Paper 47
`Trials@uspto.gov
`571-272-7822 Entered: September 23, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUTAMAXTM
` ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00215
`Patent 8,283,505 B2
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`ZHENYU YANG, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 23, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUTAMAXTM
` ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00215
`Patent 8,283,505 B2
`____________
`
`
`Before RAMA G. ELLURU, CHRISTOPHER L. CRUMBLEY, and
`ZHENYU YANG, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`IPR2013-00215
`Patent 8,283,505 B2
`
`I.
`
`INTRODUCTION
`ButamaxTM
` Advanced Biofuels LLC (“Butamax”) petitioned for an
`inter partes review of claims 1–18 of U.S. Patent No. 8,283,505 B2 (“the
`’505 patent”). Paper 2 (“Pet.”). On September 30, 2013, the Board
`instituted trial to review all challenged claims on several obviousness
`grounds. Paper 10 (“Dec.”). Thereafter, Patent Owner, Gevo, Inc.
`(“Gevo”), filed a Response (Paper 22 (“PO Resp.”)) and Butamax filed a
`Reply (Paper 33 (“Reply”)). Oral hearing was held on April 30, 2014. See
`Paper 46 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c) and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons provided below, we conclude that Butamax has proved by a
`preponderance of the evidence that claims 1–18 of the ’505 patent are
`unpatentable.
`A.
`Related Proceedings
`Concurrent with the present inter partes review, Butamax also
`petitioned for review of, and the Board instituted trial on, claims 1–28 of
`U.S. Patent No. 8,304,588, a patent in the same family as the ’505 patent.
`See ButamaxTM Advanced Biofuels LLC v. Gevo, Inc., Case IPR2013-00214
`(PTAB Sept. 30, 2013) (Paper 11). Because of overlapping issues between
`the two proceedings, we consolidated the oral hearings for IPR2013-00214
`and IPR2013-00215. See Tr. of Oral Hr’g at 2:17–18, ButamaxTM Advanced
`Biofuels LLC v. Gevo, Inc., Case IPR2013-00214 (PTAB Apr. 30, 2014)
`(Paper 45) (“IPR2013-00214 Tr.”).
`
`
`
`2
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`IPR2013-00215
`Patent 8,283,505 B2
`
`
`The ’505 Patent
`B.
`The ’505 patent relates to a method for recovering C3–C6 alcohols,
`specifically isobutanol, from dilute aqueous solutions, such as fermentation
`broths. Ex. 1001, Abstract; 8:25–27. The method includes culturing a
`microorganism in a fermentation medium to produce the alcohol. Id. at
`4:63–65. The Specification discloses embodiments in which “[f]ermentation
`and recovery may be conducted simultaneously.” Id. at 8:27–28. For
`example, the method includes distilling a portion of the fermentation
`medium to produce a vapor phase that includes water and the alcohol, and
`returning the liquid phase to the fermentor. Id. at 4:67–5:12. The method
`further includes condensing the vapor phase to form an alcohol-rich liquid
`phase and a water-rich liquid phase, and then separating the liquid phases.
`Id. at 5:12–23. “Separation of the phases can be accomplished in various
`unit operations including liquid-liquid separators . . . .” Id. at 17:33–35.
`Recovery during fermentation, according to the ’505 patent, improves
`fermentation volumetric productivity and reduces the required energy. Id. at
`8:28–33.
`Claim 1 is the sole independent claim in this trial. It reads:
`1. A method for producing isobutanol comprising:
`(a) culturing a microorganism capable of producing isobutanol
`in a
`fermentor,
`thereby
`forming a
`fermentation broth
`comprising microorganisms and isobutanol;
`(b) removing a portion of the fermentation broth from the
`fermentor;
`(c) distilling the portion, thereby forming an isobutanol-
`depleted liquid phase and an isobutanol-enriched vapor phase
`comprising water and isobutanol;
`
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`3
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`IPR2013-00215
`Patent 8,283,505 B2
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`
`(d) condensing the isobutanol-enriched vapor phase formed in
`step (c), thereby forming an isobutanol-rich liquid phase and a
`water-rich liquid phase; and
`(e) separating the isobutanol-rich phase liquid from the water-
`rich liquid phase using a liquid-liquid separator;
`wherein:
`(1) said steps (b)–(e) are conducted simultaneously with step
`(a);
`(2) the isobutanol-depleted liquid phase comprises viable
`microorganisms; and
`(3) the isobutanol-depleted liquid phase is returned to the
`fermentor.
