Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 1 of 6 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. _______________
`
`JURY TRIAL DEMANDED
`
`)))))))))))
`
`BUTAMAX™ ADVANCED BIOFUELS LLC
`and E. I. DU PONT DE NEMOURS AND
`COMPANY,
`
`Plaintiffs,
`
`v.
`
`GEVO, INC.
`
`Defendant.
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT, AND INVALIDITY,
`
`Plaintiffs Butamax™ Advanced Biofuels LLC ("Butamax") and E. I. du Pont de Nemours
`
`and Company ("DuPont"), by their attorneys, for their Complaint against Defendant Gevo, Inc.
`
`("Gevo"), aver as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is a civil action for a declaratory judgment to hold U.S. Patent No. 8,273,565
`
`("the '565 patent") invalid, and not infringed.
`
`THE PARTIES
`
`2.
`
`Butamax is a limited liability company organized and existing under the laws of
`
`the state of Delaware with its principal place of business in Wilmington, Delaware. Butamax is
`
`developing biobutanol – an advanced premium biofuel molecule.
`
`3.
`
`DuPont is a corporation organized and existing under the laws of the state of
`
`Delaware with its principal place of business in Wilmington, Delaware. DuPont is a science
`
`company with leading capabilities in biotechnology.
`
`4.
`
`On information and belief, Gevo is a corporation organized and existing under the
`
`laws of the state of Delaware, with its principal place of business in Englewood, Colorado.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. _______________
`
`JURY TRIAL DEMANDED
`
`)))))))))))
`
`BUTAMAX™ ADVANCED BIOFUELS LLC
`and E. I. DU PONT DE NEMOURS AND
`COMPANY,
`
`Plaintiffs,
`
`v.
`
`GEVO, INC.
`
`Defendant.
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT, AND INVALIDITY,
`
`Plaintiffs Butamax™ Advanced Biofuels LLC ("Butamax") and E. I. du Pont de Nemours
`
`and Company ("DuPont"), by their attorneys, for their Complaint against Defendant Gevo, Inc.
`
`("Gevo"), aver as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is a civil action for a declaratory judgment to hold U.S. Patent No. 8,273,565
`
`("the '565 patent") invalid, and not infringed.
`
`THE PARTIES
`
`2.
`
`Butamax is a limited liability company organized and existing under the laws of
`
`the state of Delaware with its principal place of business in Wilmington, Delaware. Butamax is
`
`developing biobutanol – an advanced premium biofuel molecule.
`
`3.
`
`DuPont is a corporation organized and existing under the laws of the state of
`
`Delaware with its principal place of business in Wilmington, Delaware. DuPont is a science
`
`company with leading capabilities in biotechnology.
`
`4.
`
`On information and belief, Gevo is a corporation organized and existing under the
`
`laws of the state of Delaware, with its principal place of business in Englewood, Colorado.
`
`
`
`Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 2 of 6 PageID #: 2
`
`5.
`
`Gevo purports to be the owner of the right, title, interest and application in, to and
`
`for the '565 patent.
`
`JURISDICTION AND VENUE
`
`6.
`
`This action arises under the patent laws of the United States, Title 35 of the
`
`United States Code, and under the Declaratory Judgment Act, 28 U.S.C. § 2201. The court has
`
`subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201(a) and
`
`2202.
`
`7.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391(b) and (c) and 1400(b)
`
`because a substantial part of the events which give rise to the claims herein occurred in this
`
`district and because Gevo is subject to personal jurisdiction in this district.
`
`8.
`
`On information and belief,
`
`this Court has personal
`
`jurisdiction over Gevo
`
`because, at a minimum, it is a Delaware corporation with a registered Delaware agent and has
`
`purposefully availed itself of the benefits and protections of this state.
`
`9.
`
`Butamax has previously sued Gevo for patent infringement in this district, and
`
`Gevo has countersued, also alleging patent infringement. This Court took jurisdiction of these
`
`related cases, which are continuing to be litigated in this district and have been assigned to the
`
`Honorable Judge Sue L. Robinson (SLR) with the following docket numbers:
`
`
`
`
`
`
`
`
`
`
`
`
`
`1:11-cv-00054-SLR
`
`1:12-cv-00070-SLR
`
`1:12-cv-00298-SLR
`
`1:12-cv-00301-SLR
`
`1:12-cv-00448-SLR
`
`1:12-cv-00602-SLR
`
`–2–
`
`
`
`Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 3 of 6 PageID #: 3
`
`
`
`
`
`
`
`1:12-cv-00999-SLR
`
`1:12-cv-01014-SLR
`
`1:12-cv-01036-SLR
`
`10.
`
`Gevo has alleged, and continues to allege that Plaintiffs' recombinant yeast strains
`
`infringe Gevo's U.S. Patent No. 8,017,376 ('376 patent) in which each claim is specifically
`
`limited to yeast comprising a recombinantly overexpressed polynucleotide encoding a dihydroxy
`
`acid dehydratase (DHAD) enzyme and, a recombinantly overexpressed polynucleotide encoding
`
`an activator of ferrous transport (Aft) protein which increases the activity of the DHAD, despite
`
`the fact that prior to being sued the General Counsel for Butamax sent a letter to the General
`
`Counsel for Gevo informing him that Butamax's technology going forward does not meet the
`
`limitation of the '376 patent. (See, e.g., 1:11-cv-00054-SLR Dkt 122 paras 35-53). Gevo's filing
`
`and maintaining infringement allegations on the '376 patent against Plaintiffs indicates Gevo's
`
`willingness to assert other related patents in litigation against Plaintiffs.
`
`11.
`
`By virtue of the foregoing, there is a continuing justiciable controversy between
`
`the parties as to Gevo's right to a patent monopoly, and as to the validity, enforceability and
`
`scope of the patent rights of the '376 patent and related patents against the Plaintiffs.
