In a previous post, I wrote about a patent infringement suit between Danish biopharm rivals Novozymes and Danisco, which are both active in developing enzymes used in production of biofuels.
In the suit, Novozymes has accused Danisco of infringing U.S. Patent No. 7,713,723 ('723 Patent) by selling alpha amylase enzymes including Danisco's GC358 product. See the complaint here: novozymes_complaint.pdf.
The '723 Patent is entitled "Alpha amylase mutants with altered
properties" and relates to variants of certain alpha amylases that
exhibit altered stability under high temperatures, low pH and other
conditions. The patented variants can be used for starch conversion in
Last month Judge Barbara B. Crabb of the U.S. District Court for the
Western District of Wisconsin denied Danisco's motion for summary
judgment of invalidity of the '723 Patent.
In the Opinion (Novozymes-Order), Judge Crabb rejected Danisco's argument that the patent is invalid for insufficient written description.
A U.S. patent must have an adequate written description to be valid.
This means the patent's specification (which includes the description
and figures, but not the claims) must convey to a person skilled in the
relevant technical field that the inventor actually invented and "had
possession" of the claimed invention.
Danisco argued that the '723 Patent - directed to a substitution of
an amino acid at position 239 in the alpha-amylase protein - was
inadequate because the written description lists position 239 as one of
33 possible positions for an "alteration" and lists a substitution as
just one possible type of alteration.
According to Danisco, that extensive variability means the '723 Patent identifies 8.589 x 1042 possibilities for experimentation to arrive at the claimed invention.
Despite "doubts" about the adequacy of the written description, Judge
Crabb concluded that Danisco did not meet its burden of proving
invalidity as a matter of law.
The opinion notes that Novozymes put forth expert testimony and other
evidence sufficient to create an issue of fact as to whether a person
of skill in the art would interpret the specification of the '723 Patent
as disclosing that substitutions at each of the 33 positions would lead
to improved stability of the alpha amylase.
The decision was a close one for Judge Crabb, who stated in the
opinion "[i]t is not without hesitation that I am denying defendants'
motion." This will be an interesting case to watch, and one that could
go down to the wire.
View more from Green Patent Blog.
Eric Lane is an intellectual property lawyer and registered U.S. patent
attorney at Luce, Forward, Hamilton & Scripps in San Diego, where
he is Special Counsel in the Intellectual Property and Climate
Change, Renewable Energy & Sustainable Technology practice
groups. Mr. Lane can be reached at or at firstname.lastname@example.org. He authors the Green Patent
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