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.