Federal Circuit’s Four Factor Fiddle Raises the Bar for Patent Injunctions

May 17th, 2017 by Eric Lane No comments »

LED colossus Nichia (the world’s largest supplier of LEDs) accused Everlight of infringing three patents relating to tiny LEDs used in LCD backlights, video displays, automobiles, an general lighting:

U.S. Patent No. 8,530,250, entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body”;

U.S. Patent No. 7,432,589, entitled “Semiconductor device”; and

U.S. Patent No. 7,462,870, entitled “Molded package and semiconductor device using molded package”

The district court found the patents to be valid and that Everlight infringed all three patents.  However, the court denied Nichia’s request for a permanent injunction.  Everlight appealed on infringement and validity, while Nichia appealed the injunction decision.

On appeal, the important part of the Federal Circuit opinion relates to the law on injunctions in patent cases.

Current law on permanent injunctions for patent infringement comes from the Supreme Court’s eBay v. Mercexchange decision, which established the following four-factor test for determining whether to grant a permanent injunction:

(1) the patentee suffered an irreparable injury;

(2) remedies available at law, such as monetary damages, are inadequate to compensate for the injury;

(3) considering the balance of hardships between plaintiff and defendant, an equitable remedy is warranted; and

(4) the public interest would not be disserved by a permanent injunction.

Since the eBay decision, courts have typically granted a permanent injunction upon a determination that a balancing of all four factors weighed in favor of injunctive relief and the patentee proved either irreparable injury (factor 1) or no adequate remedy at law (factor 2).

Here, however, the Federal Circuit held that proof of irreparable injury is required for a permanent injunction, regardless of whether the patentee has an adequate legal remedy, elevating factor 1 above all the others.

The court of appeal did not find “clear error in the district court’s finding that Nichia failed to prove that it would suffer irreparable harm absent the injunction.”

“Because Nichia failed to establish one of the four equitable factors,” the Federal Circuit continued, “the [district] court did not abuse its discretion in denying Nichia’s request for an injunction.”

And with that conclusion, the Federal Circuit ended its analysis, declining to review the district court’s findings on monetary damages (factor 2):

Because we affirm the court’s conclusion on irreparable harm, we do not reach the adequacy of monetary damages.

This may represent a significant change in the law, where instead of considering and balancing all four factors, the courts require the patentee to satisfy all four elements to obtain injunctive relief.

Such a shift would make it more difficult for a patentee to get an injunction after proving infringement.

Brookings Institution Report Highlights Green Patent Problems

May 10th, 2017 by Eric Lane No comments »

A new report by the Brookings Institution notes a troubling recent reversal in U.S. green patenting activity.

Specifically, the report found that the total number of clean tech patents granted by the U.S. Patent and Trademark Office between 2014 and 2016 declined by nine percent each year.  This after a long stretch of growth –  thirteen years of patent grants growing at a rate of seven percent annually between 2001 and 2014.

Here’s a graph from the report, based on data from the Cleantech PatentEdge database, run by our friends at IP Checkups:

Entitled “Patenting invention” Clean energy innovation trends and priorities for the Trump administration and Congress,” the report examined patterns in clean tech patenting since 2001, both nationally and by metropolitan area.

According to a Brookings Metro press release, the authors, Devashree Saha and Mark Muro, hope the report’s “baseline look at the pace and geography of cleantech innovation” will inform federal and local decision-making with respect to innovation policy.

The authors highlighted five key findings.  First, while green patenting has grown significantly since 2001, it may be slowing now.  This trend could be a result of funding declines by the federal government and venture capitalists over the past several years.

Second, green patenting is concentrated in a small group of technologies.  In particular, the report identifies advanced green materials, energy efficiency, and transportation (each accounting for 18% of the total) as having higher proportions of patents.

As for geography, the report concludes that green patenting is widely distributed across the United States, but large metropolitan areas are the source of a disproportionate share of the patenting activity.  Large and small metro areas show distinctive profiles in green patenting, varying in their specializations, the report found.

Finally, the report found that the share of clean tech patents owned by companies based outside the United States has grown over the years.  According to the Executive Summary, this trend reflects the globalization of clean tech industries, particular in Asian economies.

What does this mean for clean tech innovation and green patenting going forward?  Saha was quoted by Greentech Media, saying the data “raises concerns about the long-term competitiveness of the U.S. cleantech sector.”

Saha also said that the Trump administration’s plans to cut budgets for clean energy “could make this flattening a more permanent downward trend in the next few years.”

Muro commented on Trump’s budget proposal that would eliminate certain programs such as ARPA-E, the U.S. government’s energy innovation program, noting that “[t]here are critical [federal] programs that have major impacts on these industries and ecosystems.”

The report warns against the U.S. falling behind in clean tech innovation:

Given the size of the global clean energy economic opportunity, the United States can ill afford to relinquish its lead on innovation in the burgeoning global cleantech market to China or other countries.

The authors recommend that the U.S. maintain clean energy R&D appropriations at viable levels, maximize the impact of the national energy labs, preserve ARPA-E, and maintain and scale up U.S. energy innovation hubs.

