Neptune gets new U.S. krill patent, files lawsuits; Aker seeks re-examination

02-Oct-2012 - Last updated on 03-Oct-2012 at 13:52 GMT

In the latest development in the ongoing struggle over krill oil patent protection, Neptune Technologies and Bioressources has been granted a U.S. continuation patent and competitor Aker BioMarine has filed a request for re-examination of that patent. In addition, Neptune has filed additional infringement lawsuits based on this continuation patent.

On Tuesday, Quebec-based Neptune announced that it had been granted a second U.S. patent on its krill oil technology and products. Neptune said it had applied for this more than a year ago, and the United States Patent & Trademark Office (USPTO) had granted the patent after examination of prior art claims by Norway-based competitor Aker.

“Neptune is continuing the practice of continuing to protect its IP. It’s our normal course of action,” Mike Timperio, global sales manager of Neptune, told NutraIngredients-USA.

“You may want to downplay it, but it certainly shows that our patent protection action is following the right course. And we will win this patent war,” he said.

“The fact that the USPTO has allowed the Continuation Patent, after considering all the prior art and evidence submitted by Aker in the re-examination (of the ‘parent’ patent), is, for us, a clear indication of the strength and validity of the claims,” said Henri Harland, CEO of Neptune.

Original patent under re-examination

Aker had filed for re-examination of Neptune’s original patent, too. That request has been granted and the re-examination process is underway. It’s likely that the USPTO will grant Aker’s request to re-examine Neptune’s continuation patent awarded Tuesday.

"In practical matters this is the same story as with the parent '348’ patent, and we expect the USPTO's highly professional re-examination unit to not only grant our request for re-examination, but also subsequently reach the conclusion that the claims of the '351’ patent are un-patentable", said Matts Johansen, COO of Aker BioMarine.

After being granted the continuation patent, Neptune on Tuesday immediately filed new infringement lawsuits against Aker and its biggest North American customer, Schiff Nutrition and against the other major krill supplier, Israel-based Enzymotec and its main customer Mercola.com Health Resources.

First round of lawsuits on hold

Neptune had filed infringement lawsuits based on the original patent as well. In early February, the Delaware district court handling the cases put them on hold pending the outcome of the re-examination of the original patent. Neptune’s latest infringement lawsuits have been filed in this same court.

“We and our counsel strongly believe that we are not violating any appropriate intellectual property of Neptune,” said Eric Anderson, vice president of global sales for Aker. “There is a disagreement and we have to go through this process. It’s unfortunate that krill suppliers go through these patent wars because at the end of the day it interferes with our ability to promote the benefits of krill for human health.”

If Neptune prevails, it potentially could prevent competitors from selling krill oil products in the U.S. without first coming to some of licensing agreement with Neptune.

Aker has previously stated that in almost 9 out of 10 cases, when the USPTO agrees to re-examine a patent, as it has already agreed to do for Neptune’s original patent, that patent ends up either altered or thrown out completely, with those outcomes split about 50-50.

“We can’t blame them for spinning and trying to downplay what is happening. The reality is that we are staying the course,” Timperio said. “It’s getting late for Aker in terms of this whole thing.”

Neptune’s strategy of vigorous IP protection is not limited to North America. Timperio said the company would pursue the same course in Australia, where a similar patent struggle is underway, and elsewhere.