Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: October 14, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`BUTAMAX ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00581
`Patent 8,273,565 B2
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: October 14, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`BUTAMAX ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00581
`Patent 8,273,565 B2
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`
`I.
`
`INTRODUCTION
`
`Butamax Advanced Biofuels LLC filed a Petition seeking inter partes
`
`review of claims 5 and 10 of U.S. Patent No. 8,273,565 B2 (Ex. 1001, “the
`
`’565 patent”). Paper 1, “Pet.” Along with its Petition, Butamax filed a
`
`Motion for Joinder, requesting joinder with Case IPR2013-00539, an inter
`
`partes review trial currently pending before the Board. Paper 4, “Joinder
`
`Mot.” Gevo, Inc., the owner of the ’565 patent, did not file a preliminary
`
`response or an opposition to the Motion for Joinder.
`
`Upon consideration of the Petition, Motion for Joinder, and the
`
`specific facts of this case, we exercise our discretion to deny review under
`
`35 U.S.C. § 325(d). Because we determine that the Petition does not warrant
`
`institution, we may not grant, and thus dismiss as moot, the Motion for
`
`Joinder under 35 U.S.C. § 315(c).
`
`A. The ’565 Patent
`
`1. Background
`
`The ’565 patent, titled “Methods of Increasing Dihydroxy Acid
`
`Dehydratase Activity to Improve Production of Fuels, Chemicals, and
`
`Amino Acids,” is directed to recombinant yeast microorganisms with
`
`increased activity of dihydroxy acid dehydratase (“DHAD”). Ex. 1001,
`
`Abstract, 1:29–2:25. DHAD is an enzyme that catalyzes steps in various
`
`biosynthetic pathways that produce metabolites, such as isobutanol, a
`
`common fuel additive. Id. at Abstract, 1:46–66, Fig. 1. Increased DHAD
`
`activity is favorable for production of these metabolites. Id. at 1:65–2:20,
`
`24:31–33. In addition, the ’565 patent is directed to methods of producing
`
`2
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`such metabolites by cultivating the recombinant microorganisms in a culture
`
`medium containing a feedstock providing a carbon source. Id. at Abstract,
`
`8:55–63.
`
`The specification of the ’565 patent discloses various embodiments,
`
`including recombinant microorganisms with increased DHAD activity
`
`resulting from alterations in the regulation, expression, and activity of
`
`proteins monothiol glutaredoxin-3 (“GRX3”), monothiol glutaredoxin-4
`
`(“GRX4”), or both GRX3 and GRX4. Id. at 24:36–45; see id. at 24:1–30.
`
`The specification also discloses recombinant microorganisms with improved
`
`DHAD activity resulting from overexpression of one or more nucleotides
`
`encoding activator of ferrous transport (“Aft”) proteins, Aft1 and Aft2, or
`
`constitutively active Aft proteins. Id. at 2:9–25, 4:14–26, 15:49–54. The
`
`DHAD in these embodiments may be localized in either the cytosol or the
`
`mitochondria of the microorganisms. Id. at 3:30–46, 16:33–34, 24:36–45.
`
`Further, the recombinant microorganisms may be one of various disclosed
`
`yeast genera and species, including Saccharomyces cerevisiae. See id. at
`
`7:49–8:54.
`
`2. Challenged Claims
`
`Both challenged claims depend indirectly from independent claim 1
`
`and read as follows:
`
`5. The recombinant yeast microorganism of claim 4, wherein
`said ketol-acid reductoisomerase is an NADH-dependent
`ketol-acid reductoisomerase.
`
`10. The recombinant yeast microorganism of claim 2, wherein
`said recombinant yeast microorganism is further
`3
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`
`engineered to inactivate one or more endogenous glycerol-
`3-phosphate dehydrogenase (GPD).
`
`Ex. 1001, 91:46–48, 62–65.
`
`3. Related Proceedings
`
`Butamax informs us that Gevo asserted the ’565 patent in Gevo, Inc.
`
`v. ButamaxTM Advanced Biofuels LLC, No. 12-1202(SLR) (D. Del.), filed
`
`September 25, 2012. The same day, Butamax filed for declaratory judgment
`
`of invalidity of the ’565 patent in ButamaxTM Advanced Biofuels LLC v.
