Competitors and distributors making such claims for their extracts “will now be compelled to modify their claims and/or enter into licensing agreements with Neptune" said Michel Timperio, Neptune’s vice-president, business development.
Chief executive Henri Harland added: "It is normal ethical business practice not to infringe on IP protection and a legitimate right and duty to enforce it when infringed… Neptune will always stand by its patents and will continuously enforce them.”
Asked whether Neptune was now planning to file patent infringement lawsuits against rivals making cardiovascular health claims about their krill extracts, Neptune R&D director Wael Massrieh told NutraIngredients-USA: "Neptune will not comment on its legal strategy for the time being."
But bosses were not surprised that rival Aker Biomarine had immediately challenged the validity of the patent, he added.
"We were expecting such a reaction from Aker and so we are not surprised. As is usually the case, when a patent is duly granted and issued, competitors will always claim that it is not valid.
"The patent is valid and issued, and Neptune will do what needs to be done to defend its intellectual property."
Aker: Claims are unpatentable
Aker Biomarine has filed a request with the US patent and trademark office (USPTO) for a re-examination of all claims covered in 8,057,825 ('Krill extracts for treatment of cardiovascular diseases').
Aker, which has also asked the patent office to re-examine Neptune’s recently-awarded composition patent (US patent no. 8,030,348), argues the claims in both patents are “unpatentable”.
Executive vice president sales and marketing Matts Johansen told NutraIngredients-USA: “Neptune obtained this patent by representing, contrary to the facts, that it was the first to discover the ability of krill oil to lower cholesterol and reduce platelet adhesion and plaque formation.
“The US patent office did not know, and was not informed by Neptune, of the numerous prior publications describing these same uses and benefits of krill oil. Aker BioMarine has, however, made the patent office aware of them.
“Thus, any claims granted by this patent could possibly incorrectly inhibit other krill marketers from making accurate claims.”
He added: “The patent re-examination process is like a compact patent prosecution process. Office actions and replies are exchanged, and at the end the USPTO issues its decision. However, the mere fact that a re-examination is opened is a very strong indication that the USPTO will at least restrict the claims that were originally granted.”
High stakes
While Aker and Neptune have both been singing from the same hymn sheet recently on the issue of unscrupulous firms peddling ‘fake' krill oil containing “next to no phospholipids”, they have been at loggerheads for years over intellectual property and other regulatory issues.
Most of the wrangling has been over patents, with Neptune recently launching two lawsuits against a series of rivals to enforce patent no 8,030,348, which covers marine phospholipids to which the omega-3 fatty acids EPA and DHA are bound.
The first, filed at the US district court in Delaware last month, accuses Aker Biomarine ASA, its US subsidiary Aker Biomarine Antarctic USA, Inc, and Schiff Nutrition International (which sells MegaRed supplements containing Aker’s Superba krill oil), of patent infringement.
The second, also filed in Delaware, levels the same allegations against Israeli krill oil supplier Enzymotec; its US subsidiary Enzymotec USA, Inc; Mercola.com Health Resources LLC (which sells krill oil Neptune claims infringe its patent); and Azantis, which distributes Enzymotec’s omega-3 phospholipids in the US.
Neptune: We have every right to defend our IP
Neptune alleges that the infringements have caused it “irreparable injury” and is seeking unspecified damages plus a permanent injunction preventing all defendants from selling products containing the allegedly patent-infringing krill oils in question.
Aker Biomarine has dismissed the suit as “baseless and frivolous”, while Enzymotec declared 8,030,348 as “invalid and unenforceable” and said it would “explore all available legal actions”.
However, Neptune’s Henri Harland said his firm had every right to defend its intellectual property.
“We are not surprised by the competition’s reaction because this valid and solid patent covers any marine phospholipid with EPA and DHA as is also found in krill oil. This implies that competition will not be authorised to sell krill oil in the US unless they reach an agreement with Neptune.”