Novozymes A/S v Danisco A/S (No 2) [2013] FCAFC 55

Novozymes A/S v Danisco A/S (No 2) [2013] FCAFC 55

Because the parties agreed that claims 2-6, 8, 9, 14 and 15 should be revoked, those claims were revoked. The appropriate declaration was not that claims were 'invalid' but that, so far as claimed by claims 1-9, 14 and 15, the invention in Australian Patent No. 752215 was not a patentable invention for the purposes of s 18(1) of the Patents Act 1990 (Cth). The proposed order requiring an application to amend the specification under s 104 was unnecessary and beyond the proper function of the Court in the proceeding. On costs, a 15% discount to the appellants' costs before 16 October 2009 was appropriate to reflect issues on which they failed, but after the respondents rejected the 9...

Jurisdiction
Australia
Judgment Date
31 May 2013
Procedural Posture
Appeal From Federal Court Patent Proceeding Concerning Revocation and Costs / Heard on the Papers After the Full Court Upheld the Appeal, to Determine Further Orders, Revocation of Additional Claims, Release From Undertaking and Costs
Outcome
Further consequential orders made after the appeal; additional patent claims revoked; appellants released from undertaking; respondents ordered to pay specified costs of the proceeding before the primary Judge and the appeal.
Legal Topics
['revocation of Patent Claims' 'patentable Invention' 'offer of Compromise' 'calderbank Offer' 'costs Discretion' 'issues Based Costs']
['patents' 'costs'] ['revocation of Patent Claims' 'patentable Invention' 'offer of Compromise' 'calderbank Offer' 'costs Discretion' 'issues Based Costs']

Case Brief

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Procedural Posture

Appeal From Federal Court Patent Proceeding Concerning Revocation and Costs / Heard on the Papers After the Full Court Upheld the Appeal, to Determine Further Orders, Revocation of Additional Claims, Release From Undertaking and Costs

Legal Issues

  1. 1 ["Whether claims 2-6, 8, 9, 14 and 15 of Australian Patent No. 752215 should be revoked in light of the revocation of claims 1 and 7 and the Full Court's reasons" 'What declaration should be made to reflect the basis for revocation of the patent claims' 'Whether the appellants should be released from the undertaking as to damages given for a stay of the injunctive order' 'Whether the Court should order the First Respondent to apply for leave to amend the patent specification under s 104 of the Patents Act 1990 (Cth)' "What costs orders should be made for the proceeding before the primary Judge and for the appeal, including the effect of the appellants' offer of compromise"]

Ratio Decidendi

Because the parties agreed that claims 2-6, 8, 9, 14 and 15 should be revoked, those claims were revoked. The appropriate declaration was not that claims were 'invalid' but that, so far as claimed by claims 1-9, 14 and 15, the invention in Australian Patent No. 752215 was not a patentable invention for the purposes of s 18(1) of the Patents Act 1990 (Cth). The proposed order requiring an application to amend the specification under s 104 was unnecessary and beyond the proper function of the Court in the proceeding. On costs, a 15% discount to the appellants' costs before 16 October 2009 was appropriate to reflect issues on which they failed, but after the respondents rejected the 9...

Court Disposition

Further consequential orders made after the appeal; additional patent claims revoked; appellants released from undertaking; respondents ordered to pay specified costs of the proceeding before the primary Judge and the appeal.

Orders

  • ['So far as claimed by claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 14 and 15, the invention the subject of Australian Patent No. 752215 published on 12 September 2002 as Application No. 1999047942 B2 is not a patentable invention for the purposes of s 18(1) of the Patents Act 1990 (Cth).' 'So far as it relates to claims 2, 3,...