`
`
`
`Reviewed Grounds of Unpatentability
`C.
`The Board instituted trial on the following grounds of unpatentability:
`Claims Challenged Basis
`References
`English1 and D’Amore2
`1, 9, 10, and 13–17
`§ 103
`English, D’Amore, and Bramucci3
`2–8, 11, 12, and 18
`§ 103
`Maiorella,4 Hess,5 and D’Amore
`1, 9, 10, and 13–17
`§ 103
`2–8, 11, 12, and 18
`§ 103
`Maiorella, Hess, D’Amore, and
`Bramucci
`
`
`
`
`1 English et al., U.S. Patent No. 4,349,628 (Ex. 1002) (“English”).
`2 D’Amore et al., U.S. Patent Pub. No. 2008/0132741 Al (Ex. 1003)
`(“D’Amore”).
`3 Bramucci et al., U.S. Patent Pub. No. 2008/0124774 A1 (Ex. 1004)
`(“Bramucci”).
`4 B. L. Maiorella et al., Biotechnology Report Economic Evaluation of
`Alternative Ethanol Fermentation Processes, 26 BIOTECHNOLOGY AND
`BIOENGINEERING 1003 (1984) (Ex. 1005) (“Maiorella”).
`5 Glenn Hess, BP and DuPont Plan ‘Biobutanol,’ CHEMICAL &
`ENGINEERING NEWS, June 26, 2006, at 9 (Ex. 1006) (“Hess”).
`4
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`IPR2013-00215
`Patent 8,283,505 B2
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`II. ANALYSIS
`A.
`Real-Party-in-Interest Analysis
`A petitioner for an inter partes review must identify all real parties in
`interest. 35 U.S.C. § 312(a)(2); see also 37 C.F.R. § 42.8(b)(1). Whether a
`non-party is a real party in interest is a highly fact-dependent question.
`Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg.
`48,756, 48,759 (Aug. 14, 2012). One factor in such inquiry is whether the
`non-party “exercised or could have exercised control over a party’s
`participation in a proceeding.” Id.
`Gevo argues that E.I. Dupont de Nemours and Co. (“DuPont”) is a
`real party in interest. PO Resp. 31–32. Butamax is a joint venture of
`DuPont and BP Biofuels North America LLC (“BP”). Ex. 2001, 1. Gevo
`emphasizes that Butamax and DuPont are the only two co-plaintiffs in a
`district court action seeking a declaration of non-infringement of the ’505
`patent. PO Resp. 31–32. This fact, Gevo argues, demonstrates that DuPont
`has an interest in invalidating the ’505 patent. Id. This fact also, according
`to Gevo, distinguishes this proceeding from the one the Board cited in the
`Decision to Institute, U.S. Patent No. 6,374,180, Reexamination Control No.
`95/001,852 (Dec. 13, 2011). Dec. 3–4. In that proceeding, Gevo points out,
`two co-defendants in related litigation were asserted to be real parties in
`interest, in contrast to the present proceeding in which Butamax and DuPont
`are co-plaintiffs. PO Resp. 32. Gevo’s arguments are unpersuasive.
`Gevo correctly asserts that “at a general level, the ‘real party-in-
`interest’ is the party that desires review of the patent.” Id. at 31 (quoting
`Trial Practice Guide, 77 Fed. Reg. at 48,759). But this does not mean that
`any party that desires review of a patent is a real party in interest. After all,
`5
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`IPR2013-00215
`Patent 8,283,505 B2
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`any entity intending to develop isobutanol as biofuel may have an interest in
`the validity of the ’505 patent. Such a desire, however, is not determinative
`in the real-party-in-interest analysis.