Should the USPTO Delay Publication of Trademark Applications? (Part 2)

April 22nd, 2017 by Eric Lane No comments »

In a previous post, in reaction to Apple’s game of branding hide-and-seek, I introduced the idea of a delay in initial publication of new U.S. trademark applications.

As brief background, in March 2014 Apple filed a trademark application for the APPLE WATCH mark in Trinidad and Tobago.  Subsequently, Apple filed at least one U.S. application for APPLE WATCH claiming priority to the Trinidad and Tobago application (Application No 86389945).

This circuitous route to U.S. trademark protection kept Apple’s new watch phone brand name under wraps in the months preceding the product launch while preserving the company’s right to protect the trademark in the United States before the launch (U.S. trademark applications are immediately publicly available after filing, and tech blogs, etc. review U.S. trademark filings to glean companies’ branding plans).

I think this need to play branding hide-and-seek – the tension between getting a trademark application on file and controlling the public revelation of a new brand – should be eliminated.

My proposed solution is a simple one:  U.S. trademark law (or rules) should provide for a delay in initial publication of newly-filed U.S. trademark applications, i.e., a “blackout” period to maintain applicants’ confidentiality.

Instead of immediately making new trademark application data available on the U.S. Patent and Trademark Office (USPTO) web site, publication of the data would be delayed for a period of time.

I propose that the default confidentiality period be six months; the new trademark application data would become available and searchable in the USPTO trademark records six months after the filing date of the application.

That is a reasonable period of time that matches the Paris Convention priority period for trademark applications.  It would obviate the need for applicants seeking to maintain the confidentiality of their new brands and control the timing of their public release to find obscure IP offices in distant corners of the world in which to file their applications six months before their product launch date.

Of course, a couple of nuances and potential objections should be addressed.

First, there is the issue of the publication for opposition of U.S. trademark applications.  The USPTO provides the general public the opportunity to review trademark applications before they register and, if anyone believes they would be damaged by registration of a particular trademark application, to temporarily pause the process and file a Notice of Opposition to oppose registration of that application.

An essential step in offering this opposition opportunity is that, prior to registration, every application is published for opposition.  This includes a preliminary Notice of Publication, which alerts the applicant, and anyone else monitoring the status of the application, of the date of publication for opposition.

Any delay in initial publication of trademark applications cannot disrupt the opposition process, in particular, publication for opposition.  Accordingly, my proposal takes that into account and would provide that, if a Notice of Publication is to be issued for a U.S. trademark application prior to the default six-month initial publication date, then the application would initially publish, and its full data become available on the USPTO web site, the same date as the Notice of Publication is issued.

In other words, the initial publication date of a U.S. trademark application would be the earlier of (a) the date that is six months after its initial filing date; or (b) the date the Notice of Publication is issued.

Another objection is that a confidentiality “blackout” period would hinder trademark searching.  That is, pre-filing clearance for determining whether a putative applicant is able to freely use and protect a proposed mark would be less certain because a problematic trademark application could be missed during its “blackout” period and might later become public after the applicant files the new application based upon incomplete search results.

That would be a problem, but patent practitioners have been dealing with a similar problem for years.  This is because there is an analogue to my trademark proposal in patent law.  A U.S. patent application typically publishes 18 months after its initial filing date.

As any IP practitioner will tell you, the only certainty in IP practice is uncertainty.  Lawyers and their clients have to make decisions and execute on incomplete information all the time.  In my view, this is not a substantial drawback and the merits of this proposal outweigh its downsides.

The period of confidentiality in patent procedure is thought to be necessary because patent applications provide detailed disclosures of cutting edge technology, which may be of enhanced value to applicants when kept secret for a while.

It’s time to recognize that many brands are also of great value, and brand owners would benefit from a period of secrecy.  It’s time to bring trademark procedure in line with patent procedure to provide confidentiality for brand owners.

Hybrid Vehicle Litigation Report: Paice’s Patent Progress

April 6th, 2017 by Eric Lane No comments »

l_paice

With its seminal patents and continual patent enforcement activity, hybrid vehicle technology company Paice has been a frequent subject of discussion in this space.  In fact, my first post almost ten years ago was about the company’s litigation with Toyota.

There have been a few recent developments to report.

First, in January Paice announced that it had settled its patent litigation with Volkswagen, Audi, and Porsche.  The terms of the settlement agreement are confidential, though Paice said it resolved all legal issues.  Paice had filed an infringement complaint against the German automakers in the U.S. International Trade Commission (ITC) in April 2016.

After that, Paice turned its attention back to Ford, filing a complaint against the American car manufacturer in the ITC in February.

