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Williamson buys Danisco food colorants business from DuPont
F O C US business, particularly related to new sources of shale gas. Original Source: European Rubber Journal, 21 Jan 2014, (Website: http://www.european-rubberjournal.com), © Crain Communications Ltd 2014
Williamson buys Danisco food colorants business from DuPont DD Williamson & Co (headquartered in Louisville, KY) has acquired DuPont’s food colorants business for an undisclosed sum. The business functioned as a unit within DuPont’s Nutrition & Health segment and it essentially consists of assets and activities that were inherited as part of the $6.3 bn takeover of Danisco in June 2011. DuPont had retained the Danisco brandname for the food colorant product lines, which comprise mainly annatto and other carotenoid pigments in the yellow to orange part of the spectrum. These pigments are marketed to the dairy, dessert, bakery, snack, culinary and beverage sectors. For the time being, production of Danisco food colorants will continue at the Madison, WI plant (125 km west of Milwaukee). However, in due course equipment and inventories will be moved to Williamson’s existing manufacturing complex at Port Washington, WI (about 40 km north of Milwaukee). Original Source: Chemical and Engineering News, 23 Dec 2013, 91 (51), 10 (Website: http://www.cenonline.org), © American Chemical Society 2013
LITIGATION Clariant loses appeal against Sudarshan pyrazolone yellow verdict The Court of Appeal has endorsed the original verdict of the High Court, Chancery Division (London) to the effect that Sudarshan had not infringed Clariant’s patents for the manufacture of pyrazolone yellow (PY-191). Sudarshan Chemicals (headquartered in Pune, India) had been producing pyrazolone yellow at its Roha plant (125 km west of Pune) and marketing the pigment under the brandname Sudafast Yellow-132. Towards the end of 2009, Clariant began issuing allegations of patent infringement and threats of adverse commercial consequences for customers and potential customers for MARCH 2014
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Sudafast Yellow-132. At first, Sudarshan tried to resolve the matter by arranging for its research scientists to discuss and explain its manufacturing process details to Clariant. Sudarshan also stopped promoting and selling its yellow pigment in export markets, so as not to antagonise Clariant. The Indian company was confident that its research team, led by Dr Satya had not infringed Clariant’s patents. However, Clariant refused to come to an amicable agreement and it refused to retract its threats to pigment customers. Nevertheless, Clariant did not actually sue for patent infringement! So, Sudarshan took the initiative and filed a petition in the London High Court for the Clariant patents to be revoked on the grounds of “obviousness.” The original Clariant patent on the process for making the pyrazolone yellow pigment was EP 0361431, for which the application was filed on 27 September 1989 and officially published on 4 April 1990. The process was also covered by US Patent 5047517. Clariant went on to file an application for a new patent on 21 June 2001 and this was published in January 2002 as EP 1170338, describing the manufacture of a polymorphic form of PY-191 (namely the beta-form). In this patent, Clariant claimed the use of a mixture containing 10-90% of the beta-form of PY-191 for pigmenting varnishes, polymers, printing inks, aqueous or solvent-borne pigment preparations, electrophotographic toners and developers, powder coating materials, inks, preferably inkjet inks, colour filters, and for colouring seeds. Sudarshan claimed that the “new patent” EP 1170338 lacked novelty. The inevitable result of carrying out the synthesis described in Example 1 of the “old patent” EP 0361431 was the production of a wet cake containing 100% beta-form PY-191. Carrying out this synthesis with the type of obvious variations that would be introduced in order to commercialise the pigment product would also lead to wet cake containing 100% beta-form PY-191. In his verdict promulgated in June 2012, Judge John Baldwin (of the London High Court, Chancery Division) stated that: Sudarshan was not guilty of patent infringement; that
Clariant had wrongfully claimed that Sudarshan was guilty of infringement; and that Clariant had issued unlawful threats to potential customers of Sudarshan. He also accepted Sudarshan’s claim that it had suffered severe financial losses over the previous three years as a result of discontinuing export sales of its yellow pyrazolone pigment and he decreed that Clariant would be ordered to pay compensation to Sudarshan in respect of this loss of potential sales revenue. (See also ‘Focus on Pigments’, Dec 2012, 6-7). Clariant lodged an appeal. On 13 August 2013, the London Court of Appeal upheld Judge Baldwin’s verdict. Sudarshan was awarded costs and damages intended to compensate for the harm suffered as a consequence of Clariant’s wrongful threats. Mr Rajesh Rathi (Head of Sudarshan’s Pigments Division) said: “Our estimate of the loss is $4.8 M per year, based on projected sales of Sudafast Yellow-132 in countries protected by the second patent. Our losses are bigger than simple direct customer sales because we had invested in a new production line at Roha to produce Sudafast Yellow-132. We suspended our export promotion (following harassment by Clariant), so the new production line was dormant and we therefore incurred a capital loss of around $2.4 M. This was the first time that an Indian company had challenged a European patent in a European Court. Sudarshan showed great courage in taking on a German multinational, challenging the validity of its patent. We are extremely happy that we were given a fair trial in the law-courts. This victory sets an important precedent for Indian manufacturers. It may open up trade opportunities for them and give them the courage to challenge patents in international courts. Our case shows that where a longestablished European company claims that an Indian manufacturer is infringing its intellectual property rights, the Indian company should not just assume that the threat is lawfully made. In this case, the Courts found that the threat of patent infringement by Clariant was indeed unlawful.” Original Source: Sudarshan Chemical Industries, 162 Wellesley Road, Pune 411001, India, tel: +91 20 26058888, website: http://www.sudarshan.com (14 Aug 2013) © Sudarshan 2013
