Butamax™ Advanced Biofuels LLC v. GEVO, Inc.

• Decision Date: 19 March 2013
• Docket Number: Civ. No. 11–54–SLR.
• Citation: 931 F.Supp.2d 589
• Parties: BUTAMAX™ ADVANCED BIOFUELS LLC, Plaintiff/Counterclaim Defendant v. GEVO, INC., Defendant/Counterclaim Plaintiff v. E.I. DuPont De Nemours and Company, Counterclaim Defendant.
• Court: U.S. District Court — District of Delaware

931 F.Supp.2d 589

BUTAMAX™ ADVANCED BIOFUELS LLC, Plaintiff/Counterclaim Defendant

v.GEVO, INC., Defendant/Counterclaim Plaintiff

v.E.I. DuPont De Nemours and Company, Counterclaim Defendant.

Civ. No. 11–54–SLR.

United States District Court, D. Delaware.

March 19, 2013.

Richard L. Horwitz, Esquire and David E. Moore, Esquire of Potter, Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Leora Ben–Ami, Esquire, Thomas F. Fleming, Esquire, Christopher T. Jagoe, Esquire and Patricia A. Carson, Esquire, Daniel Forchheimer, Esquire, and Peter B. Silverman, Esquire of Kirkland & Ellis LLP.

Thomas C. Grimm, Esquire and Jeremy A. Tigan, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Stephen C. Neal, Esquire, Michelle S. Rhyu, Esquire, Benjamin G. Damstedt, Esquire, Daniel J. Knauss, Esquire of Cooley LLP.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On January 14, 2011, plaintiff Butamax™ Advanced Biofuels LLC (“Butamax”) filed suit in this district against defendant Gevo, Inc. (“Gevo”) alleging infringement of U.S. Patent No. 7,851,188 (“the '188 patent”). (D.I. 1) The '188 patent discloses and claims “a recombinant microorganism having an engineered isobutanol biosynthetic pathway” that “may be used for the commercial production of isobutanol.” ('188 patent, 2:3–6) Gevo answered the complaint on March 25, 2011. (D.I. 10) On August 11, 2011, Butamax filed an amended complaint, alleging that Gevo also infringed U.S. Patent No. 7,993,889 (“the '889 patent”). (D.I. 41) The '889 patent was filed as a divisional application from the '188 patent and claims a method for isobutanol production using recombinant microorganisms with an engineered biosynthetic pathway. ('889 patent, 2 :3–6)

Gevo answered the amended complaint on September 13, 2011 and counterclaimed against Butamax and E.I. DuPont De Nemours and Company (“DuPont”) alleging infringement of U.S. Patent Nos. 8,017,375 (“the '375 patent”) and 8,017,376 (“the '376 patent”), also related to the production of isobutanol from recombinant microorganisms. (D.I. 52) Butamax and DuPont answered the counterclaims on November 18, 2011 and counter-counterclaimed against Gevo seeking a declaratory judgment on non-infringement and invalidity of the ' 375 patent and the '376 patent. (D.I. 117) On December 9, 2011, Gevo answered the counter-counterclaims. (D.I. 130) On February 24, 2012, Butamax and DuPont filed a motion to sever Gevo's counterclaims, which was granted. (D.I. 213, D.I. 371) On June 21, 2012, upon the grant of its timely motion to amend, Butamax and DuPont amended its answer to the counterclaims and the counter-counterclaims adding affirmative defenses and counter-counterclaims of inequitable conduct. (D.I. 372) Gevo's untimely motion, filed June 29, 2012, seeking to amend its answer and counterclaims to include an affirmative defense and counterclaim of inequitable conduct was denied. (D.I. 388; D.I. 693)

On September 22, 2011, Butamax filed a motion for preliminary injunction which sought to enjoin Gevo from infringing the '889 patent. (D.I. 61) After an evidentiary hearing on the matter, March 1–2, 2012, the court denied Butamax's motion for preliminary injunction on June 19, 2012, 868 F.Supp.2d 359 (D.Del.2012). (D.I. 370) On June 25, 2012, Butamax appealed this decision. (D.I. 376) On December 26, 2012, the Federal Circuit affirmed this court's denial of the preliminary injunction. Butamax Advanced Biofuels LLC v. Gevo, Inc., 486 Fed.Appx. 883 (Fed.Cir.2012).

Presently before the court are several motions for summary judgment: Butamax's summary judgment motion of infringement of the '188 and '889 patents (D.I. 595) and cross-motion of no invalidity of the '889 patent (D.I. 622), as well as Gevo's motions for summary judgment of invalidity and non-infringement of the '188 and '889 patents. (D.I. 598; D.I. 610) Butamax and DuPont also filed a motion to exclude testimony by Gevo's experts with respect to the '188 patent and '376 patent. (D.I. 640) The court herein addresses this motion as it relates to the '188 patent and reserves its decision as it relates to the '376 patent. The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. BACKGROUNDA. The Parties

Butamax is a limited liability corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Wilmington, Delaware. (D.I. 41 at ¶ 1) Butamax develops methods of making biofuels such as biobutanol, a product which may be used as a fuel or as a feed-stock chemical in the production of various plastics, fibers and other products. ( Id.) In particular, Butamax has developed a biological method of producing isobutanol, a type of biobutanol. ( Id.)

