Thursday, February 20, 2014

PatentlyO questions validity under 35 USC 112 of Butamax claims in US 7,993,889

In a post on February 18, 2014, the blog PatentlyO takes on the patent drafting skills of Butamax [attorney: Lhulier; Christine M.] in the case of US 7,993,889 (issued August 9, 2011). Text from PatentlyO:

Now, the claims [of US 7,993,889] are interesting. Claim 1 is directed to a “method for producing isobutanol” that uses the “recombinant yeast microorganism.” Claim 12 is directed to “The recombinant yeast microorganism of claim 1.” Patent professionals will recognize the unusuality of this claim structure. Usually, a dependent claim is narrower than its referenced independent parentage. However, Butamax’s dependent claim 12 here is broader (in some ways) than the referenced claim 1.
In my mind, the Butamax claim structure does not fit within the structure authorized by §112(d) because the full effect of the “method” limitation is not included in the dependent composition claim. The result then, could be invalidity either as indefinite or for failure to comply with §112(d). See Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284 (Fed. Cir. 2006) (claim invalid for failure to properly structure the dependent claim).

Here, the Butamax claim is not directed to a resulting process but instead to a component used in the method, but perhaps that is not a worthwhile distinction. The appeal here arises from a district court finding that the claims were invalid on other grounds. On appeal, the Federal Circuit vacated that decision and remanded for reconsideration by the district court. Perhaps we’ll see the 112(d) issue briefed next time around.

Once an independent claim is found patentable, examiners often give short consideration to the subsequent dependent claims. That time-saving measure makes follows some logic since the dependent claims are supposed to be narrower than the allowed claim and thus should also be patentable over the prior art. Of course, this is one situation where that logic fails.

The case reference is to the attack on Lipitor claims by Ranbaxy.

IPBiz has covered this litigation for some time.

For example

Claim construction in Butamax/Gevo case by Judge Robinson (D. Del.) questioned by CAFC

Another round in Gevo/Butamax fight in D. Delaware

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

In the meantime, one wonders if Butamax will be seeking an injunction against Gevo.


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