IP Law Daily Anticipation ruling regarding ethanol production patent overturned
Thursday, December 15, 2016

Anticipation ruling regarding ethanol production patent overturned

By Jody Coultas, J.D.

The U.S. Court of Appeals for the Federal Circuit has concluded that a Wisconsin district court erred in granting Novozymes A/S summary judgment of patent infringement on claims filed by U.S. Water Services, Inc. based on anticipation. There was a genuine dispute of material fact as to whether prior art anticipated every element of the patents-in-suit. The court, however, affirmed the district court’s finding that U.S. Water did not commit inequitable conduct before the USPTO (U.S. Water Services, Inc. v. Novozymes A/S, December 15, 2016, Wallach, E.).

U.S. Patent Nos. 8,415,137 (the ’137 patent) and 8,609,399 (the ’399 patent) disclose methods for reducing or preventing fouling equipment that processes ethanol through the use of phytase. The patents share a common specification and are related to one another as continuations of the application that also led to U.S. Patent No. 8,039,244 (the ’244 patent).

The United States District Court for the Western District of Wisconsin found that either International Publication No. WO 01/62947 A1 (Veit) or U.S. Patent No. 5,756,714 (Antrim) inherently anticipated the asserted claims. Specifically, the court found that the patents and the prior art both describe a method for using phytase in terms of ranges for dosage, temperature, and pH. Although "Veit and Antrim do not expressly identify the benefit that U.S. Water’s patents identify, they nevertheless inherently disclosed that benefit.

On appeal, U.S. Water argued that the district court erred in granting summary judgment because the court acknowledged the existence of a genuine dispute as to whether the reduction of "insoluble deposits of phytic acid or salts of phytic acids" as recited in the asserted claims was inherent in either Veit or Antrim through the use of phytase.

Anticipation. The district court erred in finding no genuine dispute of material fact as to whether U.S. Water’s patents were inherently anticipated because "the prior art discloses the conditions that will necessarily result in phytase reducing deposits," according to the court. There was evidence that practicing Veit and Antrim would not always result in deposit reduction. However, the district court disregarded the evidence, and improperly made credibility determinations and weighed conflicting evidence. U.S. Water’s own experts demonstrated that there was a dispute as to whether adding phytase in the manner disclosed in Antrim or Veit will necessarily lead to a reduction of insoluble organometallic salt deposits as claimed in the patents. Therefore, the grant of summary judgment was inappropriate.

Inequitable conduct. Novozymes failed to show that the district court erred in finding a genuine dispute as to a fact material to the inequitable conduct inquiry, according to the court. During the application for the ’244 patent, the examiner rejected certain claims in the application as obvious over certain prior art such as Veit. The amendment of the continuation application led to the ’137 patent. Novozymes argued that U.S. Water purposely withheld litigation documents related to a case involving the ‘244 patent from the USPTO, and that the ‘399 and ‘137 patents would not have issued had those documents been disclosed. However, there was no suggestion that, but-for the disclosures made during the litigation, the examiner would not have issued the ‘399 and ‘137 patents. The patent examiner was aware of the differences between the pending claims of the patents-in-suit and the ’244 patent. U.S. Water did not withhold or misrepresent information to the USPTO.

Because there was no error in determining the materiality prong of the inequitable conduct analysis, the court did not address intent.

The cases are Nos. 2015-1950 and 2015-1967.

Attorneys: Michelle Marie Umberger, John Singleton Skilton, Autumn N. Nero, David J. Harth, Brandon Michael Lewis; Colin Gene Sandercock (Perkins Coie, LLP) for U.S. Water Services, Inc. David Keith Tellekson, Ewa M. Davison, Phillip Decker, Elizabeth B. Hagan; Virginia Kay DeMarchi, Michael C. Saunders, II (Fenwick & West LLP) for Novozymes A/S and Novozymes North America, Inc.

Companies: U.S. Water Services, Inc.; Novozymes A/S; Novozymes North America, Inc.

MainStory: TopStory Patent FedCirNews

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