`Butamax and DuPont asserted in the declaratory judgment complaint
`that they sought the declaration because Gevo sued them as co-defendants
`for allegedly infringing the parent of the ’505 patent. Ex. 2005 ¶¶ 10–12.
`Viewed in this context, DuPont being a co-plaintiff with Butamax in a civil
`action does not demonstrate that DuPont does or is able to exercise control
`over Butamax in this inter partes review proceeding. It also does not serve
`as a basis to effectively distinguish the reexamination decision the Board
`cited in the Decision to Institute.
`Gevo’s other evidence and arguments similarly fall short of
`establishing DuPont as a real party in interest. Gevo argues that Butamax
`“is wholly owned by DuPont and BP, and thus, funding for the present
`proceeding necessarily originated from the parent entities.” PO Resp. 32.
`But Gevo does not contend that BP is a real party in interest; nor does it
`present credible evidence to demonstrate that funding for this inter partes
`review necessarily comes from DuPont, not from BP.
`Further, Gevo emphasizes that two members of Butamax’s board of
`directors also serve as directors at DuPont. Exs. 2002–04. Gevo, however,
`does not assert that Butamax’s board of directors includes only these two
`members or that these two members wield such authority as to influence the
`board’s action. Without more information, these two member’s service at
`DuPont also does not prove that DuPont controls or has the ability to control
`Butamax in this proceeding.
`
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`Patent 8,283,505 B2
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`Gevo has not presented sufficient evidence to demonstrate that
`DuPont controls or could control Butamax in this proceeding. On this
`record, we are not convinced that DuPont is a real party in interest in this
`proceeding.
`
`Claim Construction
`B.
`In an inter partes review, the Board interprets a claim term in an
`unexpired patent according to its broadest reasonable construction in light of
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b).
`Under this standard, we assign claim terms their ordinary and customary
`meaning, as understood by a person of ordinary skill in the art, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Here, the parties do not propose and we see no
`need for any express claim construction.
`
`C. Unpatentability Analysis
`Obviousness is a question of law based on underlying facts. Graham
`v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). The factual
`components include the scope and content of the prior art, the differences
`between the prior art and the claimed invention, the level of skill in the art,
`and any objective evidence of nonobviousness. Id. at 17.
`
`1.
`Testimonial Evidence
`Butamax relies on the declaration of Dr. Andrew J. Daugulis
`(Ex. 1007, “Daugulis Declaration”) to support the Petition. Gevo relies on
`the declaration of Dr. Angelo Lucia (Ex. 2021) to support the Patent
`7
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`IPR2013-00215
`Patent 8,283,505 B2
`
`Owner’s Response. The parties also cite excerpts of the deposition
`transcripts of Dr. Lucia (Ex. 1017) and Dr. Daugulis (Ex. 2020) to support
`their respective positions.
`In relation to its real-party-in-interest argument, Gevo contends that
`because Dr. Daugulis receives funding from DuPont, “his objectivity is
`suspect.” Tr. 11:23–12:5. Substantively, Gevo asserts that some opinions
`presented in the Daugulis Declaration are unsupported by underlying data.
`PO Resp. 6. Gevo also argues that portions of Dr. Daugulis’s deposition
`testimony “reflect a misunderstanding of the fundamental differences in
`separation methodologies between homogeneous mixtures (e.g., ethanol-
`water) and heterogeneous mixtures (e.g., isobutanol-water).” Id. at 7. As a
`result, according to Gevo, Dr. Daugulis’s analysis and opinions regarding
`the cited references are not credible. Id. at 11. Butamax disputes these
`allegations. Reply 9–13.
`Despite making these arguments, Gevo does not seek to disqualify Dr.
`Daugulis. See, e.g., Tr. 12:12–15. Thus, we note Gevo’s contentions, but
`shall consider and assign appropriate weight to the Daugulis Declaration and
`his deposition testimony.
`
`2.
`Level of Skill in the Art
`The parties agree that one skilled in the art would have a Ph.D. in
`chemical engineering and would have experience in distillation or
`fermentation and/or alcohol production. Ex. 1007 ¶ 16; Ex. 2021 ¶ 7.
