Companies implicated in DSM’s infringement lawsuit move to invalidate patents with counterclaim

18 Apr 2023 --- Months after Royal DSM filed a lawsuit against the Mara Renewables Corporation and Algal Omega-3 (AO3), the two plaintiffs reveal they have filed a counterclaim against their accusers. Moreover, the companies have also issued a challenge to DSM’s microbial oil purification and fermentation patents with the European Patent Office (EPO).

The patents in question – EP 3 530 740 B1 (EP 740) and EP 2 576 801 B1 (EP 801) – are two of the three patents alleged to have been infringed by Mara Renewables and AO3 in DSM’s original filing and pertain to DSM’s algae-based docosahexaenoic acid (DHA) lipids.

Additionally, the counterclaim states that the patents from DSM’s original claim should not have been eligible for a patent in the first place, asserting that they are “invalid, including for lack of novelty, obviousness, insufficiency, added matter and, or for claiming non-patentable subject matter.”

The lawsuit and counterclaim deal with algal lipid fermentation and extraction policies.“Mara’s legal team has thoroughly assessed DSM’s assertions and consider them to lack merit,” says Dr. Mark Scaife, managing director and COO of Mara Renewables. “Mara has its own robust patent portfolio and respects the patent rights of others. Accordingly, Mara always strives to ensure its freedom to operate, and we believe DSM’s allegations to be misdirected.” 

“The validity of patents can be called into question when the owners of the intellectual property attempt to broadly assert their rights.”

Protecting property
Mara states that it saw the need for and began working to produce sustainable and efficient algal lipids such as DHA in 2005 and has since developed its own technologies and intellectual properties for its fermentation and extraction processes. 

“We were one of a small number of technology pioneers focussed on the development and protection of novel processes for the production and extraction of high quality, clean label, compliant and sustainable algae-derived omega 3s,” Scaife stresses.

“Hence, we will vigorously defend and protect our freedom to operate and ensure our customers may continue to depend on Mara and AO3 for their supply of algal DHA omega 3 oils,” he adds.

Infringement timeline
DSM won a similar patent infringement lawsuit regarding its biotin production process earlier this year.However, when DSM initially revealed in January that it had filed the lawsuit, Gareth Barker, SVP of global marketing and business development at DSM, previously told NutritionInsight: “We developed algal-based nutritional lipids over 35 years ago and were the first company to bring these products to market.”

This initial filing pertained to three patents – EP 740, EP 801 and EP 1 921 155 B1 – the latter of which was left out of the plaintiff’s countersuit.

DSM’s lawsuit asked for financial compensation for both past and ongoing infringements and requested that the court order the two companies to cease any and all production or sale of DHA oil produced using its patented technologies.

“DSM believes Mara and AO3 are using three patents without permission,” stated Barker. “These specific patents focus on protecting DSM’s DHA oil products themselves, the aqueous processes and enzymatic extraction methods used to produce these ingredients.”

“The patents vary in scope, either protecting products or processes and remaining lifetime,” he underscored. “The youngest patent will last until 2031. We have confidence in the court case and our patents. In fact, the EPO recently ruled in our favor regarding one patent in the lawsuit. We are confident in the robustness of the patents.”

To the point, in February, DSM won an infringement lawsuit regarding its biotin production process that was patented in China. The Supreme People’s Court ruled against the Anhui Tiger Biochemical Company and the Anhui Tiger Vitamin Industry and ordered the companies to stop production and pay damages to DSM.

By William Bradford Nichols

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