Monday, May 07, 2012

Re-examination of Gevo's US Patent 8,017,376

As to the re-examination of Gevo's US Patent, 8,017,376  [inter partes re-exam 95/001,870  ], there was an Action on March 23, 2012.  Therein, claims 1-8, 10-15, and 17-20 were rejected.  One basis of rejection was 102(e) over the disclosure within WO 2011/103300 ("Flint").   This document was NOT of record during the prosecution of Gevo's '376 patent.   The Flint application (PCT/US2011/025258, rights assigned to Butamax) claims priority to US provisional 61/305,333, filed 17 Feb. 2010.  However, Gevo's '376 patent claims priority to U.S. Provisional Application Ser. No. 61/263,952, filed Nov. 24, 2009, and U.S. Provisional Application Ser. No. 61/350,209, filed Jun. 1, 2010.  Among other things, the contents of provisional 61/263,952 will be important to this re-exam, and that analysis involves simply reading the provisional application.

On April 12, 2012, Gevo requested an extension of time to respond by June 25, 2012, primarily because of time obligations of one of the inventors, Andrew Hawkins.   The time extension request was granted.  The request brought up the possibility of swearing behind the 102(e) rejection.

A press release on May 3, 2012 included the text:

“We are extremely pleased with the USPTO’s decision to uphold key claims of our ‘376 Patent,” said Brett Lund, Gevo’s EVP and General Counsel. “The USPTO only adopted a fraction of Butamax’s proposed rejections and simultaneously upheld the validity of claims we believe Butamax is infringing. Despite Butamax’s statements to the contrary, this decision is a significant win for Gevo, and bolsters our pending infringement case against Butamax.”
“Importantly, the USPTO’s decision means that Butamax is now prohibited from asserting that Gevo’s upheld claims are invalid during litigation. As evidenced by Butamax’s own publications, we are confident that they are infringing our ‘376 Patent and we look forward to proving that in court,” added Lund.
There are three different continuing applications arising from a different Gevo issued patent, U.S. Patent 8,101,808, which are 13/344,460 13/344,464 , and 13/302,775 .  Butamax stated on May 3, 2012 that it is requesting that the United States Patent and Trademark Office reexamine the Gevo "GIFT" Patent No. 8,101,808.


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