`
`
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`IPR2013-00215
`Patent 8,283,505 B2
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`
`3.
`Technical Background
`There are four isoforms of butanol: 1-butanol (also known as
`n-butanol), 2-butanol, isobutanol, and tert butyl alcohol. Ex. 2024 § 7.1.
`Almost a century ago, the ABE (acetone, butanol, and ethanol) fermentation
`process was developed to produce 1-butanol. Id. When used as a biofuel,
`1-butanol has several advantages over ethanol. Id. For example, butanol has
`higher energy density than ethanol, which translates into more range for a
`given volume fuel tank on a vehicle. Id. Unlike ethanol, which forms a
`homogenous azeotrope with water, however, 1-butanol and water form a
`heterogeneous azeotrope at atmospheric pressure. Id. As a result, separating
`1-butanol from water cannot be achieved in a single distillation column. Id.
`Isobutanol, like 1-butanol, also forms a heterogeneous azeotrope with
`water. Ex. 1014 ¶ 183.6 Because of this, at the time of the ’505 patent
`invention, it was known that distillation can only separate the isobutanol-
`water mixture up to its azeotropic composition. Id. To isolate and purify
`isobutanol, distillation may be used in combination with another separation
`method, such as decantation or liquid-liquid extraction. Id. Specifically:
`The isobutanol-water mixture forms a heterogeneous azeotrope
`so that distillation may be used in combination with decantation
`to isolate and purify the isobutanol. In this method, the
`isobutanol containing fermentation broth is distilled to near the
`azeotropic composition. Then, the azeotropic mixture is
`condensed, and
`the
`isobutanol
`is separated
`from
`the
`fermentation medium by decantation.
`Id. ¶ 184.
`
`6 Ex. 1014 (Donaldson et al., U.S. Patent Appl. Pub. No. 2007/0092957 A1)
`was published on April 26, 2007, before the earliest priority date of the ’588
`patent.
`
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`IPR2013-00215
`Patent 8,283,505 B2
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`
`4.
`
`Prior Art
`
`English (Ex. 1002)
`English, titled “Fermentation Process for the Manufacture of an
`Organic Compound,” relates to “a process for the manufacture of ethanol or
`a similar volatile organic compound by the fermentation of a carbohydrate
`with a micro-organism.” Ex. 1002, 1:6–9. According to English, the
`fermentation product, once it reaches certain concentration, “exhibits a toxic
`effect on the micro-organism which is responsible for its production.” Id. at
`1:19–22. To solve this issue, English teaches a process that includes,
`concurrent with fermentation, the steps of
`continuously transferring a portion of the fermentation medium
`to a separator where ethanol or the like volatile organic
`compound is evaporated from the fermentation medium at a
`temperature which is not deleterious to the micro-organism by
`subjecting the fermentation medium to a reduced pressure and
`recycling part or all of the remaining fermentation medium to
`the fermenter.
`Id. at 1:63–2:2.
`In one embodiment, English discloses: (1) a prepared feedstock
`containing fermentable sugars is fed into a continuous fermentor where the
`sugars are fermented to produce ethanol; (2) a stream of the contents of the
`fermentor, typically containing 6% wt/wt ethanol, is withdrawn and
`introduced into a separator or flash vessel; (3) a mixture of vapors, generally
`containing about 40% wt/wt ethanol, is evaporated under reduced pressure in
`the separator and then subject to further recovery to reach 96–98% wt/wt
`ethanol; and (4) the remaining fluid in the separator is recycled to the
`fermentor. Id. at 7:33–8:36.
`
`
`
`10
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`IPR22013-00215
`
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`Patennt 8,283,5005 B2
`
`
`states that
`English
`
`
`
`its methodd can be ussed for mannufacturin
`g not only
`
`
`
`
`
`
`
`ethannol, but alsso other alccohols, inccluding speecifically, bbutanol, “ffrom
`
`apprropriate feeedstocks ussing suitabble micro–oorganisms..” Id. at 3:
`66–4:4.
