Gevo, Butamax continue battle in patent office, courts

By Holly Jessen | April 15, 2013

The patent battle between Gevo Inc. and Butamax Advanced Biofuels LLC is continuing with recent action in the U.S. Patent and Trademark Office. Unsurprisingly, the two companies had different views on the event.

A non-final action closing prosecution was issued April 10 on Gevo’s patent No. 8,101,808, the patent for Gevo's Integrated Fermentation Technology. According to patent office documents all claims under reexamination were rejected. Gevo, the patent owner, can file written comments and/or present a proposed amendment to the claims within 30 days. The current action is not final and therefore cannot be appealed, the documents said.  

The patent office specialist has now heard both sides of the arguments about this patent, Butamax said in its press release, and came to the conclusion that all the claims are unpatentable. "We are … pleased with the USPTO's decision to close prosecution on Gevo's GIFT patent, rejecting all claims,” said Paul Beckwith, Butamax CEO. “We have never been able to see what this patent taught beyond what was very well known in the art and so, in our view, this decision is entirely appropriate." The 808 patent is one of seven Gevo patents subject to reexamination at the patent office, Butamax said, adding that it had recently petitioned for review of two other patents related to Gevo’s 808 patent.

Gevo, on the other hand, pointed out that the company had overcome 110 previous rejections in the patent office reexamination process. The patent office examiner introduced a limited number of new rejections in the latest non-final action, giving Gevo the opportunity to respond, the company said. "Gevo will respond to the ACP and is confident that the remarks presented in the response will be sufficient to overcome the limited number of new rejections," said Brett Lund, Gevo's executive vice president and general counsel.  "Importantly, Gevo was successful in eliminating all of the previous 110 rejections presented in the first office action and the minimal number of new rejections are based on obviousness as opposed to novelty."

In addition, the 808 patent remains valid and enforceable during the reexamination process, Gevo said. The non-final action closing prosecution doesn’t impact the company’s ability to commercialize isobutanol or impact operations at its retrofitted ethanol plant in Luverne, Minn. The company has other patents, the Gevo pointed out. In addition, the company is suing Butamax for infringing on its 808 patent and the case is scheduled to go to trial in July 2014.

In related news, Butamax said it was granted a new patent April 2, the fifth one awarded this year. The patent covers in-situ recovery of alcohols produced during fermentation, for low-cost recovery of biobutanol.

In addition, Gevo sent out a press release announcing that a final judgment was entered in U.S. District Court for the District of Delaware in a court case between Gevo and Butamax. The judge’s ruling on this case was reported previously.  Gevo said that it does not infringe on Butamax asserted patents under the court’s construction of a key claim term in two of Butamax’s patents while Butamax said it disagreed with the court’s claim construction and announced it would appeal.