Free Letter - District Court of Delaware - Delaware

Case 1 :05-cv—00160-KAJ—I\/IPT Document 220 Filed 01/12/2007 Page1 of2
Monnrs, NICHOLS, Ansar 8; TUNNELL LLP
120} NORTH MARKET Strainer
P.O. Box Y34:7
Wrnirrneron, Dnmwnnn i9899—i34:7
302 658 9200
302 658 3989 FAX
DONA1.1:¤ E. Rem
302 351 szis
302 425 300} FAX
[email protected]
January 12, 2007
BY HAND
The Honorable Kent A. Jordan
United States Court of Appeals
for the Third Circuit
844 King Street
Wilmington, DE 19801
Re: Novozymes A/S v. Genencor International, Inc.
and Enzyme Development Corp.
CA. N0. 05-160 {KA];
Dear Judge Jordan:
We write pursuant to Local Rule 7.l.2(c) to inform you of a new Federal Circuit
decision, Propet Int'! Corp. v. RPos!, [ne., --- F.3d ---, 2007 WL 14688 (Fed. Cir. Jan. 4, 2007)
(attached as Exhibit A), which is relevant to the issue of whether Plaintiff Novozyrnes A/S
(“Novozymes") may join its iicensee Novozymes North America, inc. (“NZNA") as a party to
this lawsuit.
In Proper, the Federal Circuit (relying on precedent including Kalman) affirmed
the lower court’s holding that Propat did not have standing to sue because it was simpiy a bare
(or nonexclusive) licensee to the patent at issue. The court focused on an agreement between
Propat and the patent owner, which gave Propat the responsibility to license the patent to third-
parties, to enforce the licensing agreements, and to sue infringers in exchange for a defined
percentage share of the royalty proceeds and of any judgment or settlement arising out of
litigation, The agreement forbade Propat from assigning its rights and obligations without the
patent owner’s consent, which could be freely withheld, The Federal Circuit found that the
rights transferred in this agreement did not give to Propat "a true ownership interest in the
patent, such as the right to transfer its interest" and therefore Propat was simply a bare licensee.

Case 1 :05-cv—00160-KAJ—I\/IPT Document 220 Filed 01/12/2007 Page 2 of 2
The Honorable Kent A. Jordan
January 12, 2007
Page 2
2007 WL 14688 at *7. Specifically, the fact that Propat was not allowed to assign its interests
under the agreement without Authentix’s consent indicated that Propat was simply a bare
licensee. See id.
The Proper! agreement is anaiogous to the Technology License Agreement between
Novozyrnes and NZNA. Both are nonexclusive agreements that do not transfer an ownership
interest in a patent, such as the right to transfer the patent interest or the right to exclude others
from receiving an interest in the patent. Accordingly, Propet supports Dei`endants’ argument
that NZNA may not be joined as a co—plainti;t`f in this case.
We stand ready to discuss these issues with the Court.
Respectfully yours,
Donald E. Reid
DER/amr
Enclosure
cc: Dr. Peter T. Dalleo, Clerk (w/enc.) (Via Electronic Filing)
Karen E. Kelier, Esquire (W/enc.) (Via Electronic Filing)