Butamax (TM) Advanced Biofuels LLC et al v. Gevo Inc.
Filing
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MEMORANDUM. Signed by Judge Sue L. Robinson on 1/28/2014. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BUTAMAX™ ADVANCED
BIOFUELS LLC and DU PONT,
DENEMOURSANDCOMPANY
Plaintiffs,
v.
GEVO, INC.,
Defendant.
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Civ. No. 12-1301-SLR
MEMORANDUM
At Wilmington thisJith day of January, 2014, having considered defendant
Gevo, Inc.'s ("defendant") renewed motion to dismiss for lack of subject matter
jurisdiction and the papers submitted therewith;
IT IS ORDERED that said motion (D. I. 39) is granted, as follows:
1. Background. Butamax™ Advanced Biofuels LLC ("Butamax") and DuPont
de Nemours and Company ("DuPont") (collectively, "Butamax and DuPont") filed this
action on October 8, 2012 against Gevo, Inc. ("Gevo") seeking declaratory judgment of
non-infringement of U.S. Patent No. 8,283,505 ("the '505 patent"). (D.I. 1 at
,-r 1) The
'505 patent, "Recovery of Higher Alcohols from Dilute Aqueous Solutions," issued
October 9, 2012. 1 (D.I. 20, ex. H) 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. It develops biobutanol, a premium biofuel molecule. (D. I. 1 at
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The '505 patent issued on October 9, 2012 at 12:00am EDT, as shown on the
September 19, 2012 issue notification. (D. I. 1 at ,-r 13, ex. A)
1J2) DuPont is a corporation organized and existing under the laws of the State of
Delaware, with its principal place of business in Wilmington, Delaware. It is a science
company with leading capabilities in biotechnology. (/d. at 1J3) 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. at 1J4) Gevo's motion to dismiss for lack of
subject matter jurisdiction was denied on May 2, 2013. (D. I. 29) Currently before the
court is Gevo's renewed motion to dismiss for lack of subject matter jurisdiction. (0.1.
39)
2. Standard. Not only may the lack of subject matter jurisdiction be raised at
any time, it cannot be waived and the court is obliged to address the issue on its own
motion. See Moodie v. Fed. Reserve Bank of NY, 58 F.3d 879, 882 (2d Cir. 1995).
Once jurisdiction is challenged, the party asserting subject matter jurisdiction has the
burden of proving its existence. See Carpet Group tnt'/ v. Oriental Rug Importers Ass'n,
Inc., 227 F.3d 62, 69 (3d Cir. 2000). Under Rule 12(b)(1), the court's jurisdiction may
be challenged either facially (based on the legal sufficiency of the claim) or factually
(based on the sufficiency of jurisdictional fact). See 2 James W. Moore, Moore's
Federal Practice§ 12.30[4] (3d ed. 1997). Under a facial challenge to jurisdiction, the
court must accept as true the allegations contained in the complaint. See id. Dismissal
for a facial challenge to jurisdiction is "proper only when the claim 'clearly appears to be
immaterial and made solely for the purpose of obtaining jurisdiction or ... is wholly
insubstantial and frivolous."' Kehr Packages, Inc. v. Fide/cor, Inc., 926 F.2d 1406,
1408-09 (3d Cir. 1991) (quoting Bell v. Hood, 327 U.S. 678, 682 (1946)).
2
3. Under a factual attack, however, the court is not "confine[d] to allegations in
the ... complaint, but [can] consider affidavits, depositions, and testimony to resolve
factual issues bearing on jurisdiction." Gotha v. United States, 115 F.3d 176, 179 (3d
Cir. 1997); see also Mortensen v. First Fed. Sav. & Loan Ass'n, 549 F.2d 884, 891-92
(3d Cir. 1977). In such a situation, "no presumptive truthfulness attaches to plaintiff's
allegations, and the existence of disputed material facts will not preclude the trial court
from evaluating for itself the merits of jurisdictional claims." Carpet Group, 227 F.3d at
69 (quoting Mortensen, 549 F.2d at 891 ). Although the court should determine subject
matter jurisdiction at the outset of a case, "the truth of jurisdictional allegations need not
always be determined with finality at the threshold of litigation." Moore, supra, §
12.30[1]. Rather, a party may first establish jurisdiction "by means of a nonfrivolous
assertion of jurisdictional elements and any litigation of a contested subject-matter
jurisdictional fact issue occurs in comparatively summary procedure before a judge
alone (as distinct from litigation of the same fact issue as an element of the cause of
action, if the claim survives the jurisdictional objection)." Jerome B. Grubart, Inc. v.