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Williamson buys Danisco food colorants business from DuPont DD Williamson & Co (headquartered in Louisville, KY) has acquired DuPont’s food colorants business for an undisclosed sum. The business functioned as a unit within DuPont’s Nutrition & Health segment and it essentially consists of assets and activities that were inherited as part of the $6.3 bn takeover of Danisco in June 2011. DuPont had retained the Danisco brandname for the food colorant product lines, which comprise mainly annatto and other carotenoid pigments in the yellow to orange part of the spectrum. These pigments are marketed to the dairy, dessert, bakery, snack, culinary and beverage sectors. For the time being, production of Danisco food colorants will continue at the Madison, WI plant (125 km west of Milwaukee). However, in due course equipment and inventories will be moved to Williamson’s existing manufacturing complex at Port Washington, WI (about 40 km north of Milwaukee). Original Source: Chemical and Engineering News, 23 Dec 2013, 91 (51), 10 (Website: http://www.cenonline.org), © American Chemical Society 2013
LITIGATION Clariant loses appeal against Sudarshan pyrazolone yellow verdict The Court of Appeal has endorsed the original verdict of the High Court, Chancery Division (London) to the effect that Sudarshan had not infringed Clariant’s patents for the manufacture of pyrazolone yellow (PY-191). Sudarshan Chemicals (headquartered in Pune, India) had been producing pyrazolone yellow at its Roha plant (125 km west of Pune) and marketing the pigment under the brandname Sudafast Yellow-132. Towards the end of 2009, Clariant began issuing allegations of patent infringement and threats of adverse commercial consequences for customers and potential customers for MARCH 2014
O N
PIGMENTS
Sudafast Yellow-132. At first, Sudarshan tried to resolve the matter by arranging for its research scientists to discuss and explain its manufacturing process details to Clariant. Sudarshan also stopped promoting and selling its yellow pigment in export markets, so as not to antagonise Clariant. The Indian company was confident that its research team, led by Dr Satya had not infringed Clariant’s patents. However, Clariant refused to come to an amicable agreement and it refused to retract its threats to pigment customers. Nevertheless, Clariant did not actually sue for patent infringement! So, Sudarshan took the initiative and filed a petition in the London High Court for the Clariant patents to be revoked on the grounds of “obviousness.” The original Clariant patent on the process for making the pyrazolone yellow pigment was EP 0361431, for which the application was filed on 27 September 1989 and officially published on 4 April 1990. The process was also covered by US Patent 5047517. Clariant went on to file an application for a new patent on 21 June 2001 and this was published in January 2002 as EP 1170338, describing the manufacture of a polymorphic form of PY-191 (namely the beta-form). In this patent, Clariant claimed the use of a mixture containing 10-90% of the beta-form of PY-191 for pigmenting varnishes, polymers, printing inks, aqueous or solvent-borne pigment preparations, electrophotographic toners and developers, powder coating materials, inks, preferably inkjet inks, colour filters, and for colouring seeds. Sudarshan claimed that the “new patent” EP 1170338 lacked novelty. The inevitable result of carrying out the synthesis described in Example 1 of the “old patent” EP 0361431 was the production of a wet cake containing 100% beta-form PY-191. Carrying out this synthesis with the type of obvious variations that would be introduced in order to commercialise the pigment product would also lead to wet cake containing 100% beta-form PY-191. In his verdict promulgated in June 2012, Judge John Baldwin (of the London High Court, Chancery Division) stated that: Sudarshan was not guilty of patent infringement; that
Clariant had wrongfully claimed that Sudarshan was guilty of infringement; and that Clariant had issued unlawful threats to potential customers of Sudarshan. He also accepted Sudarshan’s claim that it had suffered severe financial losses over the previous three years as a result of discontinuing export sales of its yellow pyrazolone pigment and he decreed that Clariant would be ordered to pay compensation to Sudarshan in respect of this loss of potential sales revenue. (See also ‘Focus on Pigments’, Dec 2012, 6-7). Clariant lodged an appeal. On 13 August 2013, the London Court of Appeal upheld Judge Baldwin’s verdict. Sudarshan was awarded costs and damages intended to compensate for the harm suffered as a consequence of Clariant’s wrongful threats. Mr Rajesh Rathi (Head of Sudarshan’s Pigments Division) said: “Our estimate of the loss is $4.8 M per year, based on projected sales of Sudafast Yellow-132 in countries protected by the second patent. Our losses are bigger than simple direct customer sales because we had invested in a new production line at Roha to produce Sudafast Yellow-132. We suspended our export promotion (following harassment by Clariant), so the new production line was dormant and we therefore incurred a capital loss of around $2.4 M. This was the first time that an Indian company had challenged a European patent in a European Court. Sudarshan showed great courage in taking on a German multinational, challenging the validity of its patent. We are extremely happy that we were given a fair trial in the law-courts. This victory sets an important precedent for Indian manufacturers. It may open up trade opportunities for them and give them the courage to challenge patents in international courts. Our case shows that where a longestablished European company claims that an Indian manufacturer is infringing its intellectual property rights, the Indian company should not just assume that the threat is lawfully made. In this case, the Courts found that the threat of patent infringement by Clariant was indeed unlawful.” Original Source: Sudarshan Chemical Industries, 162 Wellesley Road, Pune 411001, India, tel: +91 20 26058888, website: http://www.sudarshan.com (14 Aug 2013) © Sudarshan 2013
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