Previous posts (e.g., here, here and here) discussed the continually expanding green patent war between advanced biofuels startup Gevo and a BP-DuPont joint venture called Butamax Advanced Biofuels (Butamax).
There are at least 17 patents at issue in the various actions brought by both parties. The patents relate to methods of production of biobutanol and enzymes used in the production processes.
In the first appellate court ruling of the litigation, Butamax lost its bid to obtain a preliminary injunction against Gevo.
Butamax had requested that a Delaware district court enjoin Gevo from selling biobutanol which allegedly infringed U.S. Patent No. 7,993,889, entitled “Fermentive production of four carbon alcohols” (‘889 Patent). The ‘889 Patent is directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.
The Delaware district court denied Butamax’s motion because Gevo’s strong non-infringement position made it unlikely that Butamax would prevail on infringement, and there was doubt as to the validity of the ‘889 Patent as some claims had been preliminarily rejected by the U.S. Patent and Trademark Office in reexamination proceedings.
Butamax appealed, and the Federal Circuit affirmed the district court’s denial of the preliminary injunction. On appeal Butamax had to show the district court’s decision was an abuse of discretion and that the validity question raised by Gevo “lacks substantial merit.”
The Federal Circuit found Butamax failed on both counts, though the decision focused primarily on the validity issue:
Based on the record and this standard of review, this court affirms the denial of the preliminary injunction. Gevo, Inc. raised a substantial question of validity concerning the asserted patent, a question which Butamax has failed to show “lacks substantial merit.”
However, the appeals court did call into question a claim construction ruling of the district court which was favorable to Gevo. More particularly, the district court had construed an enzyme recited in a ‘889 Patent claim relatively narrowly as being defined with respect to only one of two possible cofactors, i.e., as only NADPH dependent.
The Federal Circuit indicated it disagreed with this claim construction and advised the district court to reconsider at the claim construction hearing:
this court’s affirmance should not be read to endorse the trial court’s very questionable construction of the claim term “acetohydroxy acid isomeroreductase” – that is “as an enzyme that is solely NADPH dependent.” The trial court should reconsider its construction when it holds a Markman hearing.
So the case will move forward, and Gevo may continue to sell its bio-based isobutanol while the litigation is pending.