Great Lakes Dredge & Dock Co., 513 U.S. 527, 537-38 (1995) (citations omitted).
4. The Declaratory Judgment Act requires an actual controversy between the
parties before a federal court may exercise jurisdiction. 28 U.S.C. § 2201 (a). A plaintiff
bringing an action for declaratory judgment must prove, by a preponderance of the
evidence, that an actual controversy exists. See Shell Oil Co. v. Amoco Corp., 970 F.2d
885, 887 (Fed. Cir. 1992). An actual controversy exists where "the facts alleged, under
all the circumstances, show that there is a substantial controversy, between parties
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having adverse legal interests, of sufficient immediacy and reality to warrant the
issuance of a declaratory judgment." 2 Medlmmune, Inc. v. Genentech, Inc., 549 U.S.
118, 127 (2007) (quoting Maryland Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273,
(1941 )). This is not a bright-line test. See, e.g., Maryland Cas., 312 U.S. at 273; Sony
Elecs., Inc. v. Guardian Media Techs., Ltd., 497 F.3d 1271, 1283 (Fed. Cir. 2007).
5. Discussion. There is an extensive pattern of litigation between these parties.
Butamax initially sued defendant in this court on January 14, 2011, alleging
infringement of two of its patents. Butamax Advanced Biofuels LLC v. Gevo, Inc., Civ.
No. 11-54 (D. Del. Jan. 14, 2011 ). Currently, there are eleven cases pending between
the parties, with Butamax as plaintiff in eight and Gevo as plaintiff in three. 3 All of the
cases relate to bio-isobutanol technology. (D. I. 18 at 2; D.l. 21 at 3)
6. On May 2, 2013, the court denied Gevo's motion to dismiss based in part on
Gevo's pending action alleging that Butamax and DuPont infringed U.S. Patent No.
8,101,808 ("the '808 patent"), "Recovery of Higher Alcohols from Dilute Aqueous
Solutions" (the '808 action"). Gevo, Inc. v. Butamax Advanced Biofuels LLC, eta/., Civ.
No. 12-70, D. I. 1 at 1112 (D. Del. Jan. 24, 2012). The '505 patent at issue in the
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"[T]he phrase 'case of actual controversy' in the [Declaratory Judgment] Act
refers to the type of 'Cases' and 'Controversies' that are justiciable under Article Ill."
Medlmmune, 549 U.S. at 127 (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227
(1937)). Consequently, the analysis of whether "a case of actual controversy" exists is
essentially an analysis of whether Article Ill standing exists. See generally id.; see also,
e.g., SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007),
Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 901 (Fed. Cir. 2008). For
brevity's sake, the court confines its analysis in this opinion to whether, under the
Declaratory Judgment Act, "a case of actual controversy" exists.
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DuPont is a party to most of the lawsuits.
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present litigation is a continuation of the '808 patent and shares the same specification
and title as the '808 patent. ('505 patent; 0.1. 19 at ex. A, the '808 patent) Gevo then
voluntarily dismissed the '808 action. (Civ. No. 12-70, 0.1. 61, ordered on May 8, 2013)
7. The '808 and the present actions involve patents covering the isobutanol
recovery process. The balance of the pending litigation between the parties involve
patents directed to the creation of isobutanol by genetically engineered organisms.
Butamax alleges it is "further along towards commercialization" than when the '808 and
present actions were filed. However, neither party has presented any evidence of a
final process for the production and recovery of isobutanol or concrete plans for
constructing a plant to implement such a process. 4 Having reviewed the "totality of the
circumstances," including the dismissal of the '808 action and the uncertainty
surrounding the finalization of Butamax's isobutanol recovery process (or any other
aspect of commercialization), the court finds the pattern of litigation between the parties
insufficient to sustain an actual controversy in the context of the '505 patent. Prasco,
LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1338-41 (Fed. Cir. 2008) (holding that
one prior lawsuit concerning different products, without more, was not sufficient to
sustain an actual controversy); Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482
F.3d 1330, 1344 (Fed. Cir. 2007) (finding that pending litigation between the parties,
combined with three other factors including defendant's filing of an abbreviated new
drug application, was sufficient to sustain a declaratory action).
8. Conclusion. For the foregoing reasons, Gevo's renewed motion to dismiss
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Butamax has not started construction on its plant and states that
commercialization is currently expected in 2015. (0.1. 40, ex. 1)
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for lack of subject matter jurisdiction (D. I. 39) is granted. An order shall issue.
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