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Butamax[TM] Advanced Biofuels LLC v. Gevo, Inc.

United States District Court, D. Delaware

August 3, 2015

BUTAMAX[TM] ADVANCED BIOFUELS LLC, Plaintiff,
v.
GEVO, INC., Defendant

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[Copyrighted Material Omitted]

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Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Bindu A. Palapura, Esquire of Potter, Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Leora Ben-Ami, Esquire, Thomas F. Fleming, Esquire, and Christopher T. Jagoe, Esquire of Kirkland & Ellis LLP.

Thomas C. Grimm, Esquire, Jeremy A. Tigan, Esquire and Stephen J. Kraftschik, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendant. Of Stephen C. Neal, Esquire, Michelle S. Rhyu, Esquire, and James P. Brogan, Esquire of Cooley LLP.

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MEMORANDUM OPINION

Sue L. Robinson, District Judge.

I. INTRODUCTION

Plaintiff Butamax[TM] Advanced Biofuels LLC (" Butamax" ) filed three complaints against defendant Gevo, Inc. (" Gevo" ), alleging infringement of U.S. Patent No. 8,241,878 (" the '878 patent" ) (D.I. 1), on August 14, 2012; [1] alleging infringement of U.S. Patent No. 8,273,558 (" the '558 patent" ) (Civ. No. 12-1200, D.I. 1), on September 25, 2012; and alleging infringement of U.S. Patent No. 8,283,144 (" the '144 patent" ) (collectively with the '558 patent, " the Donaldson patents," and with both the '558 and '878, " the patents-in-suit" ) (Civ. No. 12-1300, D.I. 1), on October 8, 2012. Gevo answered the complaint regarding the '878 patent on December 18, 2012 and counterclaimed for non-infringement and invalidity. (D.I. 30) Gevo answered the complaints regarding the Donaldson patents on November 5, 2012, counterclaiming for invalidity. (Civ. No. 12-1200, D.I. 8; Civ. No. 12-1300, D.I. 7) Butamax answered the counterclaims as to the '878 patent on January 30, 2013 (D.I. 36) and as to the Donaldson patents on November 30, 2012 (Civ. No. 12-1200, D.I. 12; Civ. No. 12-1300, D.I. 11). The cases were coordinated for the purposes of discovery and claim construction. (D.I. 37) After a Markman hearing, a claim construction order issued on February 3, 2015. (D.I. 203; D.I. 219) Presently before the court are Butamax's motion for summary judgment of infringement of certain claims of the patents-in-suit (D.I. 240); [2] Gevo's cross motion for summary judgment

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of non-infringement of claim 3 of the '889 patent and no willful infringement (D.I. 268); [3] and Gevo's motion for summary judgment of invalidity (D.I. 245).[4] The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).

II. BACKGROUND

A. The Parties

Butamax 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. 1 at ¶ 1) Gevo is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Englewood, Colorado. (D.I. 30 at 4 ¶ 1) Both parties are engaged in research and development of commercial methods to produce isobutanol using biological methods.

B. The Patents-in-Suit

" Engineering of yeast for fermentative production of commercial products is an active and growing field." ('878 patent, 1:32-33) The '878 patent is directed to a method of converting 2,3-dihydroxyisovalerate (" DHIV" ) to α -ketoisovalerate, (α -KIV) -- a step in the isobutanol biosynthetic pathway - catalyzed by a particular type of dihydroxy-acid dehydratase (" DHAD" ) enzyme not normally found in yeast. DHAD enzymes require a cofactor known as an iron-sulfur cluster (" Fe-S" ). In native yeast, Fe-S clusters are assembled and loaded into enzymes in a highly regulated manner. As a result, heterologous DHAD enzymes recombinantly expressed in the cytosol of yeast are not always fully loaded with Fe-S clusters and, therefore, are not fully active. (D.I. 83 at 4) The '878 patent provides " recombinant yeast host cells comprising at least one heterologous Fe-S cluster protein wherein the yeast host has reduced expression of at least one endogenous Fe-S cluster protein." ('878 patent, 2:17-20) The Donaldson patents are directed to recombinant yeast comprising DNA for recombinant expression of three enzymes -- DHAD, a decarboxylase (" DC" ), and alcohol dehydrogenase (" ADH" ) -- in the cytosol, and methods of producing isobutanol with such yeast. (D.I. 83 at 5)

III. STANDARD OF REVIEW

" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 475, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be--or, alternatively, is--genuinely disputed must be supported either by citing to " particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by " showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then " come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The Court will " draw

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all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

To defeat a motion for summary judgment, the non-moving party must " do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment " must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue" ) (internal quotation marks omitted). Although the " mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where " the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated " against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" ).

IV. DISCUSSION

A. The '878 Patent

1. Indefiniteness

The definiteness requirement is rooted in § 112, ¶ 2, which provides that " the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." " A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Personalized Media Comm., LLC v. Int'l Trade Com'n, 161 F.3d 696, 705 (Fed. Cir. 1998). Reiterating the public notice function of patents, the Supreme Court recently explained that " a patent must be precise enough to afford clear notice of what is claimed, thereby 'appris[ing] the public of what is still open to them.'" Nautilus, Inc. v. Biosig Instruments, Inc., __ U.S. __, 134 S.Ct. 2120, 2129, 189 L.Ed.2d 37 (2014) (citations omitted). In balancing the need for clarity with the inherent limitations of the English language, 35 U.S.C. § 112, ¶ 2 requires " that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." Id.

Most recently in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 2015 WL 3772402 (Fed. Cir. 2015), the Federal Circuit applied the legal standards set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., __ U.S. __, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015), and Nautilus to resolve the question of indefiniteness regarding a claim limitation of U.S. Patent No. 5,800,808 (" the '808 patent" ) -- " molecular weight of about 5 to 9 kilodaltons." 789 F.3d 1335, Id. at *1. The Teva parties agreed that " molecular weight" could refer to peak average molecular weight (Mp), number average molecular weight (Mn), and weight average molecular weight (Mw), and that " each of these measures is calculated in a different way and would typically yield a different result for a given polymer sample." Teva Pharmaceuticals, 789 F.3d 1335, 2015 WL 3772402 at *4. The

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'808 specification did not expressly define " molecular weight" and did not use the terms Mp, Mn, or Mw. The parties' experts agreed that the limitation " molecular weight" could refer to any of the three weight measures. Id. The district court credited Teva's expert, " Dr. Grant's testimony that Mp is the only type of average molecular weight that can be directly obtained from a chromatogram and calibration curve obtained by the analytical method described in Example 1 (Size Exclusion Chromatography or SEC)," implying " the use of Mp." [5] 789 F.3d 1335, Id. at *1. The Federal Circuit found no clear error in the district court's reliance on the expert testimony, however, it stated that " accepting these fact findings does not, as Teva suggests, mean that there now exists a presumption regarding the meaning of the claim term in the art in general or in the context of this patent." 789 F.3d 1335, Id. at *4. Instead,

[t]he meaning one of skill in the art would attribute to the term molecular weight in light of its use in the claims, the disclosure in the specification, and the discussion of this term in the prosecution history is a question of law. The district court should not defer to Dr. Grant's ultimate conclusion about claim meaning in the ...

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