UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BUTAMAXTM ADVANCED BIOFUELS LLC
`Petitioner
`
`V.
`
`GEVO, INC.
`Patent Owner
`
`CASE IPR: IPR2013-00539
`Patent 8,273,565
`
`BUTAMAXTM ADVANCED BIOFUELS LLC’S
`DEMONSTRATIVES FOR ORAL ARGUMENT
`(INTER PARTES REVIEW OF U.S. PATENT NO. 8,273,565)
`
`Mail Stop "PATENTBOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`BUTAMAX 1026
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BUTAMAXTM ADVANCED BIOFUELS LLC
`Petitioner
`
`V.
`
`GEVO, INC.
`Patent Owner
`
`CASE IPR: IPR2013-00539
`Patent 8,273,565
`
`BUTAMAXTM ADVANCED BIOFUELS LLC’S
`DEMONSTRATIVES FOR ORAL ARGUMENT
`(INTER PARTES REVIEW OF U.S. PATENT NO. 8,273,565)
`
`Mail Stop "PATENTBOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`BUTAMAX 1026
`
`
`
`BUTAMAX ADVANCED BIOFUELS, LLC,
`Petitioner,
`v.
`GEVO, INC.,
`Patent Owner.
`____________
`
`IPR2013-00539 (Patent No. 8,273,565)
`
`October 28, 2014
`
`1
`
`BUTAMAX 1026
`
`
`
`Gevo does not contest …
`
`• Jurisdiction
`
`• Claim construction
`
`• Dr. Thiele’s testimony is not rebutted by an
`expert
`
`Paper 19
`
`2
`
`BUTAMAX 1026
`
`
`
`Ground 1: Gevo does not contest …
`
`Ground 35 U.S.C.
`1
`§ 102(e)
`
`Claims
`1-4, 6-8 and 11-19
`
`Index of References
`Flint (BMX1003)
`
`• Flint (and its ‘333 provisional application) discloses
`every element of claims 1‐4, 6‐8, and 11‐19
`
`Paper 4, pg. 26; BMX1002, pgs. 26‐27; Paper 9, pgs. 16‐18; Paper 19, pg. 15.
`
`3
`
`BUTAMAX 1026
`
`
`
`U.S. Patent 8,273,565 B2, Claim 1
`
`What is claimed is:
`
`1. 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.
`
`BMX1001, col. 91, ll. 15‐26.
`
`4
`
`BUTAMAX 1026
`
`
`
`Ground 1: Flint anticipates claims 1-4, 6-8, & 11-19
`
`• All claims encompass inactivating GRX3/4 by deleting one
`or more nucleotides, inserting one or more nucleotides or
`both
`• Provisional applications do not support full scope
`• Gevo relies upon:
`• “…‘engineer’ refers to … mutating a polynucleotide and/or
`polypeptide native to the microorganism. …” ‘952 application,
`¶[0067] and ‘209 application, ¶[0073].
`• “… Mutations include, for example, point mutations, deletions, or
`insertions of single or multiple residues in a polynucleotide, …”
`‘952 application, ¶[0068] and ‘209 application, ¶ [0074].
`• “a deletion of part or all of a gene.” ‘952 application, ¶[0068].
`• “… alteration, disruption, deletion or knocking‐out of a gene or
`polynucleotide …” ‘952 application, ¶[00213] and ‘209 application,
`¶[00244].
`
`Paper 4, page 24; BMX1002 at ¶49; Paper 19, pgs. 7‐8 and 10‐11.
`
`5
`
`BUTAMAX 1026
`
`
`
`Ground 2: Gevo does not contest …
`
`Ground
`
`35 U.S.C.
`
`Index of References
`Claims
`Anthony (BMX1005), Puig
`1-4, 6-8 and
`2
`§ 103(a)
`11-19
`(BMX1006) and Ojeda (BMX1007)
`• Anthony, Puig, and Ojeda are prior art
`• Anthony teaches a recombinant yeast overexpressing
`DHAD and having reduced activity of Fe‐S cluster
`proteins
`• Puig teaches that Aft induces expression of the iron
`regulon, including Cth2, and Cth2 is responsible for
`downregulating Fe‐S cluster genes
`• Ojeda teaches that deleting GRX3 and GRX4 decreases
`enzymatic activity of several Fe‐S proteins
`
`Paper 4, pgs. 29, 30, 35, 37, and 39; BMX1002 at ¶¶ 75, 79, 81; BMX1005 ¶¶[003], [006], [0013], [0074, [0075]; BMX1006
`pp. 99‐101, 103, 104, 108, Suppl. Table S2; BMX1007, pgs. 17661‐63; Paper 9, pgs. 20‐21; Paper 19, pgs. 15‐17, and 20
`
`6
`
`BUTAMAX 1026
`
`
`
`Ground 2: Gevo argues:
`
`• Anthony does not teach inactivating GRX3/4
`• But, Ground 2 is based on a combination of art
`
`• Anthony and Puig teach against overexpressed DHAD
`• But, Puig teaches downregulation of endogenous DHAD
`
`• Ojeda teaches away from the claims
`• But, Ojeda teaches that deleting GRX3 and 4 decreases activity
`of endogenous Fe‐S proteins
`
`• But, claims are directed to recombinantly overexpressed
`DHAD
`
`Paper 4, pages 37, 38, 45‐47; Paper 19, pgs. 15‐17 and 20‐21; Paper 21, pgs. 5‐6, 9‐10, 12‐13
`
`7
`
`BUTAMAX 1026
`
`
`
`Ground 2: Recombinant DHAD lacking endogenous 3’ UTR
`
`• Puig teaches Cth2‐mediated targeted mRNA
`degradation of endogenous Fe‐S cluster proteins
`
`• Puig teaches the nucleotide sequences that are
`targeted by Cth2
`• Puig teaches that the 3’UTR of endogenous DHAD
`contains putative AREs [nucleotide sites] targeted by
`Cth2
`
`• A POSA would have been motivated to construct a
`recombinant DHAD that would be encoded by
`mRNA that lacks the Cth2‐mRNA binding sequence
`found in the 3’ UTR of mRNA that encodes
`endogenous DHAD.
