In Washington, the U.S. Supreme Court ruled in Gevo’s (NASD: GEVO) favor and overturned an earlier Federal Circuit Court of Appeals ruling on the interpretation of key patent claims.
On April 11, 2013, the Delaware District Court (District Court) entered a final judgment of non-infringement in Gevo’s favor following the acknowledgment by Butamax Advanced Biofuels LLC (Butamax) that Gevo does not infringe Butamax’s asserted patents under the District Court’s construction of a key claim term in Butamax’s Patent Nos. 7,851,188 and 7,993,889.
At the time, Butamax appealed Gevo’s victory, and a US Court of Appeals in February 2014 vacated the District Court’s prior rulings, and ordered the District Court to reconsider issues related to infringement and invalidity.
In turn, Gevo asked the Supreme Court to vacate the Appeals Court’s de novo nterpretation of a disputed claim term. Today, the Supreme Court granted Gevo’s petition and vacated the decision of the Appeals Court.
According to Gevo:
“The result is that Gevo’s victory in the Delaware District Court is reinstated, and that the case has been remanded back to the Appeals Court for consideration in light of the new standard of appellate review that was decided in the Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc. (Teva) case last week.”
The Teva case
In Teva, the Supreme Court ruled 7-2 that the Appeals Court must apply a more stringent “clear error” standard of review, rather than a “de novo” standard of review. In Gevo’s case, the Appeals Court must now apply the “clear error” standard of review and cannot set aside the Delaware District Court’s (District Court) findings of fact in Gevo’s favor (including interpretation of patent claims) unless they were clearly erroneous.
And you might wonder, what has this to do with the advanced bioeconomy and, in particular, the world of fuels and chemicals.
Turns out, a lot, particularly in the ongoing dispute between Gevo and DuPont over intellectual property used to convert sugars into isobutanol, a higher-density alcohol fuel that has immense promise in circumventing the “blend wall” that bedevils renewable fuels deployment. Not to mention isobutanol’s potential as a chemical blendstock.
Here’s the essence of the case. Teva holds a bunch of patens, which it sued Sandoz over, claiming infrigement. It won a judgement in District Court, but lost in the Court of Appeals when the appellate judges threw out some key elements relating to Teva’s case and the patent claim construction and conducted it’s own “de novo” review, leading it to side with Sandoz.
Now, claim construction is a matter of law and is subject to appelate review but what about certain key elements that underlie a claim construction? Are they a matter of law and subject to higher review or are they facts which are tried in a lower court (either by judge or jury), not subject to review?
One of the most perplexing questions has been the reasonableness of a patent claim would someone skilled in the art understand the claim as written? Is that a fact, not subject to apelate review once found by the lower court or jury or is that a matter of law.
Well, the Supreme Court has ruled now. Those underlying elements they are facts. Not subject to de novo review by a Court of Appeal. Meaning that biotech companies, once they have faced their jury or judge on those facts, doesn’t have to worry that a Court of Appeal might conduct a top-to-bottom wholly new review and perhaps, without the benefit of expert witnesses, go another way.
The Supreme Court’s decision effectively reinstates Gevo’s victory at the District Court where a final judgment of non-infringement was entered in Gevo’s favor following the acknowledgment by Butamax Advanced Biofuels LLC (Butamax) that Gevo does not infringe Butamax’s Patent Nos. 7,851,188 and 7,993,889.
The Gevo-DuPont dispute
Gevo and Butamax fell into the Teva orbit last February, when the U.S. Court of Appeals, in a patent case involving Butamax’s Patent Nos. 7,851,188 (‘188 Patent) and 7,993,889 (‘889 Patent). The appeals court offered a new interpretation of a disputed claim term.
Gevo writes, “On remand, two issues remain to be determined: 1) whether the patents are valid; and 2) whether Gevo infringes them under the new claim interpretation. The claims of the two Butamax patents at issue are currently under reexamination at the United States Patent and Trademark Office (USPTO), which has declared them unpatentable. Gevo believes that it does not infringe any valid claims, and at this time maintains freedom to produce and sell isobutanol worldwide and into all markets. “
In a filing for Supreme Court review, Gevo wrote:
“Indefiniteness calls into question additional considerations of whether a claim is ‘insolubly ambiguous, Here the dispute is plainly and cleanly an issue only of the proper construction of the disputed term.”
It comes down to whether an enzyme known as KARI is dependent on a co-enzyme. If yes, then Gevo is in the clear. If not, then it could be found in violation of a Butamax patent. The District Court ruled yes, the Court of Appeals ruled no. Gevo said the Court of Appeals should not have conducted such a broad de novo review.
“In this case, the district court conducted a painstaking claim construction, carefully reviewing voluminous evidence and testimony presented by the parties, including detailed expert declarations, and held multiple days of hearings. The Federal Circuit gave no deference to those findings when it reviewed the district court’s construction de novo, and issued a new construction that changed the outcome of the case.”
More on the story
The Supreme Court’s docket for the case can be found here.