The United States Patent and Trademark Office (USPTO) has agreed to a second request by Gevo (Englewood, CA) to have the agency review a Butamax Advanced Biofuels (Wilmington, DE) patent in an ongoing infringement battle between the two biobased butanol producers.
According to Gevo, the USPTO has rejected all of Butamax’s patent claims covering isobutanol-producing yeast in Patent No. 7,851,188 (‘188 patent), which Butamax claims in an earlier suit is being infringed by Gevo. Executive v.p. Brett Lund says the USPTO’s decision “solidifies” Gevo’s position that the patents Butamax has asserted against Gevo are invalid and unenforceable. “This represents yet another positive development that further strengthens our position in what we see as Butamax’s unfounded assertion,” he adds.
Butamax, however, says the reexamination was granted in error, and in “clear conflict” with earlier USPTO decisions, namely an October 2011 denial by the USPTO to reexamine the ‘188 patent at Gevo’s request and a subsequent denial by the US PTO director on appeal, Butamax says. “Given the very strong and declarative order issued by a US PTO director, our foundational patent is reaffirmed. The subsequent grant of the second request for reexamination on the ‘188 patent is not consistent with this ruling,” says Paul Beckwith, Butamax CEO. “We are seeking clarification on the basis for the re-examination, we do not believe the USPTO should have considered Gevo’s second reexam request.”
The USPTO had previously agreed to reexamine Butamax Patent No. 7,993,889 (‘889 patent). Butamax filed suit against Gevo in early 2011 claiming Gevo infringed upon the ‘188 and ‘889 patents. Gevo filed a countersuit in September, alleging Butamax infringed upon two Gevo patents covering modifications to yeast that enable the organism to produce high yields of isobutanol.
Butamax says both patents remain in full force and effect during any reexamination process, which can take years to conclude. Trial is set for April 2013.
Isobutanol is a four-carbon chemical that can be sold directly in the marketplace as a solvent and gasoline blendstock, or it can be converted into butenes, the precursors for 40% of all petrochemicals and 100% of all hydrocarbon fuels. Potential specialty chemical market applications for isobutanol total 1 billion gals/year, while the annual fuel blending opportunity is as high as 40 billion gallons, Gevo says. Penetrating just 1% of the fuels market and 5% of chemicals market translates into 9 billion gals.
The global market for isobutanol to date, however, has been limited to about 500,000 m.t./year because of the high cost of petroleum-based routes.
Gevo is currently retrofitting an ethanol facility at Luverne, MN to produce 18 million gal/year isobutanol. Start-up is expected in the first half of 2012. Another 38 million gal/year is expected to be online in late 2012 at a retrofitted facility at Redfield, SD.
Butamax, a DuPont and BP joint venture, expects to deploy its first retrofit project in 2014 at a 50 million gals/year ethanol plant at Lamberton, MN. Beckwith recently told CW he is confident Butamax will emerge victor the victor. “Our position—and with very sound basis—is that we were the inventors, we did the pioneering research, and we have received key patents,” he said . “We are very confident that we will be successful. We wouldn’t have filed this suit unless we were clearly convinced infringement was occurring.”