Free Letter - District Court of Delaware - Delaware

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Date: January 16, 2007
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Case 1:O5—cv-00160-KAJ-l\/IPT Document 221 Filed O1/16/2007 Page 1 of 2
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January 16, 2007
The Honorable Kent A. Jordan
United States Court of Appeals for the Third Circuit
844 North King Street
Wilmington, Delaware 19801
Re: Novozymes A/S v. Genencor Int? Inc., C.A. No. 05-160-KAJ _
Dear Judge Jordan:
I write on behalf of Plaintiff Novozymes A/S in reply to Defendant Genencofs January
12, 2007, letter to the Court (lll. 220) that called attention to the decision in Propczr Im"!. Corp.
v. RPOsr, Inc., _____ F.3d _______, 2007 WL 14688 (Fed. Cir. Jan. 4, 2007). Propet should have no
bearing on the Court’s decision in the present case. It is distinguishable on two significant
grounds and adds nothing to the jurisprudence necessary here.
Unlike Novozymes A/S, the assignee of the patent in Proper was not a party to the action,
and the relationship and interactions between the parties were extremely limited. The question ‘
addressed there was "whether a party [had] sufticient ownership interest in a patent to he entitled
to sue for infringement? Id. at *1. Plaintiff Propat sued Defendant R.Post for infringement of a
patent assigned to an entirely different entity, Authentication Technologies Ltd. ("Authentix").
However, patent owner Authentix was not a party to the action.
Propat was Authentix’s licensee under the patent. The written license limited Propat’s
responsibility to sublicensing and to enforcing the licensed patent. The license did not state
whether Propat was licensed to make, use, or sell the patented invention. No evidence was
presented that the license extended to the latter activities, through course of conduct or
otherwise. In fact, there was no evidence of any relationship between Propat and Authentix
beyond the license itself. The parties there did not treat the license as exclusive, did not
consolidate earnings, and did not act as a single entity in any manner. Therefore, the Propat
Court examined “ownership interest" in light of the evidence before it: the license agreement
That is not the situation here. There is no “bare iicensee” here, seeking remote or
tangential damages. One term in an agreement, such as "exclusive" or "non—exclusive," cannot
control the entire agreement or its practice, particularly when inferences from that term run
counter to the agreernent’s overall plan and implementation. Indeed, Propet itself stands for this
proposition. See id. at *6-7 (noting that "[t]his case does not tit neatly within either of those two
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Case 1:05-cv-00160-KAJ-IVIPT Document 221 Filed O1/16/2007 Page 2 of 2
The Honorable Kent A. Jordan
January 16, 2007
Page 2
categories [exclusive and ‘bare’ licensees]" and instead examining the substance of the license’s
terms). Here, Novozymes A! S is the assignee and owner of the infringed patent, and it is a party-
plaintiff in this action. This action was brought by the patentee, which certainly has the
necessary ownership interest, even if Propet, a borderline licensee, did not. Further, the
circumstances and practices of Novozymes A/S and Novozymes North America with respect to
the patent infringed by Genencor are very different from those in Propet. Unlike the ambiguous
relationship in Propet, the unequivocal evidence here shows that a more than sufficient
ownership interest rests with Novozymes North America. It can be joined as a plaintiff, although
it is not necessary to do so, for all of the reasons given in Novozynies’ post-trial briefs.
The issues pertinent to this Cou1t’s decision on damages and standing have been fully
briefed. Novozymes MS respectfully submits that the Propet ruling adds nothing and changes
Respectfully submitted,
Andrew A. Lundgren (No. @29)
AAL:ml cc: Donald E. Reid, Esquire
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