Nestlé and Mead Johnson - two of the biggest guns in infant nutrition - have become embroiled in a row over the design of bottles used by both firms to package their nutritional drinks.
In a complaint filed in a federal court in Delaware last week, Nestlé Healthcare Nutrition and Gerber Products Co (doing business as Nestlé Infant Nutrition) accused Mead Johnson of infringing design patent #D447,421, unfair competition and trade dress infringement.
The plaintiffs argue that while Mead Johnson has been licensed to make products in bottles covered by the patent under the Boost brand for Nestlé, it does not have the right to make any other products using the same bottle design.
Nestle: Mead Johnson was only licensed to use bottle design for Nestle Boost products – not its own drinks
They say: “Mead Johnson was granted a license to use the ‘421 patent solely for the purpose of supplying Nestle with the Boost line of products, packaged in bottles covered by the patent…
“[But] by September 2011, Mead Johnson had begun manufacturing, packaging and/or selling various products for its own benefit in bottles covered by the claim of the ‘421 patent.”
The allegedly infringing products in question include private label nutritional drinks for Walmart, Kroger and Sam’s Club which compete directly with Boost, claimed Nestle/Gerber.
“Mead Johnson manufactures the infringing products on the same manufacturing line that it uses to manufacture the Boost line of products. In fact, each bottle of infringing product is clearly stamped with the number of the ‘421 patent.”
Without Mead Johnson’s ‘malicious interference, Nestle would have won WIC contract…
They go on to accuse Mead Johnson of infringing the Lanham Act (federal trade mark law) on the grounds that consumers might be confused by the identical bottle designs as to the relationship between Mead Johnson and Nestle.
Finally, they claim that Mead Johnson’s recent bid for a contract to supply infant formula under the federal WIC (women, infants and children) nutritional supplementation program to Connecticut, Maine, Massachusetts, New Hampshire, Rhode Island and the Cherokee Nation and Seneca National tribal areas (NEATO) was “willful, fraudulent and malicious” because it included products packaged in bottles infringing the ‘421 patent.
”Without Mead Johnson’s malicious interference, Nestlé would have been awarded the WIC retail infant formula agreement again [Nestlé was previously the sole WIC program supplier of infant formula for the NEATO states and tribal areas].”
The plaintiffs demand a jury trial, damages and that Mead Johnson immediately stops manufacturing bottles that allegedly infringe the ‘421 patent.
Background to ‘421 patent
The patent in question was assigned in 2001 to Bristol-Myers Squibb Company, which went on to assign it to Novartis in 2005. Two years later, Novartis assigned it to Nestlé affiliate Nestec, which then licensed it exclusively to Nestlé Healthcare Nutrition.
In 2007, Mead Johnson was granted a license to use the ‘421 patent solely for the purpose of supplying Nestle with the Boost line of products, claims Nestlé.
A spokesman for Mead Johnson told FoodNavigator-USA: “We don't comment on active litigation.”