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Pretrial tactics cost defendant in patent caseSeptember 27, 2006

Kemin Foods sued Pigmentos Vegetales del Centro S.A. (PIVEG) for infringement of its patents on methods of producing purified lutein for human consumption. Prior methods typically required use of toxic chemicals such as toluene which could not be completely removed. The patents taught methods to purify lutein to greater than 90 percent pure. A jury found Kemin’s patents valid and some claims infringed. The court then ruled that the patents were not unenforceable because of inequitable conduct. PIVEG and Kemin both appealed. During the pretrial phase of the case, Kemin repeatedly attempted to obtain information about the specifics of PIVEG’s process, however PIVEG was hardly forthcoming. Finally, after finally going to Mexico to observe the process, Kemin found that much of the process was not currently in operation. Kemin was able to discover that PIVEG’s process infringed a second claim of the patents, but the lower court precluded Kemin from introducing expert testimony on the issue because it had developed too late in the proceedings. The Federal Circuit reversed, finding the expert report should have been admitted because Kemin did all it could to keep the issue alive throughout the pretrial phase of the case, and PIVEG’s refusal to provide information about its process caused the late expert testimony. The case was remanded for a determination as to infringement of this additional claim. Kemin also attempted to invoke section 295 of the patent statutes, which states that if the court finds a substantial likelihood that a product is produced by a patented process and the plaintiff, through reasonable efforts, has not been able to determine whether this is the case, the court may shift the burden to the defendant to prove the patented process is not used. Kemin argued that section 295 should apply to all processes used from the start of the litigation onward (PIVEG asserted it switched its process to a different, allegedly non-infringing process after the case was filed). The Federal Circuit declined to view section 295 this expansively, however left open the possibility that section 295 could be invoked again when the case returns to the lower court now that Kemin, though its expert testimony, can attempt to show the additional claim is infringed. This case shows the importance of being forthright in the pretrial discovery phase of patent litigation. Here, PIVEG’s unwillingness to provide Kemin with information about its process led the lower court to shift the burden of proof to PIVEG to show it did not infringe as opposed to Kemin having the burden to show infringement. Further, PIVEG’s behavior has caused it to incur additional attorney fees and costs, as the lower court must now decide whether the additional claim is infringed. If PIVEG had simply been forthcoming during discovery, no additional trial would be necessary, and it would not have had the burden to show that it did not infringe to avoid liability. To read the complete decision, log on to

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