IP Law Daily, PATENT NEWS: Denial of Preliminary Injunction in Biofuel Patent Case Upheld; Trial Court Told to Reconsider “Questionable” Claim Construction, (Nov 19, 2012)

By William Zale, J.D.

In affirming denial of a preliminary injunction sought by biofuels technology developer Butamax in a patent infringement case against its competitor, Gevo, the U.S. Court of Appeals for the Federal Circuit questioned the trial’s court’s “very questionable” construction of the claim term “acetohydroxy acid isomeroreductase”—that is “as an enzyme that is solely NADPH dependent” (Butamax Advanced Biofuels LLC v. Gevo, Inc., November 16, 2012, Rader, R.). The court directed the trial court to reconsider the construction on remand and also noted that “Gevo, Inc. raised a substantial question of validity concerning the asserted patent, a question which Butamax has failed to show ‘lacks substantial merit.’”

Both parties were engaged in the commercial-scale production of isobutanol, which is an industrial chemical that may be blended with gasoline-based fuels as an alternative to ethanol. Ethanol is currently the dominant biofuel used in gasoline blends. Butamax proposed a method of producing isobutanol by introducing engineered deoxyribonucleic acid (DNA) into microorganisms. Microorganisms such as yeast and bacteria are capable of producing isobutanol through a five-step pathway consisting of a series of chemical conversions.

Butamax held a patent entitled “Fermentive Production of Four Carbon Alcohols” (the '889 patent”), which was filed on January 23, 2008 and issued on August 9, 2011. The '889 patent was filed as a divisional application of another patent (“the '188 patent”), which disclosed “a recombinant microorganism having an engineered isobutanol biosynthetic pathway” that “may be used for the commercial production of isobutanol.” The application for the '188 patent was filed on October 25, 2006.

On January 14, 2011, Butamax filed suit against Gevo alleging infringement of the '188 patent. Butamax filed an amended complaint on August 11, 2011, which added a count alleging that Gevo also infringed the '889 patent. On September 22, Butamax filed a motion to preliminarily enjoin Gevo from infringing the '889 patent.

Claim Construction

The infringement dispute was, essentially, one of claim construction, the trial court said in its June 19 opinion denying Butamax’s motion for a preliminary injunction. The parties disputed the meaning of the term “acetohydroxy acid isomeroreductase enzyme” (also known as a “KARI”), the enzyme used in the second step of claim 1 of the '889 patent. The trial court construed the term as describing an enzyme that was solely dependent on the use of a cofactor called NADPH as an electron donor, as opposed to an enzyme that was dependent on a cofactor called NADH or one that was dependent on either NADPH or NADH. Gevo’s process for producing isobutanol used an NADH-dependent enzyme to catalyze its step two reaction.

Validity

Gevo argued in the trial court that Butamax could not succeed on the merits because, upon reexamination, claims 1 and 14 of the '889 patent had been rejected by the U.S. Patent and Trademark Office as anticipated by prior art and claim 1 had been rejected as obvious.

Butamax responded that the PTO used too broad a claim construction and argued that claim 1 should be construed to require a specific combination of enzymes working together in a five-step biosynthetic pathway not described by the prior art. The trial court rejected this narrow construction, noting that there was no specific description in the specification of where and how the pathway of claim 1 was engineered and no requirement in the claim itself for any specific genetic alteration or introduction of specific nucleic acid sequences. Therefore, the trial court concluded, there was a substantial question concerning the validity of claims 1 and 14, precluding the grant of a preliminary injunction.

In addition, there was a substantial question as to whether claim 13 of the '889 patent failed to satisfy the written description requirement of Sec. 112 of the Patent Act, in the trial court’s view. Claim 13 did not sufficiently disclose the requirement of “inactivated genes” or describe the necessity of inactivated genes to reduce “pyruvate decarboxylase activity,” which inhibited isobutanol production.

The case is No. 2012-1490.

Leora Ben-Ami (Kirkland & Ellis LLP) for Butamax Advanced Biofuels LLC. Gerald J. Flattmann, Jr. (Paul Hastings LLP) for Gevo, Inc.

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