PTAB

IPR2020-00464

Danisco US Inc v. Novozymes North America Inc

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1. Case Identification

2. Patent Overview

  • Title: Fermentation Product Production Processes
  • Brief Description: The ’419 patent is directed to a process for producing alcohol, such as ethanol, from a starch-containing material. The core inventive concept involves treating a liquefied mash with a protease enzyme before initiating the saccharification step.

3. Grounds for Unpatentability

Ground 1: Anticipation over WO '179 - Claims 1-7, 11, 14, 15, 17, and 18 are anticipated under 35 U.S.C. §102 by WO '179.

  • Prior Art Relied Upon: WO '179 (International Publication No. WO 97/29179).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that WO '179 expressly discloses every element of the challenged claims. Independent claim 1 recites a four-step process: (a) liquefying starch with an α-amylase, (b) treating the liquefied mash with a protease before saccharification, (c) saccharifying, and (d) fermenting. Petitioner asserted that WO '179 teaches a process for producing alcohol that includes liquefying cereal material with α-amylase and adding a protease (including endoproteases and exoproteases) during the liquefaction step, which is necessarily before the subsequent saccharification and fermentation steps. The petition detailed how WO '179’s examples and general disclosures also met the specific limitations of the challenged dependent claims, including the simultaneous treatment with α-amylase and protease (claim 2), distillation (claim 3), production of ethanol (claim 4), and specific process parameters like pH ranges, temperatures, and enzyme types (claims 5, 6, 11, 14, 15, 17, and 18).

Ground 2: Obviousness over WO '895, WO '179, and Goode - Claims 1-9, 11, and 13-19 are obvious over WO '895 in view of WO '179 and Goode.

  • Prior Art Relied Upon: WO '895 (International Publication No. WO 02/074895), WO '179 (International Publication No. WO 97/29179), and Goode (a 2003 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that WO '895 discloses a conventional process for producing ethanol that includes all elements of claim 1 except for step (b)—treating the liquefied mash with a protease before saccharification. Petitioner asserted that WO '179 and Goode remedy this deficiency by expressly teaching the addition of protease during the liquefaction step. Both references describe experiments where proteases are added simultaneously with α-amylase to a starch slurry to produce a fermentable wort, explicitly disclosing the missing claim element. The combination of these references, Petitioner argued, teaches every limitation of the challenged independent and dependent claims.
    • Motivation to Combine: The primary motivation to combine these references was to achieve well-known benefits in ethanol production. Petitioner argued that both WO '179 and Goode taught that adding a protease during liquefaction increases the level of Freely Available Nitrogen (FAN). Higher FAN levels were known to be critical for yeast health, leading to faster and more complete fermentation, increased ethanol yields, and improved product characteristics. A POSITA would combine the teachings of WO '179 and Goode with the conventional ethanol process of WO '895 to realize these significant and predictable improvements in efficiency and yield.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success. The references describe compatible processes using similar materials (cereal grains) and enzymes for the same purpose (alcohol production). The benefits of adding protease during liquefaction were clearly documented in WO '179 and Goode, making the successful modification of the WO '895 process a predictable outcome.

4. Key Claim Construction Positions

  • "Protease": Petitioner proposed construing "protease" to mean an enzyme that hydrolyzes or breaks down other proteins, including endoproteases, exoproteases, and peptidases. This construction, drawn from the ’419 patent's specification, was presented as important to establish that the specific endoproteases and exoproteases disclosed in the prior art (e.g., in WO '179) satisfy the "protease" limitation of the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate because the primary prior art references—WO '179, Goode, and WO '895—were not before the USPTO during prosecution. Petitioner contended that the ’419 patent was allowed based on the Patent Owner's argument that the prior art failed to teach adding a protease before saccharification. Because WO '179 and Goode directly and expressly teach this exact step and its benefits, Petitioner argued the newly presented art is far more material than the art previously considered by the examiner.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 11, and 13-19 of the ’419 patent as unpatentable.