`
`Gevo, Inc., No. 12-1201(SLR) (D. Del.). According to the Petition, on
`
`August 9, 2013, the claims by Gevo against Butamax in both actions were
`
`voluntarily dismissed without prejudice, and the claims by Butamax against
`
`Gevo in both actions were dismissed with prejudice.
`
`The ’565 patent is also the subject of an inter partes review trial
`
`currently pending before the Board, Butamax Advanced Biofuels LLC v.
`
`Gevo, Inc., Case IPR2013-00539 (the “539 IPR”). In that proceeding, we
`
`instituted review of claims 1–9 and 11–19 on March 4, 2014, and denied
`
`review of claim 10. 539 IPR, Paper 9, “539 Dec. on Inst.” Trial is currently
`
`ongoing in the 539 IPR, with oral argument scheduled for October 28, 2014.
`
`539 IPR, Paper 24.
`
`B. Prior Art Relied Upon
`
`
`
`Butamax relies on the following references:
`
`Anthony US 2010/0081179 A1 Apr. 1, 2010
`
`Sept. 20, 2007
`Dundon WO 2007/106524 A2
`Flint
`WO 2011/103300 A2 Aug. 25, 2011
`4
`
`
`
`
`
`
`Ex. 1005
`
`Ex. 1028
`Ex. 1003
`
`
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
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`
`
`H. Valadi et al., Improved Ethanol Production by Glycerol-3-phosphate
`dehydrogenase Mutants of Saccharomyces cerevisiae, 50 AMB 434–439
`(1998) (Ex. 1027)
`
`Sergi Puig et al., Coordinated Remodeling of Cellular Metabolism During
`Iron Deficiency Through Targeted mRNA Degradation, 120 CELL 99–110
`(2005) (Ex. 1006)
`
`Luis Ojeda et al., Role of Glutaredoxin-3 and Glutaredoxin-4 in the Iron
`Regulation of the Aft1 Transcriptional Activator in Saccharomyces
`cerevisiae, 281 J. BIOLOGICAL CHEMISTRY 17661–17669 (2006) (Ex. 1007)
`
`
`Of these references, Anthony, Flint, Puig, and Ojeda were previously
`
`made of record in the 539 IPR.
`
`C. The Asserted Grounds
`
`Butamax presents the following grounds of unpatentability:
`
`Claim Challenged Basis References
`
`5
`
`10
`
`10
`
`10
`
`10
`
`§ 102 Flint
`
`§ 103 Flint and Valadi
`
`§ 103 Anthony in view of Puig, Ojeda, and Valadi
`
`§ 103 Flint and Dundon
`
`§ 103 Anthony in view of Puig, Ojeda, and Dundon
`
`II. ANALYSIS
`
`A. Statutory Discretion to Institute and Join
`
`Our statutory authority to institute inter partes review derives from
`
`35 U.S.C. § 314(a), which provides that a review may not “be instituted
`
`5
`
`
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`IPR2014-00581
`Patent No. 8,273,565 B2
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`unless the Director1 determines that the information presented in the petition
`
`. . . shows that there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” As
`
`we have recognized, “Congress did not mandate that an inter partes review
`
`must be instituted under certain conditions. Rather, by stating that the
`
`Director—and by extension, the Board—may not institute review unless
`
`certain conditions are met, Congress made institution discretionary.”
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case
`
`IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19). In
`
`determining whether to institute an inter partes review, the Board may
`
`“deny some or all grounds for unpatentability for some or all of the
`
`challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
`
`Our discretion is further guided by 35 U.S.C. § 325(d), which states,
`
`in relevant part, that “In determining whether to institute or order a
`
`proceeding under this chapter, chapter 30, or chapter 31,2 the Director may
`
`take into account whether, and reject the petition or request because, the
`
`same or substantially the same prior art or arguments previously were
`
`presented to the Office.”
`
`The Board, acting on behalf of the Director, also has broad discretion
`
`whether to join a party to an inter partes review under 35 U.S.C. § 315(c):
`
`
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`2 Chapter 31 of the Patent Act covers inter partes review proceedings. Thus,
`although § 325(d) appears in Chapter 32, which is directed to post-grant
`reviews, it is applicable to inter partes reviews.
