Re-exam 95/001,857 of Butamax US 7,851,188
The cases spinning off from the Butamax patent 7,851,188 are complicated:
12/018,216 filed on 01-23-2008 which is Patented claims the benefit of 11/586,315
12/939,284 filed on 11-04-2010 which is Pending claims the benefit of 11/586,315
12/966,333 filed on 12-13-2010 which is Pending claims the benefit of 11/586,315
12/939,315 filed on 11-04-2010 which is Pending claims the benefit of 11/586,315
95/001,718 filed on 08-18-2011 which is Pending claims the benefit of 11/586,315
13/205,351 filed on 08-08-2011 which is Patented claims the benefit of 11/586,315
95/001,735 filed on 09-01-2011 which is Pending claims the benefit of 11/586,315
13/539,125 filed on - which is Pending claims the benefit of 11/586,315
95/001,857 filed on 12-19-2011 which is Pending claims the benefit of 11/586,315
95/001,998 filed on 06-21-2012 which is Pending claims the benefit of 11/586,315
The patent issued on December 14, 2010. IPBiz covered some of the re-exam matters in a post titled Gevo's inter partes re-exam request as to US 7,851,188
As to 95/001,857, filed on 19 December 2011, there was a "third party requester's comments" filed by one Fraser D. Brown of Cooley on July 5, 2012 of length 54 pages.
The first sentence of the Introduction (page 9) states: "Butamax's response is filled with factual and legal mistakes." The third sentence includes the text "showing once again that the patentee is unable to prepare consistent submissions to the Patent Office that reflect even a basic understanding of yeast biology." Within the third paragraph of the introduction, one has "a representation that is careless and lacking candor." At issue at this point is whether or not yeast have a native [intrinsic] isobutanol pathway meeting the elements (a) - (e) of the the claim.
At page 10, Gevo/Cooley argue that the crux of the Butamax argument is that yeast do not NATURALLY produce isobutanol by the biosynthetic pathway recited in the claims of the '188 patent. The 1965 Yoshizawa reference is identified as showing the pathway from pyruvate to isobutanol.
Various experimental papers are cited to show the existence of the natural pathway. For example, work by Oshita on C-13 labelled molecules, is cited on page 15.
As to secondary considerations, page 21 contains the text: "Butamax fails to understand the law, however." Gevo/Cooley cite to Muniauction v. Thomson, 532 F.3d 1318, and assert no nexus between claim elements and the advantage. Claim 1 has no element directed to isobutanol yield. At page 22, Gevo/Cooley get into economic issues. At page 23: "Butamax does not disclose any microorganism, much less any yeast strain, capable of supporting commercially viable isobutanol production." Also at page 23, an MIT MS thesis by one Sheldon-Coulson is cited, alluding to unmet production promises by Butamax for the years 2010-2011. Liao's work on isobutanol from cyanobacteria is discussed on page 25. Provisional applications of James Liao are cited on page 26. Also at page 26, one has "isobutanol is isobutanol." In re Kahn on motivation is cited at page 28. Issues of overexpression are addressed on page 33. Page 34 begins the discussion of the new claims of Butamax, 38-65. Page 40 discusses NADH dependent ADH. Written description issues are discussed at pages 44-45. In re Wertheim is cited. Isobutanol toxicity is discussed at page 45. Codon optimization is discussed on page 51.
The Gevo/Cooley document is responsive to a paper filed for Butamax by Peter Jackman of Sterne Kessler on June 6, 2012.
12/018,216 filed on 01-23-2008 which is Patented claims the benefit of 11/586,315
12/939,284 filed on 11-04-2010 which is Pending claims the benefit of 11/586,315
12/966,333 filed on 12-13-2010 which is Pending claims the benefit of 11/586,315
12/939,315 filed on 11-04-2010 which is Pending claims the benefit of 11/586,315
95/001,718 filed on 08-18-2011 which is Pending claims the benefit of 11/586,315
13/205,351 filed on 08-08-2011 which is Patented claims the benefit of 11/586,315
95/001,735 filed on 09-01-2011 which is Pending claims the benefit of 11/586,315
13/539,125 filed on - which is Pending claims the benefit of 11/586,315
95/001,857 filed on 12-19-2011 which is Pending claims the benefit of 11/586,315
95/001,998 filed on 06-21-2012 which is Pending claims the benefit of 11/586,315
The patent issued on December 14, 2010. IPBiz covered some of the re-exam matters in a post titled Gevo's inter partes re-exam request as to US 7,851,188
As to 95/001,857, filed on 19 December 2011, there was a "third party requester's comments" filed by one Fraser D. Brown of Cooley on July 5, 2012 of length 54 pages.
The first sentence of the Introduction (page 9) states: "Butamax's response is filled with factual and legal mistakes." The third sentence includes the text "showing once again that the patentee is unable to prepare consistent submissions to the Patent Office that reflect even a basic understanding of yeast biology." Within the third paragraph of the introduction, one has "a representation that is careless and lacking candor." At issue at this point is whether or not yeast have a native [intrinsic] isobutanol pathway meeting the elements (a) - (e) of the the claim.
At page 10, Gevo/Cooley argue that the crux of the Butamax argument is that yeast do not NATURALLY produce isobutanol by the biosynthetic pathway recited in the claims of the '188 patent. The 1965 Yoshizawa reference is identified as showing the pathway from pyruvate to isobutanol.
Various experimental papers are cited to show the existence of the natural pathway. For example, work by Oshita on C-13 labelled molecules, is cited on page 15.
As to secondary considerations, page 21 contains the text: "Butamax fails to understand the law, however." Gevo/Cooley cite to Muniauction v. Thomson, 532 F.3d 1318, and assert no nexus between claim elements and the advantage. Claim 1 has no element directed to isobutanol yield. At page 22, Gevo/Cooley get into economic issues. At page 23: "Butamax does not disclose any microorganism, much less any yeast strain, capable of supporting commercially viable isobutanol production." Also at page 23, an MIT MS thesis by one Sheldon-Coulson is cited, alluding to unmet production promises by Butamax for the years 2010-2011. Liao's work on isobutanol from cyanobacteria is discussed on page 25. Provisional applications of James Liao are cited on page 26. Also at page 26, one has "isobutanol is isobutanol." In re Kahn on motivation is cited at page 28. Issues of overexpression are addressed on page 33. Page 34 begins the discussion of the new claims of Butamax, 38-65. Page 40 discusses NADH dependent ADH. Written description issues are discussed at pages 44-45. In re Wertheim is cited. Isobutanol toxicity is discussed at page 45. Codon optimization is discussed on page 51.
The Gevo/Cooley document is responsive to a paper filed for Butamax by Peter Jackman of Sterne Kessler on June 6, 2012.
posted by Lawrence B. Ebert at 4:52 AM
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