Judge finds in favor of Danisco, reverses ruling for Novozymes

By Holly Jessen | May 11, 2012

More than six months after Danisco and Genencor International were ordered to pay damages of $18.2 million for infringing on a Novozymes patent, a judge has reversed the jury’s decision. Judge Barbara Crabb of the U.S. District Court for the Western District of Wisconsin said in court documents that the Novozymes patent on an alpha-amylase enzyme used in the ethanol industry is invalid for lack of an adequate written description.

“Throughout this case, we were confident in our position that Novozymes’ patent is invalid and that Danisco has not infringed,” said Soonhee Jang, vice president, intellectual patent strategy and chief intellectual patent counsel for DuPont Industrial Biosciences. “We applaud the court's decision and believe the ruling will stand on appeal.”

Novozymes filed the lawsuit in May 2010, the same month the company’s U.S. patent 7,713,723 was issued. On Oct. 27 a jury ruled the defendants, Danisco and Genencor International, willfully infringed on Novozymes patent.  The judge’s new ruling vacates the judgment in favor of Novozymes, reversing that for a judgment in favor of Danisco. “The parties in this case have debated tenaciously many issues of infringement, invalidity and damages, but the focal point has always been the adequacy of the written description for the ‘723 patent,” she wrote in court documents. “Since the beginning of the case, I have questioned the validity of the patent in this respect.”

Danisco had not yet been required to pay any part of the damages because the company had appealed the decision, a spokesperson told EPM. A bond Danisco posted for far less than the amount of damages has subsequently been dissolved in light of the judge’s decision.

The judge also pointed to 10 motions before the court by both Danisco and Novozymes. Among other things, Danisco had requested a judgment that Novozyme’s patent was invalid as well as requesting a new trial while Novozymes had asked for additional damages and a permanent injunction against Danisco. The remaining motions in the case were denied as moot.