`
`6
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`IPR2014-00581
`Patent No. 8,273,565 B2
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`
`JOINDER.–If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`
`
`Thus, joinder in an inter partes review may be warranted in certain
`
`circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec.
`
`Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013)
`
`(Paper 16) (“[t]he Board will determine whether to grant joinder on a case-
`
`by-case basis, taking into account the particular facts of each case,
`
`substantive and procedural issues, and other considerations”). The statute
`
`does, however, set forth at least one circumstance in which we do not have
`
`the discretion to join a party: if the Board determines that the second petition
`
`does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join
`
`as a party . . . any person who properly files a petition . . . that the
`
`Director . . . determines warrants the institution of an inter partes review
`
`under section 314”).
`
`With these statutory provisions in mind, we turn to the question of
`
`whether, in our discretion, Butamax’s Petition in this case warrants inter
`
`partes review.3 Because the Petition presents substantially the same prior
`
`
`
`3 In the present case, the parties have not briefed the issue of whether we
`have statutory authority to join Butamax’s Petition to its own prior 539 IPR.
`Compare Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022
`(PTAB Sept. 2, 2014) (Paper 166), with Target Corp. v. Destination
`7
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`art, and substantially the same arguments, as the Petition in the 539 IPR, we
`
`exercise our discretion to deny institution of review under 35 U.S.C.
`
`§ 325(d).
`
`B. Anticipation of Claim 5 by Flint
`
`In the 539 IPR, we instituted inter partes review of claim 5 of the
`
`’565 patent on an obviousness ground based on the combined teachings of
`
`four references, but declined to institute review of claim 5 on an asserted
`
`anticipation ground based on the disclosure of Flint. 539 Dec. on Inst. 18,
`
`24–25. As we noted, Butamax’s argument for anticipation by Flint “relie[d]
`
`exclusively on a disclosure in U.S. Patent Application Publication No.
`
`
`
`Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014) (Paper 18).
`As we determine that the Petition does not warrant institution, and
`consequently we may not grant the Motion for Joinder, we need not reach
`the issue of whether we would have statutory authority to do so if the
`Petition warranted institution.
`
`For similar reasons, we need not address whether the one-year bars of
`35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b) apply to Butamax’s Petition if
`we deny joinder. Compare Sony Corp. v. Network-1 Sec. Solutions, Inc.,
`Case IPR2013-00386, slip op. at 5 (PTAB July 29, 2013) (Paper 16)
`(denying joinder but noting that “[t]he one-year bar, therefore, does not
`apply to Petitioners because they filed a motion for joinder with their
`Petition”), and ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-
`00454, slip. op at 5–6 (PTAB Sept. 25, 2013) (Paper 12), with Microsoft
`Corp. v. Surfcast, Inc., Case IPR2014-00271, slip op. at 7 (PTAB June 13,
`2014) (Paper 20) (“absent joinder of this proceeding with [the first IPR], the
`petition would be barred”), and Samsung Elec. Co. v. Virginia Innovation
`Sci., Inc., Case IPR2014-00557, slip op. at 15 (PTAB June 13, 2014) (Paper
`10).
`
`8
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`2010/0197519 A1 (‘’519 [published] application’), which Butamax
`
`represent[ed] is incorporated by reference into Flint at paragraph 0145 and
`
`into the Flint ’333 provisional [i.e., U.S. Provisional Application No.
`
`61/305,333] at paragraph 0118.” Id. at 18. We found, however, that the
`
`Flint ’333 provisional did not, in fact, incorporate by reference the ’519
`
`published application. Id. Therefore, with respect to claim 5, we concluded
`
`that “Butamax . . . failed to put forward sufficient evidence to establish that
`
`Flint is entitled to priority to the Flint ’333 provisional.” Id. As such, we
`
`determined that Butamax had not shown sufficiently that “Flint is . . . prior
`
`art to the ’565 patent for purposes of claim 5.” Id.
`
`In its present Petition, Butamax again asserts that claim 5 of the ’565
`
`patent is anticipated by Flint (Ex. 1003), arguing that Flint is entitled to
`
`claim priority to the filing date of the Flint ’333 provisional (Ex. 1004). Pet.