`
`
`
`
`
`
`
`D’Amoore (Ex. 10003)
`
`
`
`
`
`
`D’Amorre teaches tthat isobuttanol can bbe producedd fermentaatively by
`es several
`
`
`
`
`
`
`recommbinant mmicroorganiisms. Ex. 1003 ¶¶ 233, 56. It allso disclos
`
`methhods of sepparating isoobutanol annd water, iincluding ddistillationn. See, e.g.
`
`
`
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`,
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`
`
`id. ¶¶¶ 39–45. FFigure 2 off D’Amoree illustratess an emboddiment of tthe
`
`
`distillation metthod:
`
`
`
`
`introducedd into beer
`am 102 is
`n broth strermentationFigure 22 shows fer
`
`
`
`
`
`
`
`
`
`apor phase enriched vaobutanol-ewhere an isocolummn 108, w
`
`is separateed from
`
`
`isobuutanol-deppleted hot wwater streaam 112. Idd. ¶ 57. In
`
`
`
`
`condenserr 116, the
`
`
`
`
`
`
`
`isobuutanol-enriiched vapoor phase, inntroduced aas overheaad stream 1110, is
`
`
`
`
`
`
`
`
`
`water-richh phase 1222. Id.
`
`
`
`
`sepaarated into isobutanoll-rich phasee 124 and
`
`
`
`
`
`
`Isobuutanol-richh phase 1244 is sent too distillatioon column
`
`
`
`
`
`
`is reccovered ass product sttream 132.. Id. Wateer-rich phaase 122, whhich
`
`
`
`
`conddensed intoo biphasic lliquid streaam 118, coonducted innto decanteer 120, andd
`
`130 wheree isobutanool
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`11
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`IPR2013-00215
`Patent 8,283,505 B2
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`contains 94% by weight water and 6% by weight isobutanol, is recycled to
`beer column 108. Id.
`
`Bramucci (Ex. 1004)
`Bramucci discloses that butanol toxicity to the host microorganism
`used in the fermentation limits the production of butanols. Ex. 1004 ¶ 5. It
`teaches butanol-tolerant microorganisms that grow in 2.4% w/v isobutanol.
`Id. ¶ 82.
`
`Maiorella (Ex. 1005)
`Maiorella describes several alternative fermentation schemes for
`ethanol production. Ex. 1005, Abstract. It discloses that “[f]or selective
`ethanol removal processes, the fermenting beer is cycled through a selective
`ethanol recovery device (membrane separator, extractor, or flash vessel) to
`recover a concentrated ethanol product for distillation and an ethanol
`depleted beer for recycle to the fermentor.” Id. at 1005 (citations omitted);
`see also id. at 1015, Fig. 17. Maiorella teaches sending clarified dilute beer
`to a stripper column to recover ethanol. Id. at 1005. According to
`Maiorella, recycling the microorganism cells to the fermentor “increases
`productivity and reduces costs.” Id. at 1010.
`Hess (Ex. 1006)
`According to Hess, 1-butanol, used as a biofuel, has several
`advantages over ethanol. Ex. 1006. Because “butanol is produced using a
`fermentation process very similar to that of ethanol,” Hess announces a plan
`to convert an ethanol plant to produce 1-butanol. Id.
`
`
`
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`5.
`
`Obviousness of Claims 1, 9, 10, and 13–17 over English and
`D’Amore
`Butamax argues that claims 1, 9, 10, and 13–17 would have been
`obvious over the combination of English and D’Amore. Pet. 11–26.
`For claim 1, Butamax points out that both English and D’Amore teach
`producing alcohol—ethanol-like volatile compounds, including butanol in
`English, and isobutanol in D’Amore—by culturing microorganisms in a
`fermentation medium. Id. at 17. Thus, according to Butamax, a skilled
`artisan “would have had a reasonable expectation of successfully culturing
`the microorganisms of D’Amore to produce isobutanol in the fermentation
`method of English (claim 1; step (a)).” Id. In addition, Butamax contends
`that English teaches steps (b), (c), and steps (1), (2), and (3) of the wherein
`clause (id. at 13–19); and D’Amore teaches steps (d) and (e) (id. at 14, 19–
`20). Butamax argues that based on the combination of English and
`D’Amore, one skilled in the art would have arrived at an isobutanol recovery
`process that includes every limitation of claim 1. Id. at 21.
