Court Bounces Danisco DJ Premised on Pre-Patent Proclivities

A previous post reported on a declaratory judgment action brought by DuPont-owned biopharmaceutical company Danisco against Novozymes.  The two companies are both Danish and appear to be arch rivals.  As the court described it, they are “reputedly the two major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.”

Filed in federal court in San Francsico, Danisco’s complaint sought a judgment that the company’s Rapid Starch Liquefaction (RSL) alpha-amylase products did not infringe Novozymes’s U.S. Patent No. 8,252,573 (‘573 Patent) and that the ‘573 Patent is invalid.  The ‘573 Patent  is entitled “Alpha-amylase variant with altered properties” and is directed to an isolated variant polypeptide having alpha amylase activity and containing a proline substitution at position 188 (to yield a variant called “E188P”).

In the alternative, Danisco asked the court for a determination that its own U.S. Patent No. 8,084,240 (‘240 Patent) has priority over the ‘573 Patent.  The ‘240 Patent is entitled “Geobacillus stearothermophilus alpha-amylase (AMYS) variants with improved properties” and directed to an isolated variant of a truncated Geobacillus stearothermophilus enzyme also containing the proline substitution at position 188.

Last week the court dismissed the case, holding there was no justiciable controversy between the parties in connection with the ‘573 Patent because Novozymes had not engaged in any affirmative acts to enforce its patent rights against Danisco nor had Novozymes made any statements that it believed Danisco was infringing the ‘573 Patent. 

Danisco argued that Novozymes pursued the application that issued as the ‘573 Patent with the specific intent to sue Danisco for infringement, noting that Novozymes added the position 188 proline substitution to a claim late in prosecution after learning that Danisco’s ‘240 Patent would granted with such a claim.  Danisco asserted that under “all the circumstances” it should be obvious that Novozymes was positioning itself to charge Danisco’s RSL enzyme products with patent infringement.

Although the court conceded that the circumstances might reasonably suggest that Novozymes does want to enforce the ‘573 Patent against Danisco at some point, it ultimately disagreed with Danisco and held that events occurring prior to patent grant alone cannot support declaratory judgment jurisdiction:

The circumstances to which Danisco points, including the parties’ status in the industry, past litigation, and the prosecution history and timing, may all very well support a reasonable inference that Novozymes pursued the E118P claim in the ‘573 patent with the hope of wielding it against the RSL products, and even that Novozymes may still be harboring the intent to pursue infringement claims at a time of its own choosing.  Nevertheless, Danisco has not shown any affirmative act by Novozymes to enforce its patent rights.  While matters such as a prior litigation history and statements made during prosecutions sometimes support a conclusion that an actual controversy exists, there is no precedent for finding jurisdiction based on such pre-patent issuance events alone, without any affirmative act of attempted enforcement.

The court also found declaratory judgment jurisdiction problematic because the filing date of the complaint preceded the issue date of the patent by a day, stating “jurisdiction is also lacking for the more technical (but related) reason that Danisco filed this action prior to the time the patent even issued.” 

Though Danisco quibbled over this point based on the date and time the court clerk processed the complaint and placed the “received” stamp on it, the court brushed aside such details as inconsequential:

Regardless of the precise sequence of events, or what filing date the complaint should have been given, it is clear that Danisco filed this action no later than virtually simultaneously with issuance of the patent.  There is no indication that Novozymes did, or even could have, issued some implied or express enforcement threat so closely upon issuance of the patent such that it could be said to have taken any affirmative act to enforce its patent rights prior to the time the complaint was filed.  Accordingly the motion to dismiss must be granted.

This is not the first litigation victory for Novozymes over its arch rival.  Last year, Novozymes won an $18 million jury verdict against Danisco for infringement of another patent directed to certain alpha amylase variants.


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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.