EPLAW Patent Blog

NL - Danisco v Novozymes / Litigation costs post Bericap

Danisco A/S v. Novozymes A/S, Court of Appeal The Hague, 26 February 2013, Case no. 200.094.921/01

In these proceedings, Danisco sought to nullify Novozymes' patent, while Novozymes counterclaimed for infringement. This judgment only concerns the litigation costs, as the patent was invalidated by the EPO Board of Appeal pending the Dutch proceedings.

With regard to the litigation costs, Novozymes argued that in view of the Bericap decision of the CJEU (C-180/11 of 15 November 2012), Danisco could not claim reimbursement of the full litigation costs. According to Novozymes, it would follow from this decision that no reimbursement of full litigation costs is not possible in invalidation proceedings.

The Court of Appeal did not accept this argument. The court reasoned that the Bericap decision of the CJEU was limited to the specific circumstances of that case, in which there was no (apparent) threat of infringement. Since Danisco initiated the present proceedings with the aim to defend itself against an impending infringement claim, the litigation costs could be awarded. However, the court did lower the claimed award, as it found that some costs (for instance costs made by Danisco in anticipation of a potential negative outcome of the opposition proceedings) should not be taken into account.

Read the decision (in Dutch) here.

Head note: Paul van Dongen

UK - Danisco v. Novozymes

DuPont Nutrition Biosciences ApS (formerly Danisco A/S) v. Novozymes A/S, High Court of Justice, Chancery Division, Patents Court, London, UK, 7 February 2013, [2013] EWHC 155 (Pat)

The Patents Court granted Danisco’s application for documents disclosed by Novozymes in the course of the UK action to be used in proceedings elsewhere.

In 2010 Danisco commenced proceedings to revoke Novozymes’ patent, EP (UK) 1 804 592 and in late 2011 Novozymes counterclaimed for infringement. Before the action came to trial, the patent was revoked in proceedings before the EPO. Danisco subsequently applied for permission to deploy documents disclosed in the UK action in proceedings elsewhere in Europe.

The general rule under the Civil Procedure Rules is that disclosed documents can be only be used for the purposes of the proceedings in which they are disclosed unless they are referred to in open court. As the trial had not taken, the disclosed documents had not been referred to open court. However, at an earlier hearing in the dispute, Novozymes had requested an adjournment of the trial and this was granted by the Court on the condition that Danisco would not be prejudiced in litigation elsewhere by not being able to use the disclosed documents which would otherwise have been referred to at the trial.

Given that the permission to use the disclosed documents was the price that Novozymes had paid for the adjournment that it had previously been granted, Mr Justice Floyd gave Danisco permission to use the disclosed proceedings in proceedings elsewhere in Europe regarding the validity and/or infringement of the patent and related rights in the same patent family.

Read the judgment in English here.

Head note: Rob Fitt

NL - Novozymes v. DSM Food Specialties

Novozymes v. DSM Food Specialties, District Court The Hague, The Netherlands, 19 May 2010,  Case  No. 348157/HA ZA 093220, with thanks to Simon Dack, De Brauw Blackstone Westbroek

Novozymes holds a European patent concerning a method preparing dough comprising, amongst other things, adding a lipolytic enzyme having activity towards digalactosyl diglyceride and the phospolipid (EP 1 131 416). Adding this lypolytic enzyme is said to help produce emulsifiers in the dough which would enhance its quality. DSM introduced its Panamore product, a direct competitor of Novozymes’ Lipopan products, in 2008. Novozymes is of the opinion that DSM’s Panamore product infringes on Novozymes European patent. DSM’s defends itself by invoking added matter, insufficient disclosure, lack of novelty and lack of inventive step. The District court holds the Dutch part of Novozymes’ patent invalid due to insufficient disclosure (Article 83 EPC). DSM’s other defenses are therefore not discussed by the District Court.

Article 83 EPC prescribes that a European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by an average person skilled in the art. In other words, the disclosure of the invention must be reproducible without undue burden. The District Court finds that these requirement have not been met by Novozymes and refers to the claims of the patent as free-beer claims, meaning that by these claims Novozymes tries to protect something that everyone would want (free beer for instance), without clearly disclosing how the average skilled person could reach such desirable results.

Read the decision (in Dutch) here.