`
`15–23. Rather than again erroneously asserting that the Flint ’333
`
`provisional incorporates by reference the disclosure of the ’519 published
`
`application, Butamax now explains that the Flint ’333 provisional
`
`incorporates by reference U.S. Ser. No. 12/637,905 (Ex. 1025, “the ’905
`
`application”), which eventually published as the ’519 published application.
`
`Significantly, Butamax submits the ’905 application as an exhibit in this
`
`proceeding, in contrast to the 539 IPR, in which the ’905 application was
`
`never made of record.
`
`With respect to claim 5, Butamax is asserting Flint—the same prior
`
`art reference it asserted in the 539 IPR—as part of a ground that is identical
`
`to a ground asserted in the 539 IPR. The only difference in the present
`
`9
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`IPR2014-00581
`Patent No. 8,273,565 B2
`
`proceeding is that Butamax corrects its misstatement of which document is
`
`incorporated by reference in the Flint ’333 provisional, and includes this
`
`document in the record as an exhibit. We, therefore, have discretion under
`
`§ 325(d) to deny institution of this ground, “because[] the same or
`
`substantially the same prior art or arguments previously were presented to
`
`the Office.” Our discretion is further informed by the fact that Butamax has
`
`already succeeded in petitioning the Board to institute inter partes review of
`
`claim 5, albeit on grounds other than anticipation by Flint. Furthermore,
`
`Butamax’s proposed ground is effectively an attempt to request rehearing of
`
`a prior decision instituting trial, outside the time period provided in our
`
`Rules for such requests.4 See Microsoft Corp. v. Enfish, LLC, Case
`
`IPR2014-00577, slip op. at 8 (PTAB Sept. 29, 2014) (Paper 12) (denying
`
`second petition that is “essentially a rehearing request”). For these reasons,
`
`we exercise our discretion under § 325(d) and do not institute inter partes
`
`review of claim 5 as anticipated by Flint.
`
`
`
`4 In any event, to the extent that Butamax’s current Petition can be viewed as
`a rehearing request, we would not grant such a request. We could not have
`misapprehended or overlooked facts which were not presented to us in the
`539 Petition. As Petitioner, it was Butamax’s responsibility to set forth in its
`Petition all facts supporting its challenges to patentability. 37 C.F.R.
`§ 42.104(b). By its own admission, Butamax failed to correctly identify, and
`to submit, the documents incorporated by reference in the Flint ’333
`provisional upon which it wished to rely; it is not the Board’s responsibility
`to find and review all other documents also incorporated by reference in the
`’333 provisional to rectify Butamax’s error.
`10
`
`
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`IPR2014-00581
`Patent No. 8,273,565 B2
`
`
`C. Obviousness Challenges to Claim 10
`
`Claim 10 of the ’565 patent is the sole challenged claim on which we
`
`did not institute inter partes review in the 539 IPR, as we denied Butamax’s
`
`proposed obviousness ground based on Anthony, Puig, Ojeda, and
`
`Overkamp.5 539 Dec. on Inst. 27–29. In that case, we found that Petitioner
`
`had not shown sufficiently that Overkamp discloses inactivated glycerol-3-
`
`phosphate dehydrogenase (“GPD”), or provides a person of ordinary skill in
`
`the art reason to delete GPD to increase isobutanol production. Id. at 28.
`
`The instant Petition advances four new obviousness grounds
`
`challenging claim 10, each of which essentially seeks to replace Overkamp
`
`with one of two references that allegedly disclose inactivated GPD: Dundon
`
`or Valadi. Pet. 24, 34. In other words, the sole purpose of citing Dundon or
`
`Valadi in the instant Petition is to provide the same disclosure Butamax
`
`previously contended was provided by Overkamp. Compare 539 IPR, Paper
`
`4 (Petition), 52 (“Overkamp recognized that glucose serves as a substrate for
`
`competing pathways in S. cerevisiae . . . . Deleting GPD would delete the
`
`pathway for glycerol production from glucose that competes with the
`
`pathway for pyruvate production.”), with Pet. 24 (“Valadi inactivated GPD
`
`in yeast strains in order to characterize their growth performance and
`
`fermentation properties with the goal being a reduction of glycerol formation
`
`and an improved ethanol production.”), and Pet. 34 (“Dundon noted that the
`
`
`
`5 Karin M. Overkamp et al., Metabolic Engineering of Glycerol Production
`in Saccharomyces cerevisiae, 68 APPLIED & ENVTL. MICROBIOLOGY 2814–
`2821 (2002) (Ex. 1009).
