Danisco v. Novozymes: Declaratory Judgment Action For Non-Infringement And Invalidity Improper And Dismissed Where Action Was Filed Prior To Or Simultaneously With The Issuance Of The Patent

Danisco US, Inc. ("Danisco") filed a declaratory judgment action asserting that its Rapid Starch Liquefaction products ("RSL products") do not infringe certain patents held by Novozymes and that the patent-in-suit is invalid. Danisco and Novoyzymes are two of the major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.

Novozymes moved to dismiss the action and asserted that Danisco did not allege, and could not allege, that Novozymes took any affirmative act to enforce the patent-in-suit against Danisco. Danisco asserted that there was an actual controversy between the parties because it could be reasonably inferred that Novozymes obtained the patent with the hopes of asserting it against Danisco's products.

As explained by the district court, "Danisco insists there is an actual controversy here, ripe and justiciable, because under "all the circumstances" it should be obvious that Novozymes' very aim in obtaining the '573 patent was to be in position to charge Danisco's RSL's products with infringement. The circumstances to which Danisco points, including the parties' status in the industry, past litigation, and the prosecution history and timing, may all very well support a reasonable inference that Novozymes pursued the El 18P claim in the '573 patent with the hope of wielding it against the RSL products, and even that Novozymes may still be harboring the intent to pursue infringement claims at a time of its own choosing. Nevertheless, Danisco has not shown any affirmative act by Novozymes to enforce its patent rights. While matters such as a prior litigation history and statements made during prosecutions sometimes support a conclusion that an actual controversy exists, there is no precedent for finding jurisdiction based on such pre-patent issuance events alone, without any affirmative act of attempted enforcement."

The district court disagreed with Danisco's position and rejected its reliance on the recent 3M case: "[t]he decision in 3M Co. v. Avery Dennison Corp., 673 F.3d 1372 (Fed. Cir. 2012), on which Danisco places heavy emphasis, illustrates the potential relevance of a prior history of litigation. Around the time the patents involved in that case issued, the patent holder's Chief Intellectual Property Counsel telephoned his counterpart at the patent holder's primary competitor, and expressly asserted that the competitor's product 'may infringe' and...