Danisco A/S v Novozymes A/S
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Arnold |
| Judgment Date | 08 December 2011 |
| Neutral Citation | [2011] EWHC 3288 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 08 December 2011 |
| Docket Number | Case No: HC 10 C 02358 |
[2011] EWHC 3288 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, 7 The Rolls Building
Fetter Lane, London, EC4A 1NL
Mr. Justice Arnold
Case No: HC 10 C 02358
Mr. Andrew Waugh Q.C. and Mr. Douglas Campbell (instructed by Arnold & Porter LLP) for the Claimant/Applicant
Mr. Simon Thorley Q.C. and Mr. Miles Copeland (instructed by Bird & Bird LLP) for the Defendant/Respondent
Introduction
I have before me two applications by the claimant in these proceedings, Danisco A/S. The first is for a stay of the proceedings pending a forthcoming hearing before the Technical Board of Appeal of the European Patent Office. Te second is for permission to use certain documents disclosed by the defendant, Novozymes A/S, in parallel foreign proceedings, including those before the EPO. For reasons that will appear, these two applications are more closely related to each other than one might anticipate.
Background
Danisco's claim is for revocation of Novozymes' European Patent (UK) 1 804 592 ("the Patent"). The Patent relates to pelleted animal feed containing enzymes to increase digestibility, and in particular to the coating with certain salts of enzyme-containing granules in order to protect the enzyme from degradation during a steam treatment process. The Patent was filed on 27 September 2005 with a claimed priority date of 27 September 2004 and was granted on 11 November 2009.
Danisco has a salt-coated enzyme granule product called Phyzyme XP TPT which it has been selling in the European Union since 2007. Novozymes contends that dealings in that product infringe the Patent and other intellectual property rights which derive from the same application. By contrast, Novozymes does not have a product based on the patent on the EU market at present. It applied for regulatory approval for a product called Ronozyme HiPhos GT on 19 October 2011. The evidence before me is that obtaining regulatory approval can take anywhere from one to two years, and so Novozymes will not be in a position to launch the product until some time between October 2012 and October 2013.
There is litigation between the parties concerning the Patent and related rights in Denmark, Germany, the Netherlands, Finland and the EPO, as well as in this country. The chronology is as follows.
On 12 March 2010 Novozymes started proceedings against Danisco in Denmark seeking a preliminary injunction.
On 30 March 2010 Danisco filed an opposition at the EPO.
On 17 June 2010 Novozymes started infringement proceedings against Danisco in Germany.
On 28 June 2010 Danisco started revocation proceedings in the Netherlands. In those proceedings, Novozymes counterclaimed for infringement. The trial was held on 11 February 2011.
On 19 July 2010 Danisco started the present claim for revocation. In its grounds of invalidity, Danisco attacks the validity of the Patent on grounds of lack of novelty over three items of prior art, obviousness over the same two and an additional two items of prior art, insufficiency and added matter. In contrast to what had happened in Denmark, Germany and the Netherlands, Novozymes did not counterclaim for infringement.
On 15 November 2010 Novozymes started proceedings against Danisco in Finland for infringement of utility models deriving from the application for the patent.
On 4 March 2011 Novozymes obtained a preliminary injunction in Denmark after an eight day hearing. Danisco has appealed against that decision and the appeal has subsequently been fixed for another eight day hearing between 28 February and 19 March 2012.
On 23 March 2011 Novozymes commenced substantive proceedings on the merits in Denmark.
On 22 June 2011 the Dutch court gave its judgment, holding that the patent was valid and had been infringed by Danisco. Danisco has appealed against that decision, but I have no information as to when the appeal is likely to be heard.
With commendable speed, the EPO Opposition Division heard and determined Danisco's opposition to the Patent on 7 July 2011. It held that the claimed inventions were obvious over International Patent Application WO 92/12645 ("D1" in the EPO proceedings, and referred to as "Jacobson" in the present proceedings) read together with International Patent Application WO 00/01793 ("D3" or "EK Marcussen 2"). It also held that none of a series of auxiliary requests filed by Novozymes cured this invalidity. It therefore revoked the Patent. On the other hand, it rejected Danisco's allegation of insufficiency.
