Butamax™ Advanced Biofuels LLC v. Gevo, Inc.

• Decision Date: 19 June 2012
• Docket Number: Civ. No. 11–54–SLR.
• Parties: BUTAMAX™ ADVANCED BIOFUELS LLC, Plaintiff, v. GEVO, INC., Defendant.
• Court: U.S. District Court — District of Delaware

868 F.Supp.2d 359

BUTAMAX™ ADVANCED BIOFUELS LLC, Plaintiff,

v.GEVO, INC., Defendant.

Civ. No. 11–54–SLR.

United States District Court,

D. Delaware.

June 19, 2012.

Richard L. Horwitz, Esquire and David E. Moore, Esquire of Potter, Anderson & Corroon LLP, Wilmington, DE, Of Counsel: Leora Ben–Ami, Esquire, Thomas F. Fleming, Esquire, Christopher T. Jagoe, Esquire and Hank Heckel, Esquire of Kaye Scholer, for Plaintiff.

Thomas C. Grimm, Esquire and Jeremy A. Tigan, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, Of Counsel: James P. Brogan, Esquire, Carolyn V. Juarez, Esquire, Ann Marie Byers, Esquire, Michelle S. Rhyu, Esquire, Jesse Dyer, Esquire, Dan Knauss, Esquire of Cooley LLP, for Defendant.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On January 14, 2011, Butamax™ Advanced Biofuels LLC (“plaintiff” or “Butamax”)filed suit in this district against Gevo, Inc. (“defendant” or “Gevo”) alleging infringement of United States 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, col. 2:3–6) Defendant answered plaintiff's complaint on March 25, 2011. (D.I. 10) On August 11, 2011, plaintiff filed an amended complaint. (D.I. 41) The amended complaint added a count of infringement; specifically, plaintiff alleged that defendant also infringed United States Patent No. 7,993,889 (“the '889 patent”). (D.I. 41) The '899 patent was filed as a divisional application from the '188 patent and also claims a method for isobutanol production using recombinant microorganisms with an engineered biosynthetic pathway. ('899 patent, col. 2:3–6) Defendant answered the amended complaint on September 13, 2011. (D.I. 52)

On September 22, 2011, plaintiff filed a motion for preliminary injunction which sought to enjoin defendant from infringing the '899 patent. (D.I. 61) A discovery and briefing schedule was stipulated to by the parties. (D.I. 106) Following the exchange of discovery and the completion of briefing, the court held an evidentiary hearing on the matter. The hearing occurred on March 1–2, 2012. The parties filed opposing post-hearing briefs on March 16, 2012. (D.I. 233, 234)

Presently before the court are the following: plaintiff's motion for a preliminary injunction (D.I. 61); defendant's motion for leave to file a sur-reply and declaration ¹ (D.I. 217); defendant's motion to supplement the record ² (D.I. 232); and defendant's amended motion to supplement the record ³ (D.I. 283). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). For the reasons discussed more fully below, the court denies plaintiff's motion for a preliminary injunction.

II. BACKGROUNDA. Parties

Plaintiff 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) Plaintiff 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, plaintiff has developed a biological method of producing isobutanol, a type of biobutanol. ( Id.)

Defendant is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Englewood, Colorado. ( Id. at ¶ 2) Defendant is also involved in the commercial-scale production of isobutanol using biological methods. ( Id. at ¶ 11; D.I. 154 at 3)

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. (D.I. 62 at 2; '889 patent at col. 6:38–40; see also D.I. 41 at ¶ 15) Isobutanol is preferred over ethanol because it has a higher energy content and is less corrosive. (D.I. 62 at 2; '889 patent at col. 6:33–40) Plaintiff 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 at col. 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 at col. 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 at col. 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 at col. 44:28–32)

C. The Patent

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

The specification of the '889 patent admits 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 at col. 1:33–35) The inventors assert that using yeast or other comparable microorganisms to produce isobutanol would reduce green house gas emissions and, therefore, would be a desirable alternative to chemical synthesis. ( Id. at col. 1:36–38)

Yeast naturally produce low levels of isobutanol as a by-product of fermentation. ( Id. at col. 1:39–49) More specifically, isobutanol is produced from the catabolism, or metabolic breakdown, of the amino acid L-valine. ( Id.) However, use of L-valine on an industrial scale as a feed-stock for yeast fermentation is prohibitively expensive. ( Id. at col. 1:57) The inventors claim a more cost-efficient method of producing isobutanol directly from pyruvate, a product of sugar digestion, in lieu of L-valine. ( Id. at col. 325:15–18) The transformation of pyruvate to isobutanol is achieved through one of four multi-step biosynthetic pathways. ( Id. at col. 11:40–43)

In the claimed biosynthetic pathway, all of the necessary reaction substrates are components of “well-characterized pathways” that are naturally present in yeast. ( Id. at col. 11:57–61) The inventors assert that stimulating this pathway through the introduction of DNA constructs coding for enzymes specific to pathway steps yields increased isobutanol production. ( Id.;Id. at col. 17:9–19; Id. at col. 44:28–32) 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. ( Id. at col. 11:58–12:32) Independent claim 1, 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 acetolactate (pathway step a);

ii. acetolactate to 2, 3–dihydroxyisovalerate (pathway step b);

iii. 2, 3–dihydroxyisovalerate to a-ketoisovalerate (pathway step c);

iv. a-ketoisovalerate to isobutyraldehyde (pathway step d); and

v. isobutyraldehyde to isobutanol (pathway step e);

and wherein

a) the substrate to product conversion of step (i) is performed by an acetolactate synthase enzyme;

b) the substrate to product conversion of step (ii) is performed by an acetohydroxy acid isomeroreductase enzyme;

c) the substrate to product conversion of step (iii) is performed by an acetohydroxy acid dehydralase enzyme;

d) the substrate to product conversion of step (iv) is performed by a decarboxylase enzyme; and

e) the substrate to product conversion of step (v) is performed by an alcohol dehydrogenase enzyme;

whereby isobutanol is produced.

Dependent claims 13 and 14 are also at issue in the present preliminary injunction action. (D.I. 62 at 6) Claim 13 depends from claim 12, which in turn depends from claim 1. Claims 12 and 13 are reproduced below:

12. The recombinant yeast microorganism of claim 1 wherein the said microorganism further comprises inactivated genes thereby reducing yield loss from competing pathways for carbon flow.

13. The recombinant yeast microorganism of claim 12, wherein said inactivated genes reduce pyruvate decarboxylase activity.

Claim 14 depends only from claim 1 and reads as follows:

14. The method of claim 1, wherein one or more enzymes of said engineered isobutanol biosynthetic pathway uses NADH as an electron donor.

III. STANDARD OF REVIEW

Traditional rules of equity apply to requests for injunctive relief. See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). “The decision to grant or deny ... injunctive relief is an act of equitable discretion by the district court.” Id. The grant of a preliminary injunction is considered an “extraordinary remedy” that...