`
`THE PATENT-IN-SUIT
`
`12.
`
`On information and belief, on September 25, 2012, the '565 patent1 entitled
`
`"Methods Of Increasing Dihydroxy Acid Dehydratase Activity To Improve Production Of Fuels,
`
`Chemicals, And Amino Acids" issued to Catherine Asleson Dundon, Aristos Aristidou, Andrew
`
`Hawkins, Doug Lies, and Lynne H. Albert.
`
`1
`
`The '565 patent issued on September 25, 2012 at 12:00am EDT, as shown on the
`September 5, 2012 Issue Notification attached as Exhibit A. A paper copy will be filed
`with the Court as soon as it becomes available.
`
`–3–
`
`
`
`Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 4 of 6 PageID #: 4
`
`13.
`
`The '565 patent is related to the '376 patent. The '565 patent issued from an
`
`application that is a divisional of application No. 13/228,342, which is a divisional of application
`
`No. 12/953,884, which issued at U.S. Patent No. 8,017,376.
`
`14.
`
`The '565 patent claims are specifically limited to a recombinant yeast
`
`microorganism comprising a recombinantly overexpressed polynucleotide encoding a dihydroxy
`
`acid dehydratase (DHAD), wherein said recombinant yeast microorganism is engineered to
`
`comprise at least one inactivated monothiol glutaredoxin selected from the group consisting of
`
`monothiol glutaredoxin-3 (GRX3) and monothiol glutaredoxin-4 (GRX4), and wherein said
`
`inactivated monothiol glutaredoxin results from the deletion of one or more nucleotides of an
`
`endogenous gene encoding said monothiol glutaredoxin, the insertion of one or more nucleotides
`
`into an endogenous gene encoding said monothiol glutaredoxin, or combinations thereof.
`
`15.
`
`Plaintiffs have considered the '565 patent and its relevance to their recombinant
`
`yeast and do not agree that they infringe any valid claim of the '565 patent.
`
`FIRST CLAIM FOR RELIEF
`
`(DECLARATION OF NON-INFRINGEMENT OF THE '565 PATENT)
`
`16.
`
`Plaintiffs restate and incorporate by reference each of the averments of the
`
`foregoing paragraphs of this Complaint.
`
`17.
`
`18.
`
`Gevo claims to be the owner of the '565 patent.
`
`Plaintiffs are not
`
`infringing, have not
`
`infringed, and are not
`
`liable for any
`
`infringement of any valid claim of the '565 patent, and Gevo is entitled to no relief.
`
`19.
`
`Plaintiffs seek a declaration that they have not and do not infringe the '565 patent
`
`and that they are not otherwise liable for infringement.
`
`–4–
`
`
`
`Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 5 of 6 PageID #: 5
`
`20.
`
`On information and belief, absent a declaration of non-infringement of the '565
`
`patent, Gevo will assert the '565 patent against Plaintiffs, thus causing damage to Plaintiffs.
`
`SECOND CLAIM FOR RELIEF
`
`(DECLARATION OF INVALIDITY OF THE '565 PATENT)
`
`21.
`
`Plaintiffs restate and incorporate by reference each of the averments of the
`
`foregoing paragraphs of this Complaint.
`
`22.
`
`23.
`
`Gevo claims to be the owner of the '565 patent.
`
`The '565 patent is invalid for failure to meet one or more of the conditions or
`
`requirements for patentability specified in Title 35, U.S.C., or the rules, regulations, and law
`
`related thereto, including, without limitation, in 35 U.S.C. §§ 101, 102, 103 and/or 112.
`
`24.
`
`Plaintiffs seek a declaration that the claims of the '565 patent are invalid for
`
`failure to meet one or more of the conditions or requirements for patentability specified in Title
`
`35, U.S.C., or the rules, regulations, and law related thereto, including, without limitation, in 35
`
`U.S.C. §§ 101, 102, 103 and/or 112.
`
`25.
`
`On information and belief, absent a declaration of invalidity of the '565 patent,
`
`Gevo will assert the '565 patent against Plaintiffs, thus causing damage to Plaintiffs.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs Butamax and DuPont respectfully pray for judgment against
`
`Defendant Gevo as follows:
`
`i.
`
`ii.
`
`iii.
`
`for entry of judgment declaring that the claims of the '565 patent are not infringed by
`Plaintiffs and that Plaintiffs are not liable for infringement;
`
`for entry of judgment declaring that the claims of the '565 patent are invalid;
`
`for entry of a preliminary and permanent injunction enjoining Gevo from pursuing
`infringement litigation or threatening litigation related to the '565 patent against
`Plaintiffs or any of Plaintiffs' customers or business relations;
`
`–5–
`
`
`
`Case 1:12-cv-01201-SLR Document 1 Filed 09/25/12 Page 6 of 6 PageID #: 6
`
`iv.
`
`v.
`
`that the case be declared exceptional and that Plaintiffs be awarded their attorneys'
`fees; and
`
`that Plaintiffs have such other and further relief as the Court shall deem just and
`proper.
`
`DEMAND FOR JURY TRIAL
`
`Pursuant to Rule 38 of the Federal Rule of Civil Procedure, Plaintiffs demand a jury trial
`
`of all issues triable to a jury in this action.
`
`Respectfully submitted,
`
`POTTER ANDERSON & CORROON LLP
`
`By:
`
`/s/ Richard L. Horwitz
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`rhorwitz@potteranderson.com
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Plaintiffs Butamax™ Advanced
`Biofuels LLC and E. I. du Pont de Nemours
`and Company
`
`Dated: September 25, 2012
`1076425 / 36429
`
`–6–
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