In Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. No. 13-576-SLR (D. Del. Jul. 26, 2013), Judge Sue L. Robinson recently considered several motions for summary judgment, construed disputed claim terms and ruled on a motion to exclude expert testimony.
The Court construed the following terms of U.S. Patent Nos. 8,017,375 (“the ‘375 patent”) and 8,017,376 (“the ‘376 patent”), which relate to the production of biomass-derived biofuels:
a ketol-acid reductoisomerase, id. at 6-7;
an a-ketoisovalerate decarboxylase from Lactococcus lactis, id. at 7;
wherein said recombinant yeast microorganism has reduced endogenous PDC activity as compared to the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id.;
is further engineered or selected to grow on glucose independently of C2-compounds at a growth rate substantially equivalent to the growth rate of the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id. at 8;
activator of ferrous transport (Aft) proteins, id. at 10;
which increase the dehydratase activity of DHAD, id.;
wherein said ketol-acid reductoisomerase is an NADH-dependant ketol-acid reductoisomerase, id. at 10-11; and
a constitutively active Aft protein, id. at 11.
The Court granted one defendant’s motion for summary judgment of non-infringement as to the ‘376 patent and as to certain claims of the ‘375 patent, finding the doctrine of equivalents inapplicable. See id. at 17-27. Plaintiff also did not argue that defendant literally infringed the ‘375 patent and conceded that fact with respect to the ‘376 patent. Id. at 23, 27.
The Court also granted the same defendant’s motion for summary judgment as to the invalidity of the ‘375 patent. Defendant argued lack of both written description and enablement. This patent claimed the creation of significantly higher yields of the patented invention than the yields the inventor had actually obtained. Id. at 32. The Court concluded that the patent was invalid for lack of written description because “persons skilled in art would [not] recognize in the patent’s disclosure a description of the higher yields of the claimed invention.” Id. at 33. “The parties’ experts agree that the technology at issue is both complex and unpredictable. . . . The specification provides no detail on how to practice claim 1 to achieve higher yields.” Id. The patent was also invalid for lack of enablement, for similar reasons. See id. at 36.
The Court did not grant either parties’ motions for summary judgment on the validity/invalidity of the ‘376 patent, finding that there were issues of material fact as to whether the patent was invalid for lack of enablement, specifically issues “bearing on the disclosures and the amount of experimentation required to practice the full scope of the claims.” Id. at 38.
Defendant also argued that the ‘376 patent was anticipated by defendant’s International Patent Application. The Court did not address the substance of this argument because issues of material fact remained as to whether the inventors of the ‘376 patent conceived and reduced their invention to practice before the priority date of the International Patent Application. Id. at 43-44. The Court did note that “if [this application] is found to be anticipatory, [plaintiff] is precluded from making substantive arguments against anticipation as it did not do so herein.” Id. at 44 n.29.
Finally, both defendants moved to exclude the testimony of plaintiff’s expert. The Court denied this Daubert motion because defendants’ “arguments that [the expert] did not independently conduct experiments as part of his analysis do not preclude his testimony or opinions.” Id. at 44.