelson.