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  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 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  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
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 content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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