In a previous post, I wrote about a patent infringement suit between Danish biopharm rivals Novozymes and Danisco, which are both active in developing enzymes used in production of biofuels.

In the suit, Novozymes has accused Danisco of infringing U.S. Patent No. 7,713,723 (’723 Patent) by selling alpha amylase enzymes including Danisco’s GC358 product.  See the complaint here: novozymes_complaint.pdf.

The ’723 Patent is entitled “Alpha amylase mutants with altered properties” and relates to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production.

Last month Judge Barbara B. Crabb of the U.S. District Court for the Western District of Wisconsin denied Danisco’s motion for summary judgment of invalidity of the ’723 Patent. 

In the Opinion (Novozymes-Order), Judge Crabb rejected Danisco’s argument that the patent is invalid for insufficient written description. 

A U.S. patent must have an adequate written description to be valid.  This means the patent’s specification (which includes the description and figures, but not the claims) must convey to a person skilled in the relevant technical field that the inventor actually invented and “had possession” of the claimed invention.

Danisco argued that the ’723 Patent – directed to a substitution of an amino acid at position 239 in the alpha-amylase protein - was inadequate because the written description lists position 239 as one of 33 possible positions for an “alteration” and lists a substitution as just one possible type of alteration.

According to Danisco, that extensive variability means the ’723 Patent identifies 8.589 x 10⁴² possibilities for experimentation to arrive at the claimed invention.

Despite “doubts” about the adequacy of the written description, Judge Crabb concluded that Danisco did not meet its burden of proving invalidity as a matter of law. 

The opinion notes that Novozymes put forth expert testimony and other evidence sufficient to create an issue of fact as to whether a person of skill in the art would interpret the specification of the ’723 Patent as disclosing that substitutions at each of the 33 positions would lead to improved stability of the alpha amylase.

The decision was a close one for Judge Crabb, who stated in the opinion ”[i]t is not without hesitation that I am denying defendants’ motion.”  This will be an interesting case to watch, and one that could go down to the wire.

Butamax Advanced Biofuels (Butamax) is a Delaware-based joint venture between BP and DuPont formed in 2009 to develop biobutanol. 

Biobutanol is an advanced biofuel which has some important advantages over ethanol, including an energy content closer to that of gasoline and the capacity to create higher blend concentrations with gasoline.

Butamax owns U.S. Patent No. 7,851,188, entitled “Fermentive production of four carbon alcohols” (’188 Patent).  The ’188 Patent is directed to Butamax’s biobutanol production technology and recombinant microbial host cells that produce the biofuel.

Last month Butamax sued Gevo, an Englewood, Colorado, advanced biofuels company, for infringement of the ’188 Patent.

The complaint (Butamax_Complaint), filed in federal court in Delaware, alleges that Gevo’s isobutanol production pathway infringes the ’188 Patent:

On information and belief, Gevo makes recombinant microbial host cells by engineering DNA constructs containing isobutanol pathway genes and integrating them into the cells.  These DNA constructs encode enzymes that catalyze conversion of 1) pyruvate to acetolactate; 2) acetolactate to 2,3-dihydroxyisovalerate; 3) 2,3-dihydroxyisovalerate to α-ketoisovalerate; and 4) α-ketoisovalerate to isobutyraldehyde.  These host cells produce isobutanol through this pathway.

According to the complaint, Gevo has produced isobutanol using such microbial host cells in a retrofitted ethanol production facility and is converting another ethanol facility for isobutanol production.

Butamax is seeking an injunction and monetary damages.

As far as I know, this is the first instance of biofuel patent litigation involving a major oil company.  With the oil majors increasingly involved in biofuels startups via research funding, buyouts, and JVs like Butamax, it won’t be the last.

In previous posts (here and here), I’ve discussed the series of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech, against a host of ethanol producers across the midwestern United States.

The litigation currently consists of 11 actions in which GreenShift has accused the defendants of infringing U.S. Patent No. 7,601,858 (’858 Patent), entitled “Method of processing ethanol byproducts and related subsystems.”

Last month the Judicial Panel on Multidistrict Litigation granted GreenShift’s motion to consolidate all the cases in the Southern District of Indiana.

In the Transfer Order, the Panel found that there would be common questions of fact among all the cases and consolidation would be more efficient for the courts and more convenient for the parties:

we find that these eleven actions involve common questions of fact, and that centralization . . . in the Southern District of Indiana will serve the convenience of the parties and witnesses and promote the just and efficient conduct of the litigation.

In particular, the Panel noted that the validity and enforceability of the ’858 Patent are likely to be at issue in all eleven actions.

