United States District Court, W.D. Wisconsin
U.S. WATER SERVICES, INC. and ROY JOHNSON, Plaintiffs,
NOVOZYMES A/S and NOVOZYMES NORTH AMERICA, INC., Defendants.
OPINION & ORDER
D. PETERSON DISTRICT JUDGE.
U.S. Water Services, Inc. and Roy Johnson sued defendants
Novozymes A/S and Novozymes North America, Inc. for
infringing U.S. Patents Nos. 8, 415, 137 and 8, 609, 399, two
patents that disclose methods for using the enzyme phytase to
reduce phytic acid deposits on equipment used in fuel ethanol
production. (Consistent with its practice throughout this
lawsuit, the court will refer to plaintiffs as “U.S.
Water” and defendants as “Novozymes.”) A
jury found in U.S. Water's favor on all asserted claims,
Dkt. 800, and awarded approximately $7.5 million in damages,
Dkt. 812. The court entered judgment on the verdict a few
days later. Dkt. 831.
sides have filed post-trial motions. U.S. Water seeks a
permanent injunction, an “enhanced royalty, ”
supplemental damages, prejudgment interest, and post-judgment
interest. Dkt. 839 and Dkt. 843. Novozymes seeks judgment as
a matter of law on infringement, invalidity, and damages,
and, in the alternative, seeks a new trial. Dkt. 846; Dkt.
847; Dkt. 849. Novozymes has also filed a motion to strike
one of U.S. Water's reply briefs and to seal some of its
filings. Dkt. 848 and Dkt. 892. The court will grant the
motion to seal.
the remaining motions, it is only necessary to consider one
of them, which is Novozymes's motion for judgment as a
matter of law on the ground that the asserted claims are
invalid. The court rejects Novozymes's arguments
regarding obviousness, but the court concludes that the
jury's verdict that the patents-in-suit are not
anticipated by the Veit patent application is not supported
by a reasonable view of the evidence. U.S. Water adduced
evidence at trial that the addition of phytase to ethanol
processing fluid would not necessarily reduce deposits under
all possible conditions. But the trial evidence showed the
addition of phytase under conditions disclosed in
Veit would hydrolyze all the available phytic acid so
that there would be no phytic acid available to form
deposits. Thus, although Veit says nothing about reducing
deposits, deposit reduction is an inherent result of the use
of phytase as disclosed in Veit. Because the conditions
disclosed in Veit satisfy all the elements of the asserted
claims, those claims are anticipated. The court will grant
Novozymes's motion and enter judgment in Novozymes's
favor. All other pending motions are moot.
background to this case is set out in detail in this
court's summary judgment decision, Dkt. 561, and the
Court of Appeals decision, U.S. Water Servs., Inc. v.
Novozymes A/S, 843 F.3d 1345 (Fed. Cir. 2016), so there
is no need to repeat it in detail here.
'137 patent and the '399 patent share a common
specification and disclose methods for using an enzyme called
phytase to reduce the formation of deposits of phytic acid
and phytates (metallic salts of phytic acid) during ethanol
production. Fouling by such deposits impedes heat transfer
and fluid flow, thus decreasing the efficiency of ethanol
processing equipment. Historical solutions to the fouling
problem include physical cleaning of the equipment and
reducing the pH of the processing fluid by adding sulfuric
acid. The enzyme phytase hydrolyzes (which is to say breaks
down) phytic acid and its salts, and the resulting components
are soluble in the processing fluid and do not form deposits.
Water sells a phytase-based product called pHytOUT to reduce
phytate fouling on fuel ethanol production equipment.
Novozymes sells a competing phytase-based product called
Phytaflow, which is the accused product in the case.
Water asserts claims 1, 6, and 12 of the '137 patent and
claims 1, 2, 5, 7-9, 16, and 18-20 of the '399 patent.
Claim 1 of the '137 patent is an illustrative independent
1. A method of reducing formation of insoluble deposits of
phytic acid or salts of phytic acid on surfaces in a fuel
ethanol-processing equipment, the method comprising:
adding phytase to an ethanol processing fluid in the
equipment containing phytic acid or salts of phytic acid
under conditions suitable for converting the insoluble phytic
acid or phytic acid salts to soluble products;
thereby reducing the formation of deposits of insoluble
phytic acid or phytic acid salts on surfaces in the
wherein the equipment in which deposit formation is reduced
comprises a beer column, and wherein the pH of the ethanol
processing fluid in the beer column is 4.5 or ...