Saturday, January 22, 2011

Gevo's response to Butamax infringement assertion re: US 7,851,188

From ethanolproducer, concerning the infringement complaint of Butamax (DuPont/BP) filed in D. Delaware over US 7851188 :

Gevo issued a rebuttal statement regarding Butamax’s patent infringement complaint. “Gevo believes it does not infringe on the Butamax patent and will vigorously defend against the claims asserted in the complaint,” said Brett Lund, executive vice president and general counsel for Gevo. “Gevo’s Integrated Fermentation Technology is a fundamentally different approach than the one described in the Butamax patent.”

Gevo has developed a proprietary integrated fermentation technology—coined GIFT. The key behind Gevo’s GIFT technology pathway is the utilization of a yeast biocatalyst developed by Cargill Inc., with support from the U.S. DOE, and a separation technology unit that’s designed to bolt onto existing ethanol plants to produce isobutanol from grain crops such as wheat, corn, sorghum, barley or sugarcane, including nonfood-based cellulosic feedstock.

The first two claims of US 7,851,188 (issued on Dec. 14, 2010 based on appl. 11/586,315 ):

1. A recombinant microbial host cell comprising heterologous DNA molecules encoding polypeptides that catalyze substrate to product conversions for each step below: i) pyruvate to acetolactate; ii) acetolactate to 2,3-dihydroxyisovalerate; iii) 2,3-dihydroxyisovalerate to .alpha.-ketoisovalerate; and iv) .alpha.-ketoisovalerate to isobutyraldehyde; wherein said microbial host cell produces isobutanol; and wherein a) the polypeptide that catalyzes a substrate to product conversion of pyruvate to acetolactate is acetolactate synthase having the EC number; b) the polypeptide that catalyzes a substrate to product conversion of acetolactate to 2,3-dihydroxyisovalerate is acetohydroxy acid isomeroreductase having the EC number; c) the polypeptide that catalyzes a substrate to product conversion of 2,3-dihydroxyisovalerate to .alpha.-ketoisovalerate is acetohydroxy acid dehydratase having the EC number; d) the polypeptide that catalyzes a substrate to product conversion of .alpha.-ketoisovalerate to isobutyraldehyde is branched-chain .alpha.-keto acid decarboxylase having the EC number

2. A host cell according to claim 1 wherein the cell is selected from the group consisting of: a bacterium, a cyanobacterium, a filamentous fungus and a yeast.

One notes there are FOUR (4) pending applications claiming priority to the '315 application:

12/939,315 filed on 11-04-2010 which is Pending 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
12/018,216 filed on 01-23-2008 which is Pending claims the benefit of 11/586,315

One might contemplate the possibility of pregrant damages [as to a (hypothetical) child patent] if one of these applications issues with unamended claims that encompass the activities of Gevo. Claim 1 of the issued '188 patent was narrowed from the base claim of the as-filed application.

On pregrant damages, from Baker & Botts:

The publication of a U.S. application under Section 122 provides an applicant, for the first time, with the ability to pursue damages corresponding to a reasonable royalty for infringement occurring subsequent to publication and prior to issuance of a patent from the application. These rights are commonly referred to as provisional rights. Provisional rights only tangibly accrue, and can only be recouped, once the application issues as a patent. Further limitations on obtaining such pre-grant damages are that actual notice of the published application must have been provided to the infringer and that the infringed claims must be contained in the issued patent and be substantially identical to corresponding claims in the published application.

On pregrant damages, from ecampus:

Historically, U.S. patent applications have never been published until issuance of the patent. Any damages calculation necessarily began no sooner than the date of issuance (grant) of the patent. As such, the United States was somewhat out of step with most other industrialized nations, whose patent systems published applications at 18 months and provided for infringement damages from the date of publication. One effect of Subtitle E was to harmonize U.S. practice with that of other industrialized countries, providing for 18-month publication and for pregrant damages.

The language of Subtitle E imposes conditions that must be satisfied before a patent owner can collect pregrant damages. One of the conditions is that the claim said to be infringed must be substantially identical in the published application and in the granted patent. Therefore, it becomes important to draft and file in the application a range of claims of varying scope and with various combinations of limitations, so as to maximize the chances that a claim in the issued patent that turns out to be infringed will be substantially identical to the corresponding claim from the publication.

As to licensees, see Licensing Best Practices

See crowdIPR

***Update on 25 Feb 2011.

The commenter below asks "why" Butamax has not sued Cobalt Technologies. The snswer to that question resides with Butamax, not with IPBiz. It could be that Cobalt does not infringe. Rule 11 issues are discussed elsewhere on IPBiz. The R-Squared Energy Blog has a post titled Butanol Q&A With Cobalt Technologies CEO Rick Wilson which includes the text:

BP Butamax and Gevo make i-butanol for fuels from sugar and corn, and BP has done extensive engine testing and its a great story. However we do not see the economics of using sugar or corn ever supporting using any kind of butanol as a gasoline or diesel fuel additive without subsidies, although it is a great molecule for that purpose.

On the patent front, there was the following text:

RR: Can you point me to some granted patents or any peer-reviewed literature that covers the process?

RW: Please see attached, one of our key patent filings.

RR: The attached patent was an international patent application, WO 2009/126795 A2: Immobilized Product Tolerant Microorganisms.

IPBiz notes that a PCT application is neither a granted patent nor a peer-reviewd publication. The PCT application is PCT/US2009/040050, which does correspond to publication number WO/2009/126795. There is a priority claim to US provisional application 61/043,710. There has been a national phase filing in Europe: EP 2009730267.

The first claim in PCT '050 is:

A method for making a product in a bioreactor comprising: i) culturing microorganisms, wherein the microorganisms are adapted or mutagenized so as to exhibit at least a 150% product tolerance for the product compared to the product tolerance of a corresponding non- adapted or non-mutagenized microorganisms; and ii) harvesting said product.

Claim 86 states:

A method of making a biological product comprising: a) culturing microorganisms in a bioreactor comprising: i) a packed bed zone, comprising solid support therein, said solid support comprising microorganisms thereon for fermenting said biological product; ii) a bed expansion zone coupled to said packed bed zone adapted for containing said solid support when said bioreactor is operated in an expanded bed mode; and iii) a particle disengagement zone coupled to said bed expansion zone, said particle disengagement zone adapted to prevent egress of said solid support from said bioreactor; and b) harvesting the product.

Separately, note US published application 20080293086 , titled REAL TIME MONITORING OF MICROBIAL ENZYMATIC PATHWAYS, first inventor Pamela Reilly Contag and first claim:

A recombinant nucleic acid molecule comprising a transcription regulatory nucleotide sequence operatively linked with a nucleotide sequence encoding a self-contained light-emitting reporter, wherein the transcription regulatory nucleotide sequence regulates expression of a gene that signals production of a target product of a fermentative or synthetic pathway in a cell.

The applicant made a response to a non-final Office Action in December 2010.

**As to investors not paying attention to the Butamax lawsuit against Gevo, recall the
previous post on IPBiz,
IP issues for small businesses
The majority of all respondents (80%) believe that the most common consequence of insufficient due diligence is the failure to properly identify IP risks.


Blogger Dan said...

The company Cobalt Technologies is also making biobutanol from genetically modified organisms. What has presented them from being sued?

9:58 PM  

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