`Claims 9 and 10 depend from claim 1 and further specify that the
`isobutanol-rich liquid phase of step (d) has a ratio of isobutanol to water of
`greater than about 2 or greater than about 8, respectively. Claim 13 depends
`from claim 1 and further requires “cooling the isobutanol-rich liquid phase,
`thereby increasing the ratio of isobutanol to water in the isobutanol-rich
`liquid phase.” Dr. Daugulis, Butamax’s expert, testified that “[d]istillation
`was routine in the art” (Ex. 1007 ¶ 57), and that a skilled artisan “would
`have sought to obtain an isobutanol-rich liquid phase that was as pure as
`possible” (id. ¶ 56). Butamax also directs our attention to D’Amore’s
`teaching that the concentration of water in the isobutanol-rich liquid phase
`
`
`
`13
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`IPR2013-00215
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`varies with condensation temperature. Pet. 22 (citing Ex. 1003 ¶ 39).
`Butamax asserts that it would have required no more than routine
`optimization to obtain the isobutanol-to-water ratio recited in claims 9 and
`10. Id. (citing Ex. 1007 ¶ 57). Further, Butamax argues that one skilled in
`the art would have had a reason and a reasonable expectation of success to
`cool the isobutanol-rich liquid in order to increase the ratio of isobutanol to
`water in the isobutanol-rich liquid, as recited in claim 13. Pet. 24 (citing Ex.
`1007 ¶ 58).
`Claims 14–16 depend from claim 1 and further specify the distillation
`temperature. Butamax first points to English where it teaches heating the
`fermentation broth with the goal to facilitate distillation but avoid rendering
`the microorganisms inactive. Id. at 25 (citing Ex. 1002, 4:26–33).
`According to Butamax, in an embodiment of English, the temperature of the
`fermentation broth is 40° C, which falls within the ranges specified in
`claims 14–16. Id. (citing Ex. 1002, 7:50–60). Recognizing that the
`embodiment of English discusses producing ethanol, while claims 14–16 are
`directed to producing isobutanol, Butamax argues that one skilled in the art
`would have had a reason to optimize the distillation temperature to achieve
`the same goal set forth in English, i.e., facilitate distillation but avoid
`rendering the microorganisms inactive. Id. Because it would have taken
`routine optimization to arrive at the claimed temperature ranges, Butamax
`further contends, claims 14–16 would have been obvious. Id. at 26.
`Claim 17 depends from claim 1 and further requires that the
`distillation is carried out at a reduced pressure. Butamax points out that
`English teaches distilling ethanol or a like volatile organic compound at a
`reduced pressure. Id. (citing Ex. 1002, 1:64–68). Thus, Butamax argues,
`14
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`when producing isobutanol using the method based on the combined
`teachings of English and D’Amore, one skilled in the art would have had a
`reason to distill at a reduced pressure. Id. (citing Ex. 1007 ¶ 62).
`Gevo does not dispute that the combination of English and D’Amore
`teaches or suggests all the claim limitation of claims 1, 9, 10, and 13–17.
`See Ex. 1017, 61:25–71:1. Instead, Gevo argues that one skilled in the art
`would have had no reason to combine the references and that the
`combination of the references would render English unsuitable for its
`intended purposes. PO Resp. 33–51.
`According to Gevo, “processes for obtaining high purity alcohol from
`homogeneous mixtures (ethanol-water) and heterogeneous mixtures
`(isobutanol-water) are fundamentally different.” Id. at 39. Gevo’s expert,
`Dr. Lucia, testified that the processes disclosed in English are “only suitable
`for separating homogeneous azeotropes like ethanol and water.” Ex. 2021
`¶ 62; see also PO Resp. 33. Because isobutanol forms a heterogeneous
`azeotrope with water, Gevo asserts, one skilled in the art would not look to
`English as a starting point to produce isobutanol. PO Resp. 39–44. Even if
`English was selected as a starting point, Gevo further argues, a skilled
`artisan would not disregard English’s stated objective to save energy by
`modifying English’s process with D’Amore. Id. at 41, 44–45.