`
`Paper 4, pgs. 37, 38, 45‐47; BMX1002 at ¶¶ 80, 102, 103, 105, 107, 108, 109; Paper 9, pg. 20; Paper 19, pg. 17; Paper
`21, pgs. 9‐10
`
`8
`
`BUTAMAX 1026
`
`
`
`Grounds 3 and 4: Gevo does not contest …
`
`Ground
`
`35 U.S.C.
`
`Claims
`
`3
`
`4
`
`§ 103(a)
`
`§ 103(a)
`
`5
`
`9
`
`Index of References
`Anthony (BMX1005), Puig (BMX1006), Ojeda
`(BMX1007) and Li (BMX1015)
`Anthony (BMX1005), Puig (BMX1006), Ojeda
`(BMX1007) and van Maris (BMX1008)
`
`• Li and van Maris are prior art
`• Li teaches KARI enzymes that use NADH as a co‐factor
`• van Maris teaches deleting PDC
`
`Paper 4, pgs. 47, 48, and 50‐51; BMX1002 at ¶¶ 94, 97; BMX1015 ¶¶[0006], [0127]‐[0133]; BMX1008, Abstract, p. 159,
`Figure 1, Table 2, and p. 163; Paper 9, pgs. 25 and 26; Paper 19, pg. 22
`
`9
`
`BUTAMAX 1026
`
`
`
`No secondary considerations support patentability
`
`• Gevo’s alleged unexpected result is not commensurate
`in scope with the ‘565 patent claims
`
`• DHAD + GRX3 complete gene deletion
`
`• But claim encompasses deletion of one or more
`nucleotides, insertion of one or more nucleotides, or
`combinations thereof for GRX3, GRX4 or both
`
`Paper 4, pgs. 57‐58; Paper 21, pg. 14.
`
`10
`
`BUTAMAX 1026
`
`
`
`Figure A from Petition
`
`High Iron
`
`Low Iron
`
`Aft1/2
`activation
`complex
`dissociation
`
`Aft 1/2
`
`Grx 3/4
`Fra 1/2
`
`Aft 1/2
`
`complex
`
`Mrs4
`
`Isu1
`
`Fre1
`
`Fet3
`
`Fe uptake
`Fe-S cluster formation/assembly
`
`Cth2 (Tis11)
`
`Cth2
`
`exemplary iron regulon genes
`
`LEU1
`
`DHAD/
`ILV3
`
`AOO1
`
`cytosol
`
`nucleus
`
`exemplary Fe-S cluster proteins
`
`Paper 4, pg. 32, Figure A; BMX1002, pg. 44, Figure A
`
`11
`
`BUTAMAX 1026
`
`
`
`Flint, Fig. 10
`
`Figure 10
`
`Apo-DHAD
`
`Holo-DHAD
`
`Mitochondria
`
`CIA2
`
`[2Fe=2S]
`
`Vacuole
`
`Fe
`
`CCC1
`
`Fe
`
`Fe
`
`Aft1
`
`Aft1
`Aft1
`
`Grx3/4
`
`Fra2
`
`Nucleus
`
`Aft1
`
`activation
`Fe regulon
`
`BMX1003, Fig. 10.
`
`12
`
`BUTAMAX 1026
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned "Buta maxTM
`
`Advanced Biofuels LLC’s Demonstratives for Oral Argument" were served
`
`electronically in their entirety on October 23, 2014, upon the following party:
`
`IPR2013-00539@cooley.com
`Cooley LLP
`1229 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2400
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Deboizait Sterling, Ph.D.
`Lead Attorney for Petitioner
`Registration No. 62,732
`
`Date: October 23, 2014
`
`1100 New York Avenue, N. W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`1920154_I .DOCX
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
