Implicit disclosure : A recipe for anticipation
Novozymes A/S v Danisco A/S  FCAFC 6
Earlier this year, the Full Federal Court handed down its decision in Novozymes A/S v Danisco A/S, clarifying the approach to implicit or inherent disclosure under Australian law, and overturning the decision at first instance which potentially gave rise to a curious situation where performing a process described in the prior art could constitute infringement of a later patent.
Danisco A/S v Novozymes A/S: The first instance decision
Danisco A/S (“Danisco”), the patentee, initially sued Novozymes A/S (“Novozymes”) alleging that the sale of their baking enzyme, LipopanXtra, infringed the Patent. LipopanXtra is marketed as a natural lipase enzyme which increases the stability of the bread dough, and achieves the same effect as the addition of emulsifiers. The Danisco Patent was directed to processes for preparing baked goods using an enzyme to generate an emulsifier and a second functional ingredient, such as a fatty acid ester, wherein the enzyme is subsequently inactivated during the baking process. Novozymes consequently asserted that the claims of the Patent were anticipated by inherent teachings in the prior art.
One of the prior art documents cited by Novozymes, the Novo Patent, described the use of an enzyme which inherently possessed dual phospholipase/lipase activity for baking bread – although this dual activity was not explicitly disclosed by the Novo Patent. Novozymes argued that even if all the features of the Patent in suit were not explicitly disclosed, following the directions of the Novo Patent would inevitably result in generation of an emulsifier and a second functional ingredient by way of the dual enzyme activity, thus constituting an anticipation of the claimed process.
At first instance, Justice Bennett accepted the proposition established in The General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd  RPC 457 that a claim could be anticipated by a prior publication containing directions to use a process that inevitably resulted in something within the claim in question. Justice Bennett further acknowledged that although the Novo Patent did not explicitly disclose all the claimed features, following directions contained in the Novo Patent may nevertheless give rise to a situation where a person may infringe the Patent in suit. Despite this, Justice Bennett held that novelty will only be destroyed where following instructions in an earlier publication will inevitably produce the claimed result, and that result would furthermore be perceived by a skilled person.
Her Honour also suggested that even if following the instructions inevitably resulted in the claimed process, then the actual disclosure (the working of the invention) could not have been completed before the priority date of the Patent, due to restrictions on access to the micro-organism which produced the enzyme in question and the limited period of time between publication and priority dates. Our previous review of the first instance decision is available here.
The Novo Patent: An inevitable result and the need to work an invention
On the question of anticipation, the Full Federal Court reconsidered the Novo Patent which described, among other examples, a phospholipase (inherently having dual phospholipase/lipase activity), and its application in baking.
Novozymes had submitted at first instance that Example 20 of the Novo Patent (which described a method of baking using a phospholipase) would, if followed, inevitably anticipate the features of the claims. While the dual activity of the phospholipase could indeed provide an emulsifier and a second functional ingredient, there was no explicit disclosure in the Novo Patent that such dual activity would exist under the specific physicochemical conditions for making bread dough.
Claims of the patent anticipated
In determining whether the Novo Patent anticipated the claims, the Full Federal Court applied test from General Tire:
…if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
Interestingly, the appellant did not tender any experimental evidence that the process of Example 20 would inevitably have resulted in the claimed invention. However, the Court relied on Danisco’s own admissions to conclude that the amount of enzyme used in Example 20 was sufficient to result in the dual activity and that a skilled addressee, in following Example 20, would inevitably have worked the process in which two functional ingredients were generated from the starting constituents.
Question of inherent anticipation is hypothetical
Justice Bennett had also suggested in the first instance decision that that even if the Novo Patent constituted an anticipation, it could not have actually been worked before the priority date of the Patent due to restricted access to the enzyme and the limited time frame between publication and filing of the Patent in suit. However, this approach was rejected by the Full Court. The Full Court held that the question of inherent anticipation is hypothetical and as such was not concerned with what has happened or with what could have happened, but with what would have happened. The Court thus concluded that there was sufficient basis to suggest that the inevitable result of following the instructions described in the Novo Patent would be carrying out the method of the Patent in suit. Accordingly, the Full Court considered that claims 1 and 7 lacked novelty in light of the Novo Patent.
The Johnson Patent: An implicit disclosure
The novelty of the Patent was also considered in view of another prior art publication, the Johnson Patent dated 13 February 1968, which described
[a] lipase preparation…which has the ability to increase the extractable monoglyceride content of a dough…[and] retard the tendency of the baked goods obtained from the dough to become stale.
The Johnson Patent was dismissed at first instance for failing to explicitly disclose the features of an emulsifier and a second functional ingredient. However, the Full Federal Court considered that the Johnson Patent did in fact describe the features of claims 1 and 7 of the Patent in suit.
The Johnson Patent conceded that the exact mechanism resulting in the claimed improvement in the baked goods was not known. While the role of monoglycerides in improving the quality of the dough was broadly contemplated, the Johnson Patent failed to describe the specific function of the monoglycerides. At first instance, Justice Bennett acknowledged that monoglycerides of the Johnson Patent may in fact be emulsifiers, but nevertheless held that the Johnson Patent did not explicitly tell the skilled person that the monoglycerides were
acting as, or should be characterised as, emulsifiers.
Justice Bennett thus held that the Johnson Patent failed to anticipate the claims of the Patent.
Full Federal Court considers implicit disclosure novelty destroying
The Full Federal Court however considered that Her Honour had erred at first instance, and instead held that a skilled person, in 1998, would have understood that the monoglycerides, in terms disclosed in the Johnson Patent, were emulsifiers. Accordingly, the Full Federal Court found that
if a baker followed the directions given in the Johnson Patent to the letter, he or she would have worked a process as described in the Patent in suit, including by producing a foodstuff which contained an emulsifier.
Thus, for the claims of the Patent to be anticipated, it would be
sufficient if the skilled addressee were able to perceive that the monoglyceride in terms disclosed in the Johnson Patent was working as an emulsifier.
The Court thus overturned the decision at first instance, finding that this implicit disclosure, as perceived by the skilled addressee at the priority date, was sufficient to destroy the novelty of claims 1 and 7.
Lessons learned regarding the approach to implicit or inherent disclosures
This decision has clarified the approach to implicit or inherent disclosure under Australian law, and in particular, has resolved the first instance finding of Justice Bennett, which potentially allowed a scenario where working the prior art could infringe a later patent. In light of the Full Federal Court decision however, the claims of a Patent in suit may be anticipated where directions in a prior disclosure, when carried out, would inevitably infringe the invention as claimed.