Tuesday, February 18, 2014

The Court of Appeals for the Federal Circuit hands Gevo a big loss in the Butamax/Gevo patent wars

As was quite foreseeable in 2012 (see IPBiz Claim construction in Butamax/Gevo case by Judge Robinson (D. Del.) questioned by CAFC ), the Court of Appeals for the Federal Circuit on February 18, 2014 basically undid rulings by Judge Robinson which had favored Gevo.

From the conclusion of Butamax v. Gevo

For the forgoing reasons, this court vacates the district court’s denial of Butamax’s motion for summary judgment of literal infringement of the asserted claims of the ’188 and ’889 patents and remands the question of infringement to the district court for reconsideration under the claim construction set forth herein. Further, this court likewise vacates and remands the district court’s grant of Gevo’s motion for summary judgment of noninfringement under the doctrine of equivalents. The court further reverses the district court’s grant of Gevo’s motion for summary judgment of invalidity for lack of written description of claims 12 and 13 of the ’889 patent and the district court’s order that those same claims are invalid for lack of enablement.

Of interest at the end of the opinion was a reference to "scrivener's error":

In its order, the district court summarily concluded that claims 12 and 13 were invalid for lack of enablement. However, its memorandum opinion does not reflect that judgment, nor did Gevo move for invalidity of those claims on this basis. On appeal, Gevo does not defend the judg- ment. It thus appears that the judgment was a scrivener’s error, and this court reverses the judgment that the claims are invalid for lack of enablement.

Things did not work out well for Gevo on the substantive issues, either.

A major issue was the definition of an enzyme, which Gevo attempted to limit to NADPH-dependent. The CAFC however did not so limit and merely found:

For all of the foregoing reasons, the term “acetohydroxy acid reductoisomerase” [sometimes denoted KARI] is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC number that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.”

with the additional text

However, as discussed above, the ordinary meaning of KARI is not cofactor dependent, and this subsequent extrinsic evidence does not clearly express an intent at the time of the invention to redefine KARI to use one cofactor over another. The subsequent discovery of the beneficial results obtained by the use of NADH does not support the conclusion that it was understood to be excluded as a cofactor at the time the patents-in-suit were filed.

This definition is not good for Gevo in the infringement case against Gevo.

A matter of "incorporation by reference" arose:

Gevo makes much of the fact that Dickinson, though cited in the ’889 patent, was not cited in connection with the deactivation of this pathway and was not incorporated by reference into the patent. Nonetheless, Dickinson’s teachings still reflect what was known in the art. See Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1368 (Fed. Cir. 2006) (holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference). Dickinson does show that persons of ordinary skill in the art could deactivate the pathway in question, and though it appears that accord- ing to Dickinson the claimed invention would not have worked particularly well (isobutanol production would be “virtually abolished”),

As to "written description,"

The district court found that both claims were inadequately described and thus invalid because the specification does not sufficiently describe how to inactivate genes to disable the competing synthetic pathway.
When determining whether a specification con- tains adequate written description, one must make an “objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” [Citation.] Because the specification is viewed from the perspective of one of skill, in some circumstances, a patentee may rely on information that is “well-known in the art” for purposes of meeting the written de- scription requirement.
Boston Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (citation omitted).
Butamax also relies on extrinsic evidence purportedly teaching how to deactivate the pathway. Butamax submitted the declaration of Alexander M. Klibanov, who opined that it would have been well-known to a person of ordinary skill in the art how to deactivate the genes, citing to seven references that purportedly describe organisms with reduced or inactivated pyruvate decarboxylase activity. Appellant’s Br. 67; J.A. 3141. The district court does not appear to have addressed Mr. Klibanov’s testimony or six of the references he cited.


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