The Panel chose the Southern District of Indiana because it was a satisfactory and relatively convenient forum for most of the defendants:

This district is a primary or alternative choice for transferee forum for all but one responding party.  Moreover, this readily accessible district is near many of the alleged direct infringers — ethanol manufacturers that allegedly employ the patented process — which are scattered throughout the Midwest. 

The ’858 Patent is directed to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the ’858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GreenShift’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

Defendants in the consolidated litigation include Adkins Energy, Cardinal Ethanol, Big River Resources Galva, Amaizing Energy Atlantic, Center Ethanol, Bushmills Ethanol, United Wisconsin Grain Producers, Blue Flint Ethanol and Iroquois Bio-Energy.

A previous post discussed GreenShift Corporation’s (GreenShift) volley of recent patent suits against a host of ethanol producers across the midwestern United States. 

In those lawsuits GreenShift accused various ethanol producers of infringing U.S. Patent No. 7,601,858 (’858 Patent), entitled “Method of processing ethanol byproducts and related subsystems.” 

Last month GreenShift added another infringement action to the mix when it sued an Illinois company called Adkins Energy, which runs an ethanol production facility.  The complaint (gs-adkins_complaint.pdf) was filed in the Northern District of Illinois and accuses Adkins of infringing the ’858 Patent.

The ’858 Patent is directed to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the ’858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

This latest complaint brings the total to at least ten patent infringement actions brought by GreenShift, all involving allegations of infringing the ’858 Patent. 

Defendants in the other cases include Cardinal Ethanol, Big River Resources Galva, Amaizing Energy Atlantic, Center Ethanol, Bushmills Ethanol, United Wisconsin Grain Producers, Blue Flint Ethanol and Iroquois Bio-Energy.

Novozymes is a Danish biopharmaceutical company that develops enzymes for a variety of applications, including for use in production of biofuels.

The ink had barely dried on the company’s newly-issued U.S. Patent No. 7,713,723 (’723 Patent) when Novozymes sued its Danish rival Danisco, along with Genencor International Wisconsin, for patent infringement.

The ’723 Patent is entitled “Alpha amylase mutants with altered properties” and is directed to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production.

According to the complaint (novozymes_complaint.pdf), filed in the Western District of Wisconsin, the defendants are infringing the ’723 Patent by selling alpha amylase enzymes including Danisco’s GC358 product.

This is not the first time these Danish rivals have litigated a patent relating to enzymes for ethanol production.  In 2007, Danisco paid Novozymes $15.3 million to settle a lawsuit involving alleged infringement of a patent for the enzyme spezyme ethyl.

In previous posts (here and here) I discussed GreenShift Corporation’s (GreenShift) patent suits against New Jersey-based separator and decanter maker  GEA Westfalia Separator, Inc. (Westfalia) and ethanol maker Cardinal Ethanol (“Cardinal”).

In both suits GreenShift accused the defendants of infringing U.S. Patent No. 7,601,858 (’858 Patent), entitled “Method of processing ethanol byproducts and related subsystems.”

GS CleanTech Corporation (GS), a wholly owned subsidiary of GreenShift, has recently turned up the heat on a host of ethanol producers, firing off complaints in courthouses across the midwestern United States.  The recent lawsuits include:

GS CleanTech Corp. v. Big River Resources Galva, LLC, filed February 12, 2010 in the Northern District of Illinois (gs-galva_complaint.pdf);

GS CleanTech Corp. v. Amaizing Energy Atlantic, LLC, filed May 3, 2010 in the Northern District of Iowa (gs-amaizing_complaint.pdf);

GS CleanTech Corp. v. Center Ethanol, LLC, filed May 3, 2010 in the Northern District of Illinois (gs-centerethanol_complaint.pdf);

GS CleanTech Corp. v. Bushmills Ethanol, Inc., filed May 3, 2010 in the District of Minnesota (gs-bushmills_complaint.pdf);

GS CleanTech Corp. v. United Wisconsin Grain Producers, LLC, filed May 3, 2010 in the Western District of Wisconsin (gs-wisconsin_complaint.pdf);

GS CleanTech Corp. v. Blue Flint Ethanol, LLC, filed May 3, 2010 in the District of North Dakota (gs-blueflint_complaint.pdf); and

GS CleanTech Corp. v. Iroquois Bio-Energy Company, filed May 3, 2010 in the Northern District of Indiana (gs-iroquois_complaint.pdf).

The ’858 Patent is directed to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the ’858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

By my count the complaints filed this month bring GS’s patent enforcement total to nine lawsuits, which suddenly makes this a major green patent story.  Stay tuned.