Previous posts (e.g., here and here) discussed various threads of the major biofuels patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.
A relatively new mechanism for challenging the validity of a U.S. patent is inter partes review (IPR), an administrative trial proceeding before the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) in which a third party can challenge the validity of a patent based on printed prior art publications.
Last year Butamax filed a petition with the PTAB for IPR of Gevo’s U.S. Patent No. 8,546,627 (‘627 Patent). Â The ‘627 Patent is entitled “Renewable compositions” and directed to processes for preparing a renewable jet fuel.
The claimed processes comprise fermenting biomass with a microorganism, dehydrating the resulting alcohol to form biofuel precursors, and then subjecting the biofuel precursors to processes such as oligomerization, hydrogenation, and aromatization to form the fuel.
In a recent decision, the PTAB ruled that all 21 claims of the ‘627 Patent are invalid in view of several prior art references cited by Butamax.
More particularly, the PTAB held that U.S. Patent Application Publication No. 2008/0132741 to D’Amore discloses five of the seven steps of independent claim 1 of the ‘627 Patent. Â Because the sixth and seventh steps of claim 1 are recited as optional, D’Amore was found to anticipate the claims. Â D’Amore was also held to anticipate dependent claims 7, 11 and 14 of the ‘627 Patent.
As the primary prior art reference, the PTAB applied D’Amore in combination with several other printed publications in holding all of the claims invalid. Â The PTAB also considered ASTM D1655 jet fuel standards as an important secondary reference and found that D’Amore in combination with the standards rendered claims 2-7, 11, 14 and 18-21 obvious.
The PTAB found an additional ground for invalidity of independent claim 18 in International, or PCT, Patent Publication No. WO 2007/061903 to Bradin. Â Bradin is entitled “Alternative fuel and fuel additive compositions” and directed to alternative gasoline, diesel fuel, marine diesel fuel, jet fuel, and flexible fuel compositions including an alcohol and/or a glycerol ether or mixture of glycerol ethers, which can be derived from renewable resources.
