Case: Novozymes v. Dupont Nutrition Biosciences APS, No. 2012-1433 (Fed. Cir. July 22, 2013) (Precedential). On appeal from W.D. Wis. Before Rader, Schall, and Bryson.

Procedural Posture: Plaintiff patentee Novozyme appealed the district court’s final judgment of invalidity for failure to satisfy the written description requirement. CAFC affirmed.

  • Written Description: Where the supporting disclosure from a previously filed provisional patent application only provides support for each individual limitation recited jointly by the claims at issue, and does not describe the actual functioning alpha-amylase variants claimed, no reasonable jury could find that the patent meets the written description requirement of § 112, ¶ 1. The provisional application only disclosed that Novozymes had predicted that some mutations at a particular position would yield advantageous variants, but did not definitively identify any of these mutations or the specific variants that were later claimed. Instead the application disclosed “a potentially enormous number of alpha-amylase variants, encompassing all possible combinations among the seven disclosed parent enzymes, the thirty-three disclosed positions for mutations possible at each position, and the various possible combination of individual mutations.” It did not matter that a person of ordinary skill in the art presented with the disclosure would have been enabled to test mutation variations, but whether the patent discloses the variants specifically claimed as an invention.

Rader, dissenting:

  • Written Description: The jury’s finding of sufficient written description is supported by substantial evidence, and therefore should be granted deference. The patent specification identifies thirty-three positions for beneficial mutations, which would have been sufficient to direct a highly skilled artisan to make substitution at one of these positions. Expert testimony shows that a skilled artisan would not blindly try random combinations of the potentially numerous combinations mentioned. The majority’s opinion is does not take into account what is routine in the field, and the court “might also have credited the patentee with reducing the original 500 total amino acid positions down to a mere thirty-three.”