DANISCO U.S. INC., Plaintiff-Appellant,
NOVOZYMES A/S AND NOVOZYMES NORTH AMERICA, INC., Defendants-Appellees
As Amended March 28, 2014.
Appeal from the United States District Court for the Northern District of California in No. 12-CV-04502, Judge Richard Seeborg.
THOMAS G. HUNGAR, Gibson, Dunn & Crutcher LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief were TRACEY B. DAVIES, MICHAEL A. VALEK, and JASON C. MCKENNEY, of Dallas, Texas.
DAVID K. TELLEKSON, Fenwick & West, LLP, of Seattle, Washington, argued for defendants-appellees. With him on the brief were VIRGINIA K. DEMARCHI and EWA M. DAVISON.
Before LOURIE, PROST, and O'MALLEY, Circuit Judges.
Lourie, Circuit Judge.
Danisco U.S. Inc. (" Danisco" ) appeals from the decision of the United States District Court for the Northern District of California dismissing Danisco's declaratory judgment action against Novozymes A/S and Novozymes North America, Inc. (collectively " Novozymes" ) for lack of subject matter jurisdiction. See Danisco U.S. Inc. v. Novozymes A/S, No. 12-4502, 2013 WL 2351723 (N.D. Cal. Jan. 8, 2013) (unpublished). Because we conclude that the totality of the circumstances establishes a justiciable controversy, we reverse and remand.
Danisco and Novozymes compete to develop and supply Rapid Starch Liquefaction (" RSL" ) products, which are genetically modified industrial enzymes used for converting corn and other plant-based material into ethanol. Danisco and Novozymes have patents that claim α -amylase enzymes, which have been genetically engineered through substitution of amino acids in the peptide sequence in order to improve their performance in the liquefaction process.
Since about 2001, Novozymes has sued Danisco or Danisco's predecessors in interest for infringement numerous times. In one instance, Novozymes amended an application then pending at the United States Patent and Trademark Office (" PTO" ) to claim one of Danisco's new products and then sued Danisco in the United States District Court for the Western District of Wisconsin on the same day that the patent issued. The Wisconsin court invalidated Novozymes's patent because the newly added claim was not supported by the written description, and we affirmed. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346 (Fed. Cir. 2013).
Danisco owns U.S. Patent 8,084,240 (the " '240 patent" ), issued December 27, 2011 and claiming the benefit of priority from a provisional application filed June 6, 2008. The '240 patent claims a truncated Geobacillus stearothermophilus (" BSG" ) α -amylase variant polypeptide with a substitution from glutamic acid (" E" ) to proline (" P" ) at sequence position 188, a socalled " E188P substitution," that exhibits increased viscosity reduction in a starch liquefaction assay compared to the parental α -amylase polypeptide. '240 patent col. 275 ...