Thursday, March 21, 2013

Another round in Gevo/Butamax fight in D. Delaware

On March 19, 2013, Bloomberg reported:

U.S. District Judge Sue Robinson in Wilmington, Delaware, today ruled that “as a matter of law,” Gevo doesn’t infringe Butamax’s patent under the so-called doctrine of equivalents. The judge agreed with Gevo that the difference between its method and Butamax’s wasn’t insubstantial as Butamax argued. The judge declined to rule that there’s no infringement at all, rejecting requests from both companies to resolve the dispute without a trial.

“While Butamax’s evidence of infringement is less than compelling, nonetheless, the court finds it sufficient to withstand Gevo’s motion for summary judgment, as it raises genuine issues of material fact as to how a person of ordinary skill in the art at the time the invention was made would determine NADH-dependency,” the judge said, referring to the biochemistry of enzymes.

The case is scheduled to go to trial in August.

However, a press release on March 21, 2013 stated:

Gevo Inc. announced a significant win in Butamax Advanced Biofuels LLC litigation in Delaware court and a judgment of non-infringement will be entered in the favor of the Englewood, Colorado-based renewable chemicals and advanced biofuels company.

Butamax acknowledged that Gevo does not infringe Butamax`s asserted patents under the court's construction of a key claim term in Butamax`s Patent Nos. 7,851,188 and 7,993,889.

As a result of this victory, the trial scheduled for April 1 will no longer take place.

The judgment of non-infringement comes on the heels of the Court's important claim construction determination which held that Butamax's Patent Nos. 7,851,188 and 7,993,889 require the use of an "NADPH-dependent" (nicotinamide adenine dinucleotide phosphate-dependent) KARI.

Butamax conceded that it could not establish that Gevo's KARI is NADPH-dependent. In addition to granting a judgment of non-infringement, the court invalidated Butamax's patent claims for the deletion of PDC.

PDC is the enzyme responsible for making ethanol and its deletion is required for the commercially viable production of isobutanol. Gevo's patents covering the deletion of PDC and the use of AFT are set for trial in August of this year, where Gevo is suing Butamax for patent infringement.

"Gevo continues to demonstrate that it does not infringe Butamax's patents because Gevo created an NADH-dependent KARI enzyme that enables Gevo's yeast strains to produce isobutanol at much greater efficiencies than strains using the NADPH-dependent enzymes claimed by Butamax," said Brett Lund, EVP and General Counsel for Gevo.

IPBiz draws attention to an earlier IPBiz post wherein the Court of Appeals for the Federal Circuit [CAFC], which will review any appeal by Butamax, made the following comment in the context of a ruling on denial of an injunction:

However, this court’s affirmance should not be read to endorse the trial court’s very questionable construction of the claim term “acetohydroxy acid isomeroreductase” – that is “as an enzyme that is solely NADPH dependent.”

The trial court should reconsider its construction when it holds a Markman hearing.


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