Kerry - which has close to 250 individual patents in the field of food preservation - makes natural preservatives under its Accel brand that it says are protected by Canadian patent CA 2,690,586 issued in 2014, and US patent 11,071,304 issued in July 2021, and pending patents in Europe and China covering the same technology.
The patents describe treating plant material such as celery powder with a microorganism that converts some of the nitrate naturally contained in the plant into nitrite, and then curing or preserving meat using the plant-based nitrite as a curing agent.
Florida Food Products, meanwhile, sells cultured celery-based curing agents under the Veg Stable brand in the US and Canada.
FFP: Kerry is attempting to patent a ‘decades-old, USDA-regulated process’
According to a petition filed by Florida Food Products requesting an inter partes review of Kerry’s US patent, Kerry is attempting to patent a “decades-old, USDA-regulated process that allows meat processors to label meats as ‘natural’ by substituting synthetic nitrite with ‘natural’ nitrite derived from vegetables.
It adds: “US Patent 11,071,304 should never have issued because it claims an ancient, federally regulated meat preservation process using a plant-based nitrite curing solution. The PTAB has already found these nitrite curing agents to be ‘as old as the hills’ and used to cure meat for ‘hundreds of years.’”
Kerry: ‘We will strongly defend our intellectual property rights’
Kerry, which says it has made several attempts to resolve its beef with Florida Food Products without resorting to legal action, begged to differ, and filed a lawsuit in Canada in February accusing FFP of infringing its IP via selected Veg Stable products.
According to Kerry, “The Defendant has engaged in the activities described above with full knowledge of Kerry’s patent, and therefore ought to have known that their activities would infringe Kerry’s exclusive rights.”
Two months later in April 2022, the US Patent Trial and Appeal Board granted Florida Food Products’ request for inter partes review of Kerry’s patent on the grounds that there’s a reasonable likelihood it could prevail on at least one of the challenged claims.
In July 2022, Kerry fired back arguing that, “With the benefit of full consideration, the Board will appreciate that both of Florida Foods Products’ proposed grounds of rejection [of Kerry’s patent] are deficient” and that the “opinions” of Florida Food Products’ expert are “unscientific, incorrect,” and “should be given little to no weight.”
‘We will strongly defend our intellectual property rights’
Bert De Vegt, global vice president of food protection at Kerry, told FoodNavigator-USA that Kerry was confident it would prevail, adding:
“Following years of research and investment, Kerry was granted a patent in Canada for our novel technology invention which uses cultured celery as a natural curing agent.
“As the only producer in the world to have been granted such a patent we will strongly defend our intellectual property rights in all markets that this patent applies and are very confident of success,” added De Vegt, who said Kerry’s lawyers have also fired off letters to other companies it believes are violating its IP.
FFP: Patent is ‘invalid and should never have been issued’
Florida Food Products (FFP), which has filed a counterclaim in the court in Canada, told us: “FFP is confident that US Patent No. 11,071,304 is invalid and should never have been issued. Kerry claims to have invented a process for preparing a natural cure for meat. Those claims have been routinely questioned or outright rejected by patent agencies worldwide (e.g, EU, China)."
In its counterclaim, filed in May 2022, FFP added that the techniques described in Kerry's patent had been well understood and documented in the literature for years before Kerry's patent was filed: "The skilled person’s common general knowledge included methods of preparing curing agents involving nitrate-rich plant material and using bacteria to convert nitrate to nitrite."
The US Patent Trial and Appeal Board is expected to conclude its inter partes review of Kerry’s patent by April 2023, said Kerry, which noted that in the interim period, its patent remains enforceable and that damages from infringement continue to accrue from the time the patent was granted.