Federal Circuit Affirms Tossed $18 Million Jury Verdict


dupont_logo_mbaknolThe United States Court of Appeals for the Federal Circuit recently issued a decision in Novozymes v. Du Pont, where there was a two-judge majority and a dissent filed by Chief Judge Rader. The question dealt with whether or not the district court properly overturned the jury verdict with a judgment as a matter of law (JMOL) after the jury returned a verdict for the plaintiff and damages in excess of $18 million. Chief Rader thought there was substantial evidence to support the jury verdict, but Judges Schall and Bryson disagreed.

How can there be a difference of opinion about whether there was substantial evidence to support the jury verdict?


Novozymes A/S and Novozymes North America, Inc. (the plaintiff-appellant) appealed a decision relating to U.S. Patent No. 7,713,723 (the “’723 patent”) from the United States District Court for the Western District of Wisconsin to the Federal Circuit. Novozymes sued DuPont Nutrition Biosciences APS, Genencor International Wisconsin, Inc., Danisco US Inc., and Danisco USA Inc. (collectively, “DuPont”) in Wisconsin alleging infringement of the ‘723 patent.

The plaintiffs and defendants are competitors in the market for enzyme preparations used in a variety of commercial applications, including ethanol production. On May 11, 2010, Novozymes brought suit asserting infringement of the ’723 patent, the claims of which relate to particular modified enzymes that exhibit improved function and stability under certain conditions. DuPont defended on grounds of noninfringement and invalidity and filed counterclaims seeking a declaratory judgment that the claims of the ’723 patent were invalid for failing to satisfy the enablement and written description requirements of 35 U.S.C. § 112.

During the proceedings below, the district court granted summary judgment in favor of  Novozymes on the issue of infringement and denied DuPont’s motion for summary judgment of invalidity under the written description and enablement requirements. Ultimately, the case went to trial before a jury. At the conclusion of the trial, it was determined that the ’723 patent’s claims were not invalid on enablement or written description grounds. The jury awarded infringement damages to Novozymes exceeding $18 million.

At the conclusion of the trial, however, the district court granted DuPont’s post-trial motion for judgment as a matter of law (JMOL), determining that the claims of the ’723 patent were invalid under § 112 for failure to satisfy the written description requirement. Novozymes appealed.

Crux of the Matter

Much of this case deals with whether the disclosure of the so-called “2000 application” was sufficient. Novozymes filed U.S. Provisional Patent Application No. 60/249,104 on November 16, 2000 (“the 2000 application”). After a somewhat lengthy patent prosecution, Novozymes filed a new continuation application on December 22, 2009 (the “2009 application”), which claimed priority all the way back to the original 2000 application. The written descriptions of the 2009 application and the 2000 application were nearly identical, but Novozymes for the first time sought claims drawn specifically to BSG alpha-amylase variants at position 239. The ’723 patent issued from the 2009 application on May 11, 2010, with 17 claims.

The Federal Circuit explained that the question they needed to answer was whether the provisional patent application adequately described the invention. Judge Schall, writing for the panel and joined by Judge Bryson, wrote:

[T]he question before us is whether the 2000 application demonstrates to one of ordinary skill in the art that, by the application’s filing date, Novozymes had invented the particular alpha-amylase variants that Novozymes claimed almost a decade later in the ’723 patent. We conclude that it does not.

The Federal Circuit decided that the initial disclosure of the 2000 patent application was defective. Judge Schall explained:

In view of the record before us, including the disclosure of the 2000 application, we hold that no reasonable jury could find that the claims of the ’723 patent meet the written description requirement of § 112, ¶ 1, and that the district court therefore correctly entered judgment as a matter of law invalidating those claims. In contrast to the claims—which narrowly recite specific alpha-amylase variants that result from mutating a particular parent enzyme at a single amino acid position to yield distinctive functional properties—the supporting disclosure of the 2000 application provides only generalized guidance listing several variables that might, in some combination, lead to a useful result. Taking the claims as a whole rather than as the sum of their individual limitations, nothing in the 2000 application indicates that Novozymes then possessed what it now claims. Finally, the testimony of Novozymes’s experts does not overcome the fundamental deficiencies of the 2000 application’s written description.

Globally speaking, the Federal Circuit determined that the 2000 application did not contain disclosure of any variant that actually satisfies the claims found in the ‘723 patent. Furthermore, the Federal Circuit found that there was nothing on the record that suggested that Novozymes actually possessed such a variant at the time of filing.

This sounds like a relatively easy case, but there was more than meets the eye. There was support in the original 2000 application for each of the limitations found within the claims, but not support for the totality of the invention. Judge Schall wrote:

While the 2000 application provides formal textual support for each individual limitation recited in the claims of the ’723 patent, it nowhere describes the actual functioning, thermostable alpha-amylase variants that those limitations together define. Taking each claim—as we must—as an integrated whole rather than as a collection of independent limitations, one searches the 2000 application in vain for the disclosure of even a single species that falls within the claims or for any “blaze marks” that would lead an ordinarily skilled investigator toward such a species among a slew of competing possibilities.

In a nutshell, the Federal Circuit panel concluded that one of ordinary skill in the art reading the 2000 application would have understood that Novozymes had only predicted that some mutations at position 239 would yield variants with increased thermostability, not that they were in possession of those variants or that they had definitively identified any mutations that would do so.

Rader’s Dissent

There was, however, a dissent. Chief Judge Rader did not see this case the same way. In a brief dissent, he explained that he would have reversed the district court and reinstated the jury verdict. Rader wrote:

The jury answered in favor of Novozymes, and substantial evidence supports this determination. Therefore, I would reverse the grant of judgment as a matter of law and reinstate the jury’s verdict.

The fact that there is a two-to-one split at the Federal Circuit is hardly odd. Unfortunately, so too is it hardly unusual for there to be fundamental disagreements between the judges relative to simple, foundational questions about whether there was evidence a jury could have relied upon. Overturning a jury verdict ought to be rare, and it seems to me that when there is a difference of opinion about whether there is evidence to support the jury verdict, that necessarily means that there was evidence to support the jury verdict.


What is the point in having a jury if the verdict is going to be ignored? If the jury ignored the facts and law that is one thing, but that does not seem to be what happened here.

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