Novozymes A/S v. Genencor International, Inc. et al., No 05-160-KAJ, Aug. 24, 2006.
Jordan, J. Defendants were found to infringe an enforceable patent relating to alpha-amylase enzymes after bench trial. A bench trial on willfulness and damages will follow. The 64-page opinion also addresses claim construction.
In this first phase of a 4-day bifurcated bench trial ending March 9, 2006, the court issued its findings of fact and conclusions of law. The court rejected defendants’ narrow proposed claim interpretations. It further found defendants literally infringed claims 1, 3 and 5 of U.S. Patent 6,867,031. Defendants’ claim that the patent was invalid for obviousness and lack of enablement was also rejected. The court found prima facie obviousness, which was rebutted at trial with evidence of unexpected results. Defendants argued lack of enablement noting 1070 variants. The court ruled that large number alone was insufficient to show lack of enablement. The 95% homology requirement overcomes the enablement problem here. There was no inequitable conduct because there were no misrepresentations, certain omissions were not material, and no intent to deceive was proven. The prosecution laches defense also failed although the patent issued ten years after the effective filing date in 1995. The court was troubled that the patentee filed narrowing amendments motivated at least in part to delay prosecution while experiments to justify broader claims were conducted. This delay was not so egregious to hold the patent unenforceable.
