Thursday, May 28, 2015

Butamax Successfully Using IPR to Knock out Competitor Gevo’s Patents



Butamax Advanced Biofuels and Gevo, Inc. compete in the biofuels market, and the companies have been involved in a multifaceted patent dispute that generally involves patents directed towards the use of recombinant organisms to convert biomass into renewable fuels and chemical precursors, particularly isobutanol.   The dispute has played out largely in the courts, including a recent Supreme Court decision, but Butamax has also challenged multiple Gevo patents under the AIA’s new inter partes review (IPR), with notable success. Here is a quick summary.

On September 23, 2014, the (Patent Trial and Appeal Board) PTAB issued a Final Written Decision finding that claims 1-18 of US patent number 8,283,505 are unpatentable (IPR2014-00215).

On September 23, 2014, the PTAB issued a Final Written Decision finding that claims 1-28 of US patent number 8,304,588 are unpatentable (IPR2014-00214).

On March 3, 2015, the PTAB issued a Final Written Decision finding that claims 1-9 and 11-19 of US patent number 8,273,565 are unpatentable (IPR2014-00539).

On March 13, 2015, the PTAB issued a Final Written Decision finding that claims 1-21 of US patent number 8,546,627 are unpatentable (IPR2014-00250).

On May 15, 2015, the PTAB issued a Final Written Decision finding that claims 1-14 and 16-19 of US patent number 8,487,149 are unpatentable (IPR2014-00144).

On May 21, 2015, the PTAB issued a Final Written Decision finding that claims 1-21 of US patent number 8,378,160 are unpatentable (IPR2014-00143).

On May 21, 2015, the PTAB issued a Final Written Decision finding that claims 1-17 and 19-23 of US patent number 8,193,402 are unpatentable (IPR2014-00142).

On August 8, 2014, the PTAB issued a decision to institute inter partes review of claims 1-15 of US patent number 8,373,012 (IPR2014-00250). No written decision has issued from this case yet.

As an example of how these IPRs have played out, consider what happened with respect to Gevo’s US patent number 8,193,402 (IPR2014-00142). Claim 1 recites a fermentation process for converting biomass into a biofuel product that conforms with one of the established fuel standards that that define the physical composition and properties of various fuel categories. The standards are identified using the following nomenclature: ASTM D4814 (gasoline), ASTM D975 (diesel fuel), ASTM D910 (aviation gasoline), and ASTM D1655 (jet fuel), as defined by a standard setting organization called ASTM International.

1. A process for preparing renewable hydrocarbons comprising:
(a) treating biomass to form a feedstock;
(b) fermenting the feedstock with one or more species of microorganism, thereby forming one or more C2–C6 alcohols;
(c) dehydrating at least a portion of the one or more C2–C6 alcohols obtained in step (b), thereby forming a product comprising one or more C2–C6 olefins;
(d) isolating the one or more C2–C6 olefins;

(e) oligomerizing at least a portion of the one or more C2–C6 olefins isolated in step (d), thereby forming a product comprising one or more C6-C24 unsaturated oligomers; and

(f) hydrogenating at least a portion of the product of step (e) in the presence of hydrogen, thereby forming a product comprising one or more C6–C24 saturated alkanes;
 
whereby the product of step (f) itself meets the requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or ASTM D1655, or a blend of at least 10% of the product of step (f) with a mixture of hydrocarbons meets the requirements of at least one of ASTM D4814, ASTM D975, ASTM D910 or ASTM D1655.

The PTAB found this claim to be rendered obvious by a published patent application (102(e) prior art) combined with the ASTM specifications, which ASTM International makes available over the internet. In particular, the PTAB found that the published patent application describes steps (a)-(f), and that the only thing missing from this disclosure is the claim limitation of “whereby the product of step (f) itself meets the requirement of at least one of ASTM D4814 [].”  But this limitation was provided by the ASTM standards themselves. The PTAB found that one of skill in the art could have combined the teaching of the published application with the ASTM standard to arrive at a biofuel meeting the standard, and would have had reason to do so.

This is but one example of how the new IPR process has dramatically shifted the playing field by facilitating the invalidation of a competitor’s patents.The creation of IPR was probably the most significant change in patent law created by passage of the AIA.

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