On 8 July 2011 Novozymes filed appeal T1839/11 against that decision, thereby suspending its effect.
In the meantime, the trial of this claim had been fixed for 17 October 2011. Danisco instructed as its expert witness a Dr. Alfred Gaertner. Novozymes instructed two experts, Dr. Stephen Cole, an enzymologist, and Professor Simon Clegg, a physical chemist. Experts' reports were duly exchanged on 21 July 2011. At that stage, however, Dr. Gaertner had not been able to inspect Novozymes' disclosure documents.
In early August 2011 Dr. Gaertner informed Danisco's solicitors that he was unwell, but nevertheless he was able to meet with them in mid-August to discuss a reply report and to start considering Danisco's disclosure documents. Subsequently, however, his condition worsened very rapidly and sadly he passed away on 8 September 2011.
On 9 September 2011 Danisco issued an application "(1) to adjourn the trial of this action listed to commence on 17 October 2011 due to the very recent and unexpected death of the Claimant's expert witness and the impossibility of his replacement in time for trial; and/or (2) to stay the trial of this action until determination of the Defendant's appeal to the TBA of the EPO against the revocation of the patent in issue…"
On 14 September 2011 the parties were able to agree that the trial be adjourned to float from 19 March 2012 "with liberty to the Claimant (if so advised) to restore its application for a stay of proceedings." For some period after that, there were without prejudice discussions between the parties, but unhappily they did not result in a resolution of the matter.
On 31 October 2011 Danisco set about restoring the application for a stay.
On 2 November 2011 Danisco issued an application for permission to use two documents in parallel foreign proceedings.
Since the application for a stay was restored, there have been a number of developments which I must mention.
First, again with commendable expedition, the TBA has fixed the hearing of Novozymes' appeal for 28 June 2012.
Secondly, Novozymes has continued to give disclosure in these proceedings. Novozymes served its original list of documents on 15 December 2010. Since then it has served no less than five supplemental lists, on 22 June 2011, 22 August 2011, 7 September 2011, 28 October 2011 and 30 November 2011. Counsel for Danisco criticised Novozymes for this, and pointed out that Novozymes' own evidence shows that Novozymes had failed properly to understand the advice it was given by Novozymes' solicitors as to the scope of disclosure. As counsel for Novozymes pointed out, however, Danisco has been pressing Novozymes to give proper disclosure and Novozymes has now done so. This has involved Novozymes incurring considerable costs since 9 September 2011.
Thirdly, on 11 November 2011 the German court stayed the German patent infringement proceedings brought by Danisco pending the hearing before the TBA, although as I understand it there will be a trial of a utility model claim on 15 December 2011.
Fourthly, on 30 November 2011 Danisco notified Novozymes that it had found a replacement for Dr. Gaertner as its expert witness in these proceedings, namely a Mr. Meiners, who is a specialist in the stabilisation of enzymes. It is convenient to mention at this point that Danisco also has available to it, if needed, an expert in physical chemistry, namely a Professor Thomas, who assisted Danisco in the Dutch proceedings.
Fifthly, on 5 December 2011 Novozymes filed its grounds for appeal to the TBA. Novozymes has filed with those grounds some 16 auxiliary requests, some of which involve rewriting the claims. It has also filed further documents and evidence, including a declaration by Erik Schmidt Marcussen, one of the inventors dated 29 November 2011, in which he reports the results of an experiment to measure humidity during the steam pelleting of food and a declaration of Professor Jesper Bendix dated 20 August 2010 prepared, it would appear, for the purposes of the Danish proceedings. Reference is also made to a declaration made by Professor Clegg filed during the course of the proceedings before the Opposition Division.
Sixthly, on the first day of the hearing before me, counsel for Novozymes stated that Novozymes intended belatedly to bring a counterclaim for infringement of the Patent. On the second day, he produced a draft counterclaim and draft particulars of infringement, although he accepted that those documents require some further work.
Counsel for Novozymes sought to explain Novozymes' delay in bringing a counterclaim on the grounds that it did not have evidence that Danisco was committing acts in the United Kingdom that would be infringing if Danisco's product falls within the claims of the Patent until admissions as to that fact had been made by Danisco in evidence recently served on this application and by counsel for Danisco in his submissions. Counsel...
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