Gevo Inc. v. Butamax (TM) Advanced Biofuels LLC et al

Filing 257

MEMORANDUM. Signed by Judge Sue L. Robinson on 2/18/2014. Associated Cases: 1:12-cv-00301-SLR, 1:12-cv-00448-SLR(nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

GEVO, INC.,
Plaintiff,

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V.

BUTAMAX™ ADVANCED
BIOFUELS LLC and DU PONT,
DENEMOURSANDCOMPANY

Civ. No. 12-301-SLR

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Defendants.

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Plaintiff,

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GEVO, INC.,

v.
BUTAMAX™ ADVANCED
BIOFUELS LLC and DU PONT,
DE NEMOURS AND COMPANY
Defendants.

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Civ. No. 12-448-SLR

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MEMORANDUM
At Wilmington this l&h day of February, 2014, having considered plaintiff Gevo,
Inc.'s ("Gevo") motion to stay (D.I. 229} 1 and the papers submitted therewith; the court
issues its decision based on the following reasoning:
1 . Background. Gevo filed actions on March 13, 2012 and April 17, 2012
against Butamax™ Advanced Biofuels LLC ("Butamax") and Du Pont de Nemours and
Company ("DuPont") for infringement of U.S. Patent Nos. 8,133,715 ("the '715 patent"),

1

References are to Civ. No. 12-301-SLR, unless otherwise indicated.

8,153,415 ("the '415 patent"), and 8,158,404 ("the '404 patent") (collectively, the
patents-in-suit). (D. I. 1; Civ. No. 12-448 D. I. 6) The patents-in-suit relate to the
five-step pathway of enzymatic reactions that converts pyruvate to isobutanol. Gevo is
a corporation organized and existing under the laws of the State of Delaware, with its
principal place of business in Englewood, Colorado. (D.I. 1 at 1f 1) Butamax is a limited
liability corporation organized and existing under the laws of the State of Delaware, with
its principal place of business in Wilmington, Delaware. (D. I. 1 at

1f 2)

DuPont is a

corporation organized and existing under the laws of the State of Delaware, with its
principal place of business in Wilmington, Delaware. (/d. at

1f 3)

Gevo and Butamax

are competitors in the development of isobutanol technology.
2. Standard. Motions to stay invoke the broad discretionary powers of the
court. See Dentsply lnt'l, Inc. v. Kerr Mfg. Co., 734 F.Supp. 656, 658 (D. Del. 1990)
(citing Bechtel Corp. v. Laborers' Jnt'l Union, 544 F.2d 1207, 1215 (3d Cir. 1976)); see
a/so Monsanto Co. v. Syngenta Seeds, Inc., Civ. No. 04-305, 2006 U.S. Dist. LEXIS
84963, at *3 (D. Del. Nov. 8, 2006) (citing In re lnnotron Diagnostics, 800 F.2d 1077,
1085 (Fed. Cir. 1986)). Three general factors inform the court in this regard:
(1) whether the granting of a stay would cause the
non-moving party to suffer undue prejudice from any delay
or allow the moving party to gain a clear tactical advantage
over the non-moving party; (2) whether a stay will simplify
the issues for trial; and (3) whether discovery is complete
and a trial date set.
Enhanced Security Research, LLC v. Cisco Sys., Inc., Civ. No. 09-571, 2010 WL
2573925, at *3 (D. Del. June 25, 2010) (citing St. Clair Intellectual Prop. Consultants v.
Sony Corp., Civ. No. 01-557, 2003 WL 25283239, at *1 (D. Del. Jan. 30, 2003)).

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3. Discussion. After conducting discovery in these matters, Gevo provided
Butamax with a covenant not to sue for the use of "Accused Technology," defined as
certain modified recombinant microorganisms. (0.1. 206, ex. 8) Based on this
covenant, Gevo volunteered to dismiss its infringement claims. Butamax refused to
dismiss its counterclaims of invalidity and non-infringement. On December 16, 2013,
the court denied Gevo's motion to dismiss based on the cloud cast over Butamax's
research and development efforts from an unclear covenant not to sue, Butamax's
desire to use the alleged infringing strains, along with the pattern of litigation between
the parties and the unpredictability of the art. 2 (0.1. 223) Civ. No. 12-1724 (also
involving microorganisms for isobutanol production) is the only remaining ongoing
litigation filed by Gevo.
4. Butamax discontinued using strains containing certain modified
microorganisms allegedly covered by the patents-in-suit. Butamax asserts that it does
not yet know "[h]ow the resumption of the 'shelved' research may impact [its] current
research" and, after reviewing its litigation choices, Butamax does not oppose a stay in
Civ. No. 12-448, involving the '404 and '415 patents. (0.1. 246 at 7) Butamax,
however, contends that a stay in Civ. No. 12-301, involving the '715 patent, will cause
Butamax "damage and ... prejudice." (/d. at 3) Butamax admits that its "products are
still being developed and are evolving," and that the art is uncertain. (/d. at 7)

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Since this time, the court granted Gevo's motion to dismiss in Civ. No. 12-1301,
based in part on the uncertainty surrounding the finalization of Butamax's isobutanol
recovery process (or any other aspect of commercialization) and finding that the pattern
of litigation between the parties was insufficient to sustain an actual controversy in the
context of the patent at issue in that case. (Civ. No. 12-1301, 0.1. 63)

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5. Butamax alleges Gevo will gain a "tactical advantage, allowing it to evade
resolution of ... Butamax's invalidity arguments for years, while defending the '715
patent's validity before the PTO." (0.1. 246 at 6) Fact discovery and claim construction
are complete and depositions are scheduled. The trial date is set for July 21, 2014.
6. Butamax chose to initiate a reexamination of the patents-in-suit in parallel
with this litigation. In response, the PTO initially rejected all the claims of the '715
patent. While Butamax states it plans to resume research using the microorganism
strain allegedly covered by the '715 patent, it has not provided the court with evidence
that it actually will do so. (0.1. 246 at 4, 7) Gevo is willing to stay the cases pending the
PTO's issuance of a Right to Appeal Notice. (0.1. 247 at 5) The parties are preparing
for trial in about six months, however, rejection of the patent by the PTO would moot
Butamax's counterclaims of invalidity (the only remaining claims to be litigated). Having
considered the arguments put forth by both parties, and considering the time and
expense of litigation, the court grants Gevo's motion to stay the case only until the PTO
issues the Right to Appeal Notice. At that time, the parties will have 60 days to
resurrect the litigation if they so desire.
7. Conclusion. For the foregoing reasons, Gevo's motion to stay (0.1. 229) is
granted. An order shall issue.

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