The dispute began in March 2012 when tomato lycopene giant LycoRed filed a lawsuit in New Jersey alleging that Indian firm EID Parry and Valensa International – which distributes Parry's natural tomato lycopene in the US - were infringing three of its patents*.
According to LycoRed, Valensa was also marketing its lycopene products as having benefits that were “uniquely associated” with LycoRed’s patented Lyc-O-Mato product, which provides a full complement of carotenoids and other organically occurring antioxidants.
At the time, LycoRed VP business development Doug Lynch said: “We will be seeking compensation, but more importantly we want their product removed from the market.”
The settlement: Parry can re-introduce lycopene to US market, with some modifications
Under the terms of the confidential settlement, Parry has acknowledged the validity of - and agrees not to challenge - LycoRed’s asserted patents.
However, it will be permitted to continue to sell its lycopene products in the US (it had previously withdrawn them from the US market after the lawsuit was filed), Valensa president and CEO Dr Rudi Moerck told FoodNavigator-USA this morning.
“We feel very good about this settlement and have agreed to take steps in our production processes to make sure we produce a product that is compliant with the agreement. We will also be making slight changes in our marketing to be in compliance.”
Asked whether he was confident that there would be demand for the reintroduced product, he said: “There are really only a couple of key players in this market - Parry and LycoRed, and I think customers want more than one supplier in the market.”
LycoRed's Lynch said that he was confident that customers would "know the difference" between rival products and Lyc-O-Mato, the health benefits of which are in part tied to its optimal particle size (enhancing bioavailablity), and supported by more than 30 clinical studies.
CEO Morris Zelkha added: “LycoRed invests millions of dollars in researching the efficacy and safety of its proprietary ingredients. It continues to differentiate itself from other companies in the market by using its proprietary processes to manufacture lycopene and unique compositions.
“Our patented Lyc-O-Mato is the only natural tomato lycopene extract in the market with bioactivity, safety, toxicity and efficacy supported by clinical studies.”
What are the patents at issue?
LycoRed is based in Beer Sheva, Israel; while Parry Nutraceuticals (a division of E.I.D. Parry (I) Ltd. and part of the Murugappa group), is based in Chennai, India.
*The patents in question cover lycopene-containing compositions, production processes and applications:
US patent #6,515,018 – issued in 2003 – covers a mixture containing lycopene and Vitamin E and its use in the prevention of LDL oxidation.
US patent #5,837,311 - issued in 1998 – is a process patent covering the industrial processing of tomatoes.
US patent #5,965,183 – issued in 1999 - covers a process for preparing stable lycopene concentrate in an essentially non-dissolving liquid and its uses.