Gevo is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Englewood, Colorado. (D.I. 52 at 5 ¶ 1) Gevo is also involved in the commercial-scale production of isobutanol using biological methods. ( Id. at ¶ 11; D.I. 154 at 3)

DuPont is a corporation organized and existing under the laws of the State of Delaware, with its principle place of business in Wilmington, Delaware. (D.I. 470 at 9 ¶ 2) DuPont is engaged in research and development relating to the production of isobutanol. ( Id. at 1 ¶ 5)

B. Technology

Isobutanol is an industrial chemical that may be blended with gasoline-based fuels as an alternative to ethanol, the current dominant biofuel in gasoline blends. ('889 patent, 6:38–40) Isobutanol is preferred over ethanol because it has a higher energy content and is less corrosive. ('889 patent, 6:33–40) Butamax proposes a method of producing isobutanol using genetically-engineered yeast microorganisms that promises to facilitate the transition to renewable transportation fuels and reduce greenhouse gas emissions. (D.I. 41 at ¶ 1)

This improved method for producing isobutanol is achieved by introducing engineered deoxyribonucleic acid (“DNA”) into microorganisms in order to stimulate isobutanol production. ( Id. at ¶ 12; '889 patent, 17:9–19) Microorganisms such as yeast and bacteria are capable of producing isobutanol through a five-step pathway consisting of the following five chemical conversions: (1) pyruvate to acetolactate; (2) acetolactate to 2,3–dihydroxyisovalerate; (3) 2,3–dihydroxyisovalerate to a-ketoisovalerate; (4) a-ketoisovalerate to isobutyraldehyde; and (5) isobutyraldehyde to isobutanol. (D.I. 41 at ¶ 12; '889 patent, 325:19–30) The engineered DNA constructs encode enzymes that catalyze, or increase the chemical reaction rate, of the five steps in the isobutanol biosynthesis pathway. (D.I. 41 at ¶ 12; '889 patent, 325:32–42) Introducing these enzyme-coding DNA constructs into the microorganism stimulates the biosynthetic pathway and increases overall isobutanol production. (D.I. 41 at ¶ 12; '889 patent, 44:28–32)

C. The Patents

The '188 patent, entitled “Fermentive Production of Four Carbon Alcohols,” was filed on October 25, 2006 and issued on December 14, 2010. It claims priority from provisional application No. 60/730,290 which was filed on October 26, 2005. The '889 patent was filed on January 23, 2008 and issued on August 9, 2011. The '889 patent is a divisional application of the '188 patent. Both the '889 patent and the '188 patent are assigned to Butamax. (D.I. 41 at ¶¶ 6, 9)

The specifications of the '188 and '889 patents admit that isobutanol may be chemically synthesized from starting materials derived from petrochemicals, but this method of synthesis is expensive and bad for the environment. ('889 patent, 1:33–35; '188 patent, 1:33–35) The inventors assert that using yeast or other comparable microorganisms to produce isobutanol would reduce greenhouse gas emissions and, therefore, would be a desirable alternative to chemical synthesis. ('889 patent, 1:36–38; ' 188 patent, 1:36–38)

Yeast naturally produce low levels of isobutanol as a by-product of fermentation. ('889 patent, 1:39–49; '188 patent, 1:39–49) More specifically, isobutanol is produced from the catabolism, or metabolic breakdown, of the amino acid L-valine. ('889 patent, 1:39–49; '188 patent, 1:39–49) However, use of L-valine on an industrial scale as a feed-stock for yeast fermentation is prohibitively expensive. ('889 patent, 1:57–59; '188 patent, 1:57–59) The inventors claim a more cost-efficient method of producing isobutanol directly from pyruvate, a product of sugar digestion, in lieu of L-valine. ('889 patent, 325:15–23; '188 patent, 335:20–23) The transformation of pyruvate to isobutanol is achieved through one of four multi-step biosynthetic pathways. ('889 patent, 11:40–43; '188 patent, 12:1–4)

In the claimed biosynthetic pathway, all of the necessary reaction substrates are components of “well-characterized pathways” that are naturally present in yeast. ('889 patent, 11:57–61; '188 patent, 12:19–21) The inventors assert that stimulating this pathway through the introduction of DNA constructs coding for one or more enzymes specific to pathway steps yields increased isobutanol production. ('889 patent, 17:9–19, 44:28–32; '188 patent, 19:45–55, 49:46–51) Although the enzymes are introduced via genetic manipulation, the enzymes also exist in yeast or other microorganisms as naturally-occurring components of the “well-characterized” enzymatic pathways. ('889 patent, 11:58–12:32; '188 patent, 12:19–60)

Independent claim 1 of the '889 patent, reproduced below, describes the preferred biosynthetic pathway and identifies which enzymes catalyze each step of the claimed pathway:

1. A method for producing isobutanol comprising;

a. providing a fermentation media comprising carbon substrate; and

b. contacting said media with a recombinant yeast microorganism expressing an engineered isobutanol biosynthetic pathway wherein said pathway comprises the following substrate to product conversions;

i. pyruvate to...