Novozymes A/S v Danisco A/S [2013] FCAFC 6

Novozymes A/S v Danisco A/S [2013] FCAFC 6

Claims 1 and 7 of Australian Patent No 752215 (the patent in suit) are not novel as they are anticipated by the Johnson and Novo patents: following the instructions in those prior art documents would inevitably result in performing the claimed invention. The claims, as construed, are clear and do not offend the requirement of s 40(3) of the Patents Act, and the specification does not on its face admit lack of novelty or inventiveness such as to render the claims not a manner of manufacture.

Parties
Appellant: Novozymes A/S; Appellant: Novozymes Australia Pty Ltd (ACN 001 420 677); Respondent: Danisco A/S; Respondent: Danisco Australia Pty Ltd (ACN 096 139 392)
Jurisdiction
Australia
Judgment Date
04 February 2013
Procedural Posture
Appeal / Appellate Judgment (full Court)
Outcome
Appeal allowed in part; patent revoked so far as it relates to Claims 1 and 7; certain orders of the primary judge set aside; further submissions invited on other claims and costs.
Legal Topics
Patent Validity, Clarity of Claims, Novelty/anticipation, Manner of Manufacture
Intellectual Property Patent Validity Clarity of Claims Novelty/anticipation Manner of Manufacture

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Parties

Novozymes A/S

Appellant

Novozymes Australia Pty Ltd (ACN 001 420 677)

Appellant

Danisco A/S

Respondent

Danisco Australia Pty Ltd (ACN 096 139 392)

Respondent

Procedural Posture

Appeal / Appellate Judgment (full Court)

Legal Issues

  1. 1 Whether claims 1 and 7 of Australian Patent No 752215 lack clarity under s 40(3) of the Patents Act 1990 (Cth)
  2. 2 Whether claims 1 and 7 are anticipated (not novel) in light of the prior art base, including the Johnson and Novo patents
  3. 3 Whether the invention claimed is a manner of manufacture for the purposes of s 18(1) of the Patents Act

Ratio Decidendi

Claims 1 and 7 of Australian Patent No 752215 (the patent in suit) are not novel as they are anticipated by the Johnson and Novo patents: following the instructions in those prior art documents would inevitably result in performing the claimed invention. The claims, as construed, are clear and do not offend the requirement of s 40(3) of the Patents Act, and the specification does not on its face admit lack of novelty or inventiveness such as to render the claims not a manner of manufacture.

Court Disposition

Appeal allowed in part; patent revoked so far as it relates to Claims 1 and 7; certain orders of the primary judge set aside; further submissions invited on other claims and costs.

Orders

  • The declaration made in paragraph 1, the orders made in paragraphs 2 and 6, and the certificate given in paragraph 14, of the orders made by the primary Judge on 20 April 2011 be set aside.
  • So far as it relates to Claims 1 and 7, Australian Patent No 752215 be revoked.