Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282

FEDERAL COURT OF AUSTRALIA

Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 Citation: Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282

Parties: DANISCO A/S and DANISCO AUSTRALIA PTY LTD (ACN 096 139 392) v NOVOZYMES A/S and NOVOZYMES AUSTRALIA PTY LTD (ACN 001 420 677)

File number: NSD 1968 of 2008

Judge: BENNETT J

Date of judgment: 29 March 2011

Catchwords: PATENTS – construction of claims – clarity – claim narrower than specification – meaning of "an enzyme" – meaning of "generated from" – meaning of "functional ingredient" – meaning of "inactivating or denaturing the enzyme" – construction difficult – not render claim invalid – clear construction available PATENTS – construction of claims – based on language of independent claim, second constituent does not include water – water stated as a second constituent in specification and dependent claim – patentee says reference to water is a "mistake" – whether water can be constituent of independent claim PATENTS – construction of claims – limitation by result – inactivated or denatured enzyme – standard of inactivation – workable standard – no significant or material amount of active enzyme PATENTS – invention – relevance of Invention Disclosure Statement to construction of claims – relevance of Invention Disclosure Statement to inventive step – relevance of Invention Disclosure Statement to characterisation of invention PATENTS – infringement – whether infringement by supply of product pursuant to Patents Act 1990 (Cth) s 117 – ss 117(2)(a), (b) and (c) – whether indirect infringement as joint tortfeasor PATENTS – validity – novelty – understanding of skilled reader following directions in prior publication – whether following directions would disclose the process – whether following directions would disclose the results of the process being essential integers of the claims – whether there was disclosure of products of the process as functional ingredients – whether information in prior publication discloses the integers of the claimed process PATENTS – validity – novelty – anticipation by use – whether anticipation by "inevitable result" – inherent activity of enzyme disclosed – whether clear and unmistakable directions to the process of the claims where claims include specified result and meaning of prior information – whether, where disclosure is incomplete in prior publication, completion by following directions must be publicly available prior to priority date – whether anticipation by "inevitable result" where resulting information not available prior to priority date – enzyme and clone deposited – hypothetical use – whether enzyme could in fact have been obtained for use prior to priority date – whether information equating to the result was disclosed prior to the priority date – whether skilled addressee would know that result of use of enzyme in prior art document was claimed process – whether necessary for anticipation by inevitable result for directions in prior art document to have been able to be followed by skilled addressee before priority date of the patent PATENTS – validity – novelty – "whole of contents" citation pursuant to paragraph (b)(ii) of "prior art base" definition – identification of "information" under paragraph (b)(ii) of "prior art base" definition – drafting of notional claims – whether permissible to draft notional claims with hindsight – notional claims alter words used in consistory clause – whether notional claims fairly based – whether notional claims contain information that anticipates the claims of the patent PATENTS – validity – obviousness – inventive step – "problem and solution" approach – whether material in specification is part of problem or solution – whether necessary for lack of inventive step to prove skilled addressee would try each integer of process – whether reference in specification to enzyme from unpublished specification made enzyme part of common general knowledge PATENTS – manner of manufacture – whether lack of manner of manufacture apparent on face of specification – whether new substance, new characteristic of a known substance, new use or new method – cross-reference to unpublished priority application – statement of incorporation by reference – whether whole of unpublished priority application can be taken into consideration – whether reference to nature and characteristics of enzyme incorporated the whole of the prior document – whether disclosures of unpublished priority application describe invention