Novozymes Prevails on Willful Infringement Action Involving Enzyme for Ethanol Production
By Robert Dailey
In an opinion issued last Friday, Judge Kent Jordan
awarded Novozymes reasonable royalty damages and double damages for willful
infringement for Genencor's infringement of U.S. Patent No. 
6,867,031. Reuters reports that Genencor, a wholly owned
subsidiary of Danisco, will need to pay about $4 million in damages.
Novozymes had already prevailed in an earlier trial that
found three claims of the patent valid and infringed by Genencor. Last Friday's opinion results from a separate
October 2006 trial that focused on remedies.
The Novozymes patent covers alpha-amylases useful in the
manufacture of fuel-grade ethanol. In
particular, three of the claims cover engineered Bacillus stearothermophilus
alpha-amylases that have a specific deletion of two amino acids. Genencor's product, Spezyme Ethyl®, used
such an enzyme. Novozymes filed suit
against Genencor on the day that the patent issued, and notified Genencor of
its infringement. Yet Genencor continued
selling its product for 18 more months.
Genencor defended its conduct by arguing that it was relying on an opinion of counsel that held that the Novozymes claims were obvious in light of a 1989 journal article that disclosed the same amino acid deletion on a different bacterium. Genencor also claimed that it had relied on Judge Jordan's initial decision not to issue a preliminary injunction.
The district court rejected these arguments. Even though Genencor claimed to be relying on
its invalidity opinion, it was also prosecuting a patent application before the
USPTO directed to the same amino acid deletion in another Bacillus stearothermophilus
alpha-amylase. Under the Knorr-Bremse
analysis, courts may look at the broad context of the defendant's conduct in
determining whether its reliance on an opinion of counsel is indeed reasonable. In this instance, the court held that
Genencor could not simultaneously argue that the Nonozymes' technology is
obvious and make the opposite representation to the PTO regarding its own
patent application. Genencor could not
explain away this conduct except to argue that this is only one factor. The judge agreed, but held that it is one
very substantial factor.
The district court issued a permanent injunction against
further sales of infringing alpha-amylases. This should benefit Novozymes immensely. Prior to Genencor's introduction of Spezyme Ethyl® in 2004, Novozymes
had controlled 80% of the market for these enzymes.
Novozymes A/S v. Genencor Int'l, Inc., No. 05-cv-160-KAJ (D. Del. 2007).
Robert Dailey, Ph.D., is a physical chemist and a third-year law student at the University of North Carolina at Chapel Hill. Dr. Dailey was a member of MBHB's 2006 class of summer associates, and is a regular Patent Docs contributor.
Comments