DCT

1:19-cv-01902

Novozymes North America Inc v. Danisco US Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-01902, D. Del., 05/28/2020
  • Venue Allegations: Venue is alleged to be proper in Delaware as both Defendant entities are incorporated in the state.
  • Core Dispute: Plaintiff alleges that Defendant’s OPTIMASH® DCO+ protease product induces infringement of a patent on a method for improving the efficiency of fuel ethanol production.
  • Technical Context: The case concerns the use of specific enzymes in the biochemical industry to optimize the process of converting starch-based feedstocks, such as corn, into biofuel.
  • Key Procedural History: The complaint notes extensive prior litigation between the parties, indicating a long-standing and sophisticated competitive relationship. After the filing of this complaint, an inter partes review (IPR) proceeding was instituted against the asserted patent (IPR2020-00464). In a final written decision, the Patent Trial and Appeal Board (PTAB) cancelled the asserted claims 1 and 4, among others. This cancellation, subject to appeal, presents a significant challenge to the viability of the infringement claims as pleaded.

Case Timeline

Date Event
2005-02-08 '419 Patent Priority Date (Provisional filed)
2006-08-17 '419 Patent family PCT Publication
2010-10-26 U.S. Patent No. 7,820,419 Issued
2013-12-20 First of three ISRs citing '419 patent family allegedly mailed to Danisco
2018-06-12 Novozymes presentation allegedly cites '419 Patent at industry workshop
2019-06-10 Accused Product (OPTIMASH® DCO+) launched
2019-10-08 Original Complaint served on Defendants
2020-05-28 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,820,419 - "Fermentation Product Production Processes"

  • Patent Identification: U.S. Patent No. 7820419, "Fermentation Product Production Processes," issued October 26, 2010.

The Invention Explained

  • Problem Addressed: The patent background identifies a general need for "further improvement of fermentation product production processes," such as those used to create ethanol from starch-containing materials ('419 Patent, col. 2:7-9).
  • The Patented Solution: The patent describes a multi-step process for producing alcohol. The key inventive concept is the introduction of a specific protease treatment step. After an initial liquefaction step breaks down starch into dextrins, the resulting "liquefied mash" is treated with a protease before the subsequent saccharification step begins ('419 Patent, col. 2:15-16). This protease treatment is intended to break down proteins and release free amino nitrogen (FAN), which serves as a nutrient for the fermenting organism (e.g., yeast), thereby improving fermentation rates and overall alcohol yield ('419 Patent, col. 3:8-14).
  • Technical Importance: By improving yeast nutrition through a dedicated protease treatment, the process aims to increase the speed and total yield of ethanol production, which are critical efficiency metrics for commercial biofuel plants ('419 Patent, col. 3:11-14).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 4 (Compl. ¶33).
  • Independent Claim 1 requires:
    • (a) liquefying said starch-containing material with an alpha-amylase;
    • (b) treating the liquefied mash from step (a) with a protease before initiating step (c);
    • (c) saccharifying in the presence of a carbohydrate-source generating enzyme;
    • (d) fermenting in the presence of a fermenting organism to produce the alcohol.
  • The complaint reserves the right to assert additional claims (Compl. ¶33).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Defendants' enzyme product, "OPTIMASH® DCO+" (Compl. ¶18).

Functionality and Market Context

  • "OPTIMASH® DCO+" is described as a "thermostable protease" that is marketed and sold to ethanol producers for use in "dry grind ethanol plants" (Compl. ¶¶ 19, 20). The complaint alleges that Defendants instruct customers to dose the product "into liquefaction" and market it as a "stand-alone product" that can be used "without having to change their alpha amylase" (Compl. ¶21). The product is part of Defendants' "XCELIST™ Ethanol Solutions platform" (Compl. ¶21).

