Inherent Lack Of Novelty: When Prior Art Documents Destroy Novelty Without Express Disclosure Of All Features Of A Claim

by FPA Patent Attorneys
Contact

Inherency is not part of Australian novelty law according to the courts. But a recent appeal court decision considers novelty where there is either implicit disclosure or the claimed invention is the inevitable result of the skilled person following a prior art process. Each of the rulings outlined below (which may be considered to be aspects of inherent disclosure) succeeded or failed based on the quality of the testimony of the expert witnesses. The outcome demonstrates how critical it is, when involved in Australian patent litigation, to engage a specialist firm to ensure correct engagement of experts and mindful preparation of expert evidence.

Case

AU 752215 (the Patent) is an Australian patent held by Danisco A/S (Danisco) for a process of making a foodstuff in particular, bread. Danisco sued Novozymes A/S (Novozymes) alleging that their Lipopan Xtra product infringed the Patent. This appeal decision by Justices Greenwood, Jessup and Yates overturns aspects of Justice Bennett’s decision to find claims 1 and 7 invalid and therefore not infringed.

Invention

The Patent is for a process for preparing baked goods using an enzyme to generate an emulsifier and a second functional ingredient from constituents in the raw dough or starting material. The enzyme is then inactivated during baking. This process minimises the additives in the bread.
 
The relevant claims provide:

Claim 1   A process for preparing a foodstuff suitable for consumption comprising an emulsifier, the process comprising the steps of

(i) providing a food material containing a fatty acid ester and a second constituent;

(ii) contacting the food material with an enzyme such that an emulsifier is generated by the enzyme from the fatty acid ester and a second functional ingredient is generated from the second constituent;

(iii) inactivating or denaturing the enzyme to provide the foodstuff comprising the emulsifier, the fatty acid ester and the enzyme in an inactive form or a denatured form.

Claim 7   A process according to any one of the preceding claims wherein the foodstuff comprises at least the emulsifier and the second functional ingredient, and wherein the emulsifier and the second functional ingredient have been generated from the fatty acid ester and the second constituent of the food material by the enzyme.

When a combination of explicit and implicit disclosure destroys novelty

The Johnson patent (US 3,368,903) expressly describes every feature of claims 1 and 7 except that the monoglyceride produced by the Johnson process is not described functionally as an emulsifier. At first instance, Justice Bennett held that anticipation required the Johnson patent to expressly disclose the monoglyceride is an emulsifier.
 
The Full Court overturned this decision to find an implicit disclosure of the final feature sufficient to destroy novelty. As the skilled person knew a monoglyceride was an emulsifier at the priority date, there was implicit disclosure of this feature. Thus, claims 1 and 7 lacked novelty.
 
It was not expressly stated, but appears by implication in the decision, that it would not have been enough that the monoglyceride is, in fact, an emulsifier if the skilled person did not know that fact. This may be different from the United States or European Patent Office position.

Evidence of an inevitable result not required when relying on implicit disclosure

Danisco argued that implicit disclosure was not enough to destroy novelty in this case as the issue was whether a baker following the directions given in the Johnson patent, would have used a process as claimed in the patent in suit, including producing a foodstuff which contained an emulsifier. This argument required evidence of the inevitable result of following those directions which Novozymes did not prepare.

The Full Court dismissed this argument confirming it was ‘sufficient if the skilled addressee were able to perceive that the monoglyceride in terms disclosed in the Johnson patent was working as an emulsifier’.1 Thus, where there is sufficient express and/or implicit disclosure there is no need for evidence on the result of the disclosure.

An implicit disclosure must give clear and unmistakable directions to the invention

Following the findings on the Johnson patent, the court considered novelty in light of the Novo patent (WO98/26057). The Novo patent explicitly disclosed the phospholipase activity of the enzyme used. In order to anticipate the Patent, the Novo patent also needed to disclose the generation of a second functional ingredient. Novozymes argued the second functional ingredient was the product of the lipase activity of the enzyme.

It was clear from Example 9 of the Novo patent that the enzyme had lipase activity at pHs higher than those used in bread making but there was no express disclosure of lipase activity under conditions for bread making.

The Full Court agreed with Justice Bennett that ‘the skilled reader would have “to draw conclusions as to...activity at different pHs and [make] a comparison of the enzyme’s activity as a phospholipase and a lipase” if he or she were to come’ to the claimed invention.2 The drawing of these conclusions was not straightforward. If the lipase activity was too low, this issue could not simply be fixed by increasing the amount of enzyme because that could result in too much phospholipase activity.
 
Given the difficulty with identifying the right concentration and conditions for dual activity the Full Court agreed with Justice Bennett that ‘the Novo patent did not, even implicitly, disclose...the generation of a second functional ingredient’ from the lipase activity of the enzyme.3 The skilled person ‘might well have thought that such an outcome was within the range of reasonable possibilities, but the specification did not give him or her a clear direction, even an implicit one, towards that outcome’.4 Thus, novelty was not destroyed by implicit disclosure.

If there had been evidence that, at the priority date, the skilled person knew the enzyme has lipase activity when used at the concentration and pH for bread making, the implicit disclosure would have destroyed novelty.

The skilled person does not need to be aware of the inevitable result of following directions in prior art for inherent lack of novelty

A claim lacks novelty if the inevitable result of the skilled person following a process described in prior art is the invention. Novozymes argued a baker following Example 20 of the Novo patent would inevitably perform the process of claim 1 of the Patent. Justice Bennett held:

It is not sufficient for the purposes of Novozymes’ claim of anticipation by reason of the inherent activity of the enzyme only to provide information that enables the use of an enzyme in baking that will “inherently” result in the claimed process where, at the end of that use, the public will be none the wiser as to the integers of the claims....5

The Full Court overruled this to confirm that where the inevitable result of the skilled person following the direction in the prior art is the claimed process, that claimed process will lack novelty even if the skilled person is not made aware of that fact.

The skilled person does not need to have been practically able to follow the directions before the priority date

The Novo patent was published on 18 June 1998 and the priority date of the Patent is 21 July 1998. Danisco argued that the Novo patent did not destroy the novelty of their claims because it was fanciful to suggest that anyone beyond the Novo patent inventors could have obtained the enzyme deposited in Germany according to the Budapest Treaty,6 cloned it and used it to follow Example 20 before the priority date of the Patent.

Justice Bennett agreed ‘it was for the appellants “to establish that the enzyme would have been available to the skilled worker seeking to follow example 20 prior to the priority date.”’7 The Full Court commented that this requirement ‘would require a judgment in each case on the question whether a sufficient time interval had passed between the prior publication and the priority date of the patent of interest to permit, in a practical way, the skilled worker to obtain the wherewithal to convert the published information into a realistic, working, artefact.’8

The Full Court concluded that both the expression of the test for novelty in section 7(1) of the Patents Act 1990 and the General Tire case9 are explicitly hypothetical, for example,

... if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. [Emphasis added by Full Court]10

Thus, the Full Court concluded that it is not the following of the directions in prior art, nor even the ability to follow them, that amounts to anticipation: it is the content of the information. If the information contains directions which, if carried out, would constitute an infringement of the patent in suit, the invention under the latter is not novel. 

1. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [108].
2. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [141].
3. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [143].
4. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [143].
5. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [151].
6. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
7. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [173].
8. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [176].
9. The General Tire and Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457.
10. Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [177] quoting The General Tire and Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 [1972] RPC at 485-486.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© FPA Patent Attorneys | Attorney Advertising

Written by:

FPA Patent Attorneys
Contact
more
less

FPA Patent Attorneys on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.