Landmark decision regarding the Law of Novelty in Australia

On 4 February 2013, the Full Court of the Federal Court of Australia handed down its decision in Novozymes A/S v Danisco A/S [2013] FCAFC 6. In its decision, the Court upheld an appeal by Shelston IP’s client, Novozymes, from an earlier 2011 decision of Justice Bennett. An aspect of the decision of particular note is the finding that the novelty of a patent may successfully be challenged where the invention is not expressly disclosed in full in the prior art, but where the inevitable result of following instructions contained in the prior art is the working of the patented invention.

 

Danisco’s patent claimed a process for preparing a foodstuff, including the addition of an enzyme to a food material to generate two functional ingredients. Danisco sued Novozymes for patent infringement in respect of its product called “Lipopan Xtra”. Novozymes cross-claimed, challenging the validity of the patent on a number of grounds, including lack of novelty. It was in the context of one of the prior art documents, the “Novo patent”, that the question of ‘inevitable result’ arose. Novozymes argued that even if all the integers of the Danisco patent were not expressly disclosed in the Novo patent, the inevitable result of carrying out instructions contained in the Novo patent would be a working of the process claimed in the Danisco patent.

At first instance, Justice Bennett accepted that a prior publication which contains a direction to do something which inevitably or inexorably results in something within the claim in question may deprive such claim of novelty. Such a proposition is derived from the English Court of Appeal decision in The General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457, which has been applied by Australian courts on numerous occasions. However, Justice Bennett held that where a claim is for a process with identified results, novelty will only be deprived where following of instructions in the earlier publication will both inevitably produce the identified results, and those results would be perceived or understood by the skilled addressee to have occurred.

Delivering the primary judgment on this issue in the Full Court, Justice Jessup applied the reasoning in General Tire, without also imposing a requirement for an understanding or knowledge of the patented process. As the Court was satisfied that there was sufficient basis for concluding that the inevitable result of following the instructions contained in the Novo patent was the carrying out of the claimed method, this was sufficient to invalidate the claims of the Danisco patent.

Justice Jessup (with whom Justices Yates and Greenwood agreed) also considered whether an alleged invention must actually be worked, or be capable of being worked, before the priority date in order for a party to rely on inevitability of result. In this case the Novo patent had been published only a month before the priority date of the Danisco patent. At first instance, Justice Bennett had concluded that, practically, there would not have been adequate time for the process to be carried out before the priority date. This formed a further basis for her Honour’s finding that the Novo patent did not anticipate the Danisco patent.

Justice Jessup rejected this suggestion. The Patents Act defines the prior art base with respect to publication before the priority date, and it is the content of the information that amounts to anticipation, not the doing of the act or even the ability to do it.

The first instance decision had created a tension between anticipation and infringement, in that following the instructions contained in a prior publication might result in infringement of a later patent, but would not necessarily anticipate it. The Full Court’s decision resolves this tension. If directions in the prior art can be shown to lead inevitably to the carrying out of the alleged invention, there will be grounds to invalidate the patent, even where there is no express disclosure on the face of the document.

Shelston IP Lawyers acted for Novozymes in these proceedings.