USPTO rules on Butamax and Gevo dispute, companies respond

By Matt Soberg | November 30, 2011

The U.S. Patent and Trademark Office issued reexamination rulings on two isobutanol-related patents owned by Butamax Advanced Biofuels LLC, and both companies involved, Butamax and Gevo Inc., responded on Nov. 28. The USPTO denied reexamination of the first Butamax patent, U.S. Patent No. 7,851,188 (‘188), while agreeing to reexamine the second, U.S. Patent No. 7,993,889 (‘889). Despite the presence of pending reexamination proceedings, each claim of a patent is presumed valid and may be enforced, according to the USPTO. 

A ruling granting a reexamination is not a determination of claim patentability but means that the request established the existence of at least one Substantial New Question of Patentability (SNQ). To be granted, a request for reexamination must establish the existence of new technology not previously considered involving the patent, according to the USPTO. The SNQ is established based on prior patents and printed publications. A denial is also not a determination of patentability and simply means no SNQ’s exist necessary for reexamination.

In response to the ruling, Brett Lund, Gevo executive vice president and general counsel, stated, “The USPTO action raises serious questions regarding the merits of Butamax’s claims against Gevo and strengthens our position in the pending infringement lawsuit.”

Butamax CEO Paul Beckwith commented, “We are pleased that the U.S. Patent Office found Gevo’s attempts to invalidate our first patent to be without merit and we are confident that our second patent, which is a continuation of the first, will ultimately receive the same revalidation.” 

“According to USPTO statistics, 95 percent of reexamine requests are granted.  The denial of reexamination for the ‘188 patent demonstrates the strength of the patent and Butamax’s clear position as the true innovator of biobutanol production technology,” said Butamax COO Peter Matrai. 

Butamax filed patent infringement lawsuits in federal court in December 2010 and August 2011 against Gevo for alleged use of Butamax’s biobutanol technology.