`
`11
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`pathway for glycerol production could be disrupted by the ‘deletion or
`
`disruption of at least one native glycerol-3-phosphate dehydrogenase (GPD)
`
`gene.’”).
`
`Other than the substitution of Valadi and Dundon for Overkamp, the
`
`art cited in the present Petition’s obviousness grounds overlaps completely
`
`with that asserted against claim 10 in the 539 Petition. Furthermore,
`
`Butamax’s assertions regarding the disclosures of Valadi and Dundon are
`
`substantially similar to the disclosure of Overkamp as Butamax
`
`characterized it in the 539 IPR; in this sense, the arguments made in both
`
`cases are substantially similar. For these reasons, we conclude that the
`
`instant Petition advances “the same or substantially the same prior art or
`
`arguments [that] previously were presented to the Office” in the 539 IPR,
`
`and, therefore, we have discretion under § 325(d) to deny institution of the
`
`four obviousness grounds.
`
`Our discretion to deny these grounds is further guided by several
`
`additional facts. First, we note that Butamax does not contend that the
`
`newly cited references were not known or available to it at the time it filed
`
`the 539 IPR. See Unilever, Inc. v. Procter & Gamble Co., Case IPR2014-
`
`00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17) (considering, in
`
`exercising § 325(d) discretion, whether new references were previously
`
`known). More significantly, we observe that the obviousness grounds
`
`asserted in the present Petition are expressly intended to “squarely address[]
`
`the alleged deficiencies identified by the Board” in our Decision in the 539
`
`IPR. Pet. 2. In other words, the four obviousness grounds are “second bites
`
`12
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`at the apple,” which use our prior decision as a roadmap to remedy
`
`Butamax’s prior, deficient challenge. Allowing similar, serial challenges to
`
`the same patent, by the same petitioner, risks harassment of patent owners
`
`and frustration of Congress’s intent in enacting the Leahy-Smith America
`
`Invents Act. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (“While this
`
`amendment is intended to remove current disincentives to current
`
`administrative processes, the changes made by it are not to be used as tools
`
`for harassment or a means to prevent market entry through repeated
`
`litigation and administrative attacks on the validity of a patent. Doing so
`
`would frustrate the purpose of the section as providing quick and cost
`
`effective alternatives to litigation.”); see also ZTE Corp. v. ContentGuard
`
`Holdings, Inc., Case IPR2013-00454, slip op. at 6 (PTAB Sept. 25, 2013)
`
`(Paper 12) (“A decision to institute review on some claims should not act as
`
`an entry ticket, and a how-to guide, for the same Petitioner who filed an
`
`unsuccessful joinder motion, and is outside of the one-year statutory period,
`
`for filing a second petition to challenge those claims which it unsuccessfully
`
`challenged in the first petition.”). We, therefore, exercise our discretion
`
`under § 325(d) to deny institution of inter partes review on the four
`
`obviousness challenges to claim 10.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the Petition presents
`
`substantially the same art and arguments as the Petition in the 539 IPR, and,
`
`taking into account the particular facts of this case, we exercise our
`
`discretion to deny institution of review under 35 U.S.C. § 325(d).
`
`13
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`Consequently, we may not grant, and thus dismiss as moot, Butamax’s
`
`Motion for Joinder with the 539 IPR.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’565 patent; and
`
`FURTHER ORDERED that the Motion for Joinder with Case
`
`IPR2013-00539 is dismissed.
`
`
`
`14
`
`
`
`IPR2014-00581
`Patent No. 8,273,565 B2
`
`
`
`For Petitioner:
`
`Deborah Sterling
`Dsterlin-PTAB@skgf.com
`Peter Jackman
`Pjackman-PTAB@skgf.com
`
`For Patent Owner:
`
`
`
`
`
`
`Erich Veitenheimer
`eveitenheimer@cooley.com
`
`David Christopher Holly
`IPR2014-00581@cooley.com
`
`
`15
`
`
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