Judge Robinson recently denied a motion to dismiss for lack of subject matter jurisdiction filed by Gevo in its ongoing biofuel patent infringement dispute with Butamax and DuPont. Butamax filed the action in question against Gevo seeking a declaratory judgment of non-infringement of a certain patent (the “’505 patent”). The ’505 patent is a continuation of a patent at issue in one of the other fifteen cases pending between the parties (the “’808 patent”). Gevo responded with the motion to dismiss, raising a challenge to declaratory judgment jurisdiction. See Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 12-1301-SLR, Memorandum Order at 1-5 (D. Del. May 2, 2013).
Although the ’505 patent was terminally disclaimed over the ’808 patent, Gevo alleged that claims of the ’505 patent were “distinct from those of the ’808 patent [and] thus, Gevo’s assertion of infringement of the ’808 patent [did] not necessarily implicate the ’505 patent.” Id. at 5. Judge Robinson concluded, however, that “[c]omparing the claims of the ’505 patent and the ’808 patent . . . there are substantial similarities in the claimed subject matter.” Moreover, “the pattern of litigation between the parties and the close relationship between the patents constitute facts sufficient to show the existence of an actual controversy between the parties.” Id. Futhermore, Gevo’s assertion that it “lack[ed] sufficient information regarding the fermentation conditions of Butamax and DuPont’s products to determine if they infringe the ’505 patent” was unconvincing given that “the ’505 patent in a continuation of the ’808 patent and Gevo has not offered Butamax and DuPont a covenant not to sue on the ’505 patent.” Id. at n.3. Accordingly, Judge Robinson found that a sufficient controversy existed for declaratory judgment jurisdiction and denied the motion to dismiss.