`We find Gevo’s argument unconvincing. First, the test for
`obviousness is whether the claimed invention is rendered obvious by the
`teachings of the prior art as a whole. In re Etter, 756 F.2d 852, 859 (Fed.
`Cir. 1985) (en banc). Here, we analyze the combined teachings of English
`and D’Amore; it matters not whether one skilled in the art would look to
`
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`English as a starting point or to supplement the teachings of D’Amore. See
`In re Bush, 296 F.2d 491, 496 (CCPA 1961).
`Second, as Butamax correctly points out, English never uses the terms
`“homogeneous” or “azeotrope.” Reply 3. Instead, English specifically
`teaches that its method can be used for manufacturing butanol from
`fermentation. Ex. 1002, 3:47–52; 3:66–4:4. In his declaration, Dr. Lucia
`states that the butanol in English is t-butanol because it forms a
`homogeneous azeotrope with water. Ex. 2021 ¶ 50. During his deposition,
`however, Dr. Lucia testified that he was not certain which butanol is
`produced through the fermentation process. Ex. 1017, 12:4–24. In fact, the
`isoform of butanol produced by ABE fermentation is 1-butanol, which forms
`a heterogeneous azeotrope with water. Ex. 2024 § 7.1. Thus, contrary to
`Gevo’s assertion, English does not limit “ethanol like volatile organic
`compounds” to only those that form homogeneous azeotropes with water.
`Third, D’Amore teaches that “1-Butanol and isobutanol share many
`common features that allow the separation schemes devised for the
`separation of 1-butanol and water to be applicable to the isobutanol and
`water system.” Ex. 1003 ¶ 37. During his deposition, Dr. Lucia confirms
`that the separation processes for recovering isobutanol and 1-butanol from
`fermentation broth “would be roughly the same.” Ex. 1017, 85:13–86:4.
`Thus, it appears reasonable for one skilled in the art, when designing a
`process to produce isobutanol, to consult prior art disclosing processes to
`produce 1-butanol. This is especially so here because D’Amore, while
`recognizing fermentation methodology as “well known in the art” (Ex. 1003
`¶ 34; see also id. ¶ 36), does not describe the fermentation process in detail.
`English, on the other hand, teaches fermentation processes that can be used
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`to produce 1-butanol. See, e.g., Ex. 1002, 7:33–8:36. Thus, we are
`persuaded that one skilled in the art having the goal of fermenting biomass
`to produce isobutanol would have had a reason to combine the teachings of
`English and D’Amore.
`In addition, Gevo argues that Dr. Daugulis, Butamax’s expert,
`conceded during his deposition that one skilled in the art would not combine
`English and D’Amore. PO Resp. 46 (citing Ex. 2020, 147:15–21). We do
`not find this argument persuasive. Even though he stated that it may be
`better to have additional equilibrium stages, Dr. Daugulis testified that “a
`simple isobutanol process could operate with [a] flash unit.” Ex. 2020,
`147:15–17; 148:6–7.
`Gevo next argues that combining English and D’Amore would change
`the fundamental principles of operation of the English process. PO Resp.
`47–49. As explained above, we are not sufficiently persuaded that the basic
`principle of operation of English is limited to only homogeneous azeotrope
`production. Thus, we do not find the combination of English and D’Amore
`would have changed the principle of operation of English.
`Gevo also contends that combining English and D’Amore would
`render English unsuitable for its intended purpose of purifying ethanol to a
`purity of 96–98%. PO Resp. 47–49. This argument also is inapposite. To
`analyze whether the challenged claims would have been obvious, we inquire
`whether one skilled in the art, combining the teachings of English and
`D’Amore, would have been successful in designing a method to produce
`isobutanol. It is irrelevant whether such a method can be used to purify
`ethanol.
