On 20 December, Neste Oil Oyj sued Syntroleum Corporation for alleged patent infringement regarding US Patent No. 8,212,094 on the production process for NExBTL renewable diesel. (Earlier post.) Syntroleum denies any infringement of Neste’s alleged patent rights and says it will continue to vigorously defend against Neste’s allegations.
The ’094 patent covers similar subject matter and shares a common inventor with prior Neste patents (US Patent Nºs 7,279,018 and 8,187,344), as they are directed to processes for making, or compositions of, diesel fuel or diesel range hydrocarbons. The ’094 patent, like the ’018 and ’344 patents, adds nothing new to the field of diesel fuels or methods for making same, Syntroleum claims.
Claims of Neste’s prior ’018 patent were invalidated following a March 22, 2012 decision by the USPTO Board of Patent Appeals and Interferences finding that “the evidence of record as a whole supports the Examiner’s conclusion that the fuel composition as claimed would have been obvious to one of ordinary skill in the art...” Neste declined to appeal this ruling and on 31 July 2012, the USPTO issued a Reexamination Certificate canceling all claims of the ’018 patent, Syntroleum notes. The related ’344 patent is the subject of an inter partes reexamination wherein the USPTO issued a 14 September 2012 Office Action rejecting all claims of that patent as obvious in view of the prior art. This reexamination is pending and is assigned Reexam Control Number 95002084.
Syntroleum is currently defending Neste’s suit filed 29 May 2012 on the ’344 patent in the District of Delaware. Syntroleum’s Answer and Counterclaims to Neste’s First Amended Complaint regarding the ’344 patent was filed on 24 September 2012, and Syntroleum’s Motion to Stay the district court action in view of the USPTO reexamination proceedings is pending. Syntroleum will pursue its non-infringement, invalidity and other defenses with respect to both asserted Neste patents and says it is confident that its position will be vindicated.