ButamaxTM Advanced Biofuels LLC v. Gevo, Inc.: Final Written Decision IPR2013-0214
Tuesday, September 30, 2014

Takeaway: The Rules governing PTAB proceedings do not permit the incorporation of arguments from one document into another.

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that each of the challenged claims, namely, claims 1-28 of the ’588 patent, is unpatentable. The ’588 patent relates to a method for recovering alcohols from dilute aqueous solutions such as fermentation broths used in connection with a beer still.

The Board had previously found in its Decision to Institute that Patent Owner had not adequately proven that a certain third party was a real party in interest. Patent Owner believed that the Board’s decision on this point was in error, and therefore renewed its arguments “for the reasons stated previously” in connection with this issue in its Patent Owner Response.  Nonetheless, the Board did not revisit Patent Owner’s real-party-in-interest arguments because 37 C.F.R. § 42.6(a)(3) does not permit the incorporation of arguments from one document into another.

Trial had been instituted for each of challenged claims 1-28 on each of the following obviousness grounds: (1) the combination of English, Hess, and D’Amore; and (2) the combination of Maiorella, Hess, and D’Amore. The Board had construed several terms in its Decision to Institute, two of which Patent Owner had challenged.  But the Board found Patent Owner’s challenges to be unconvincing.

In connection with the claim term “fermentation medium,” Patent Owner had argued that certain claim steps were required to include microorganisms. The Board disagreed because both independent claims 1 and 14 used the open transition term “comprising.”  Patent Owner also argued that the claim term “retrofit ethanol production plant” required “an existing, functioning ethanol plant reconfigured for producing isobutanol.”  The Board disagreed, finding that the claims and the specification did not support the narrow interpretation of “retrofit ethanol production plant” advocated by Patent Owner.

Petitioner relied on the declaration of Dr. Andrew J. Daugulis to support the Petition, and Patent Owner relied on the declaration of Dr. Angelo Lucia to support Patent Owner’s Response. Petitioner argued that claims 1-28 should be found unpatentable as having been obvious over the combination of English, Hess, and D’Amore, or the combination of Maiorella, Hess, and D’Amore.  In reply, Patent Owner contended that the applied references did not teach or suggest each of the limitations of the independent claims, and that one skilled in the art would not have been motivated to combine these references in the manner proposed.  The Board agreed with Petitioner, and went on to hold that Petitioner had successfully shown each of challenged claims 1-28 of the ’588 patent was unpatentable.

ButamaxTM Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214 
Paper 46: Final Written Decision 
Dated: September 23, 2014 
Patent: 8,304,588 B2 
Before: Rama G. Elluru, Christopher L. Crumbley, and Zhenyu Yang 
Written by: Yang
Related Proceedings: IPR2013-000215

 

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