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`Further, Dr. Lucia emphasizes the economic impact that would result
`from any modification of the English processes. Ex. 2021 ¶ 53. Relying on
`Dr. Lucia’s opinion, Gevo asserts that without “significant simulation and
`economic analysis,” it would be “impossible” for a skilled artisan to
`conclude “whether such a modified process could be considered
`‘successful.’” PO Resp. 44–45 (citing Ex. 2021 ¶¶ 69, 70); see also id. at
`34–35. Gevo’s argument is unconvincing. Dr. Lucia’s expressed skepticism
`is directed to the economic feasibility—whether the modified process could
`be considered commercially successful—not the technical merit of the
`claimed invention. But commercial viability does not control the
`obviousness determination:
`[T]he fact that the two [prior art disclosures] would not be
`combined by businessmen for economic reasons is not the same
`as saying that it could not be done because skilled persons in
`the art felt that there was some technological incompatibility
`that prevented their combination. Only the latter fact is telling
`on the issue of nonobviousness.
`Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
`1983). Therefore, we are not persuaded that economic analysis is required
`for the obviousness analysis.
` Finally, Gevo contends that Butamax improperly relies on hindsight
`in asserting obviousness of the challenged claims. PO Resp. 49. D’Amore
`discloses, in addition to distillation, several other methods to purify
`isobutanol, including pervaporation, gas stripping, adsorption, and liquid-
`liquid extraction. Ex. 1003 ¶¶ 41–45. Gevo argues that none of those
`methods, when combined with English, could arrive at the claimed
`invention. PO Resp. 49; see also IPR2013-00214 Tr. 49:9–51:22.
`
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`According to Gevo, Butamax’s selection of only distillation, while ignoring
`the other methods, for combination with English, is based on the hindsight
`knowledge of the claimed invention. PO Resp. 49. We disagree.
`On this issue, the Federal Circuit’s opinion in In re Thomas is
`informative. See 151 F. App’x 930 (Fed. Cir. 2005). In that case, one of the
`claims on appeal was directed to a computer implemented method for
`performing a survey, requiring email notification of registered participants
`as to research studies. Id. at 932. The Board affirmed an examiner’s
`rejection of the claim for obviousness based on the combination of two prior
`art references. Id. at 934. On appeal to the Federal Circuit, the appellant
`argued that the Board erred in finding a motivation to combine because one
`of the references “suggests eight different methods of computer–based data
`collection, any one of which could be used to notify respondents, and that it
`does not suggest the particular desirability of email notification.” Id.
`Rejecting this argument, the Federal Circuit pointed out: “for an obviousness
`analysis, even the fact that ‘a specific embodiment is taught to be preferred
`is not controlling, since all disclosures of the prior art, including unpreferred
`embodiments, must be considered.’” Id. (quoting Merck & Co., Inc. v.
`Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)).
`Similarly in the present case, we must consider all disclosures of
`D’Amore, which explicitly teaches distillation to recover isobutanol from
`fermentation broth. Ex. 1003 ¶¶ 39, 40. D’Amore’s teaching of other
`recovery methods does not render the combination of this method with the
`teaching of English not obvious. Indeed, during his deposition, Dr. Lucia
`testified that “the usual strategy” to purify a compound that forms a
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`heterogeneous azeotrope with water would be to separate the condensed
`biphasic vapor with a decanter after distillation. Ex. 1017, 58:6–13.
`In sum, we determine Butamax has shown that the combination of
`English and D’Amore teaches or suggests all the limitations of claims 1, 9,
`10, and 13–17. In addition, one skilled in the art would have had a reason to
`combine these two references and would have had a reasonable expectation
`that the modified method would be successful in producing isobutanol.
`Therefore, Butamax has shown by a preponderance of the evidence that
`claims 1, 9, 10, and 13–17 would have been obvious over the combination of
`English and D’Amore.
`
`6.
`
`Obviousness of Claims 2–8, 11, 12, and 18 over English,
`D’Amore, and Bramucci
`Butamax argues that claims 2–8, 11, 12, and 18 would have been
`obvious over the combination of English, D’Amore, and Bramucci. Pet. 27–
`34.
`
`Claims 2–8 depend from claim 1 and further specify that the
`isobutanol-enriched vapor phase has an isobutanol concentration at least
`about 5-, 10-, 11-, 12-, 13-, 14-, and 15-fold, respectively, greater than the
`concentration of the po
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