Federal Circuit changes claim construction in Butamax v Gevo

February 20, 2014 |

In Delaware, Butamax Advanced Biofuels announced that a US Federal Circuit panel ruled that the District Court’s narrow interpretation of Butamax’s patents “was in error in the Butamax v Gevo fight.”

The Delaware district court’s claim construction of Butamax’s KARI was “an enzyme known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate and is NADPH-dependent.”

The Federal Circuit’s new claim construction is that Butamax’s KARI is “an enzyme, whether naturally occurring or otherwise, known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.” So, basically the Federal Circuit deleted the part that the KARI is “NADPH-dependent” but still requires the KARI to be known by EC number 1.1.1.86

Next stop: Delaware District Court

The case will be remanded to the Delaware District Court using the revised claim construction and Butamax will need to prevail on two issues: 1) its patents are valid; and 2) Gevo infringes them.

According to Butamax, “this decision paves the way for Butamax’s infringement case against Gevo on core biobutanol production patents to proceed under a favorable claim construction.”

The company added: “Gevo argued non-infringement of Butamax’s ‘188 and ‘889 patents by using a narrow definition of one of the enzymes in Butamax’s biobutanol pathway (the KARI enzyme). The Federal Circuit said that the narrow definition was incorrect and made clear that the plain meaning of Butamax’s patents applies. The Federal Circuit stated, that for the Butamax claims, a KARI enzyme is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.” Gevo public documents admit that their enzyme performs this step and Gevo itself has referred to this type of modified enzyme as having E.C. 1.1.1.86. Thus, Butamax is confident it will succeed in its infringement suit against Gevo.

Over to Gevo

Gevo said, “On remand, two issues remain to be determined: 1) whether the patents are valid; and 2) whether Gevo infringes them under the new claim interpretation. The claims of the two Butamax patents at issue are currently under reexamination at the United States Patent and Trademark Office (USPTO), which has declared them unpatentable. Gevo believes that it does not infringe any valid claims, and at this time maintains freedom to produce and sell isobutanol worldwide and into all markets.

“The United States Patent and Trademark Office (USPTO) has already rejected and declared unpatentable, all of the claims of relevance to Gevo in Butamax’s ‘188 and ‘889 patents. Even with this modification to the claim construction, Gevo’s KARI is not known by EC number 1.1.1.86.

Back to Butamax

Butamax added “The Federal Circuit also reversed the District Court’s decision on summary judgment that two of the claims of the ‘889 patent were invalid. The Federal Circuit stated that Butamax had raised sufficient basis to support its case for a jury trial on the validity of these claims. While the ‘188 and ‘889 patents are in reexamination at the USPTO, the patents remain valid and enforceable. These reexamination proceedings will continue for some time, however, they have already resulted in the USPTO examiner finding patentability of a Butamax patent claim. With this early indication of validity from the USPTO, Butamax is confident that key patent claims will withstand challenge. In addition to the ‘188 and ‘889 patents, Butamax has asserted six other patents against Gevo, three of which are set to go to trial this summer.

The Bottom Line

Looks like a round to Butamax, though not a knock-out punch.

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