IV. Analysis of Infringement Allegations

'419 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) liquefying said starch-containing material with an alpha-amylase; Ethanol producers who purchase OPTIMASH® DCO+ are instructed to use it within their existing liquefaction processes, which employ an alpha-amylase. ¶39 col. 4:1-8
(b) treating the liquefied mash from step (a) with a protease before initiating step (c); OPTIMASH® DCO+ is the accused "thermostable protease." The complaint alleges that when customers add this protease "into liquefaction," it treats the mash as required by the claim. ¶40 col. 4:61-64
(c) saccharifying in the presence of a carbohydrate-source generating enzyme; Defendants' customers are alleged to perform saccharification as part of the conventional ethanol production process that Defendants' product is designed to be used in. ¶41 col. 6:43-51
(d) fermenting in the presence of a fermenting organism to produce the alcohol. Defendants' customers are alleged to perform fermentation using a fermenting organism to produce ethanol, the final step in the process induced by Defendants. ¶41 col. 6:1-4
  • Identified Points of Contention:
    • Scope Questions: A central issue concerns the claim language "treating the liquefied mash from step (a) ... before initiating step (c)." This raises the question of whether the claim requires a distinct, sequential process where liquefaction (a) is completed before protease treatment (b) begins. The allegation that the accused protease is dosed "into liquefaction" (Compl. ¶21) may create a dispute over whether this concurrent activity meets the claim's sequential structure.
    • Technical Questions: The complaint alleges that a slide from a 2018 workshop presentation explicitly referenced "US patent # 7,820,419" (Compl. ¶28). The complaint uses this allegation of a visual reference to support its claims of pre-suit knowledge and willfulness. A technical question for the court would be whether the process actually used by customers, when following Defendants' instructions, performs the protease treatment on a "liquefied mash" (the output of step a) or on a mash that is merely "in the process" of being liquefied.

V. Key Claim Terms for Construction

  • The Term: "treating the liquefied mash from step (a) with a protease"
  • Context and Importance: The definition of this phrase is critical to the infringement analysis. The dispute may focus on whether "treating" can occur simultaneously with liquefaction, and whether the "liquefied mash from step (a)" must be a completed product of the liquefaction step before treatment can begin. The Defendants' product is allegedly added "into liquefaction," making the temporal relationship between these steps a core issue.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the liquefaction and protein degradation steps "may be carried out simultaneously or sequentially" ('419 Patent, col. 2:19-21). This language could support an argument that adding the protease during liquefaction falls within the scope of the claim.
    • Evidence for a Narrower Interpretation: Claim 1 presents the steps in a clear sequence (a, b, c, d). The language "the liquefied mash from step (a)" may be interpreted to mean the output of a completed liquefaction step. Further, the patent's summary describes the invention's benefit as arising from "treating liquefied corn mash," which could be argued to distinguish the treatment as an action performed on a material that has already been liquefied ('419 Patent, col. 3:4-6).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b). It asserts that Defendants have knowledge of the '419 Patent and specifically intend for their customers to infringe by marketing, selling, and providing instructions for OPTIMASH® DCO+ that direct its use in the patented method (Compl. ¶¶ 31-32, 36).
  • Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge from multiple sources. The complaint cites International Search Reports from Defendants' own patent prosecutions that referenced the '419 patent family as early as 2013 (Compl. ¶25). It also alleges knowledge from a 2018 industry workshop where Plaintiff's personnel allegedly presented on the technology and displayed the '419 Patent number on a slide (Compl. ¶28). The complaint further alleges post-suit willfulness based on continued infringing conduct after service of the original complaint (Compl. ¶¶ 44, 48-50).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue is the procedural impact of the IPR. The PTAB's post-complaint cancellation of all asserted claims in IPR2020-00464 presents a fundamental, and potentially dispositive, challenge to the entire case, subject to the outcome of any appeal of that decision.
  • A key question of claim scope is the temporal relationship between the process steps. The case may turn on whether the phrase "treating the liquefied mash from step (a)" can be construed to cover a process where the accused protease is added during liquefaction, or if it strictly requires a sequential process where liquefaction is complete before treatment begins.
  • A central evidentiary question is one of induced infringement. The analysis will focus on whether Plaintiff can prove that Defendants’ marketing and instructional materials affirmatively encouraged customers to perform all steps of the claimed method, thereby demonstrating the specific intent required to establish inducement.