The ITC complaint asserts that Ford’s hybrid vehicles infringe the following patents:

U.S. Patent No. 7,104,347, entitled “Hybrid vehicles” (‘347 Patent)

U.S. Patent No. 7,237,634, entitled “Hybrid vehicles”

U.S. Patent No. 7,455,134, entitled “Hybrid vehicles”

U.S. Patent No. 7,559,388, entitled “Hybrid vehicles” (‘388 Patent)

U.S. Patent No. 8,214,097, entitled “Hybrid vehicles”

The patents are directed to a hybrid electric vehicle controller and related methods for coordinating the operation of the electric motor and gasoline engine of a hybrid vehicle to maximize performance, fuel economy, and emissions efficiency.

Paice alleges that Ford’s hybrid vehicle powertrains and components in the Fusion Hybrid, Fusion Plug-in Hybrid, and Lincoln MKZ Hybrid infringe one or more claims of each of the patents.

Paice and Ford have been involved in hybrid vehicle patent litigation in the past (see, e.g., a prior post here), and Ford has fought back on various fronts, including challenging the ‘347 Patent and the ‘388 Patent in inter partes review (IPR) proceedings in the U.S. Patent and Trademark Office (USPTO).

After the USPTO’s Patent Trial and Appeal Board (PTAB or Board) invalidated several claims of each patent in separate decisions, Paice appealed those decisions.

Last month, Paice suffered two setbacks when the Court of Appeals for the Federal Circuit affirmed the PTAB’s IPR decisions on both the ‘347 Patent and the ‘388 Patent (347 Patent Opinion; 388 Patent Opinion).

In each case, the Federal Circuit rejected nearly all of Paice’s arguments regarding interpretation of certain key claim terms, disclosure of the prior art, and obviousness determinations, finding substantial evidence supported the Board’s findings and there was no error in its conclusions.  For the ‘388 Patent, however, the Federal Circuit reversed as to claim 3, finding the dependent claim did not need to fall with the independent claims.

Clean Tech in Court: Green Patent Complaint Update

March 29th, 2017 by Eric Lane No comments »

Several new green patent complaints were filed in January and February in the areas of advanced batteries, waste-to-energy feedstocks, energy-efficient exercise equipment, and LEDs.

 

Advanced Batteries

Advanced Electrolyte Technologies LLC et al. v. ESDI LLC et al.

Advanced Electrolyte Technologies (AET) sued ESDI and several divisions of Samsung in a complaint filed January 18, 2017 in federal court in Austin, Texas.

AET alleges that the defendants infringe U.S. Patent No. 6,033,809 (‘809 Patent) and U.S. Patent No. 6,927,001 (‘001 Patent), which relate to electrolytes for lithium-ion batteries.

The ‘809 Patent is entitled “Lithium secondary battery and electrolyte thereof” and directed to non-aqueous electrolyte lithium secondary battery comprising a cathode, an anode and a non-aqueous electrolyte comprising an electrolyte dissolved in a non-aqueous solvent, wherein the solvent contains a cyclic carbonate, a linear carbonate, and a sultone derivative.

Entitled “Non-aqueous electrolyte solution and lithium secondary battery,” the ‘001 Patent is directed to non-aqueous electrolytic solution composed of two or more organic compounds dissolved in a solvent composed of a cyclic carbonate and a chain carbonate in which both of the organic compounds have a reduction potential higher than those of the cyclic and chain carbonates, and in which one of the organic compounds has a reduction potential equal to that of another organic compound or has a reduction potential lower or higher than that of another organic compound.

The complaint contains a long list of accused products including batteries used in the Samsung Chromebook 3 and 7 Spin, as well as batteries used in several Samsung Galaxy devices.

 

Somaltus LLC v. Cummins, Inc. et al.

Somaltus LLC v. Honeywell International, Inc.

Somaltus LLC v. Minn Kota, Inc.

Somaltus LLC v. Pro Charging Systems, LLC

Somaltus, a non-practicing entity, filed four new lawsuits on January 12, 2017, all federal court in Marshall, Texas, against Cummins (Somaltus v. Cummins), Honeywell (Somaltus v. Honeywell), Minn Kota (Somaltus v. Minn Kota), and Pro Charging Systems (Somaltus v. Pro Charging Systems).

Each suit asserts U.S. Patent No. 7,657,386, entitled “Integrated battery service system (‘386 Patent).

The ‘386 Patent is  directed to an integrated battery service system that performs a plurality of services related to a battery, such as battery testing, battery charging, and the like. In addition, the integrated service system provides services to devices/components that are coupled to the battery, such as starters, alternators, etc.

The accused products are the Cummins Energy Command (EC-30) power generation system, Honeywell’s 2.1 Amp Dual USB AC Charging Adapter, the 2.1 Amp Single USB AC Charging Adapter, and the Ovale 4.2 Amp Smart Charging Station, the Minn Kota Digital Onboard Charger, and the Pro Charging Systems Dual Pro Eagle Chargers.

 

Waste-to-energy Feedstocks

Accordant Energy, LLC v. Vexor Technology, Inc. et al.

In this lawsuit Accordant Energy accuses Vexor of infringing two patents relating to engineered feedstocks.

The patents are U.S. Patent Nos. 9,062,268 and 9,523,051, each entitled “Engineered fuel feed stock” and directed to feed stocks for use as gasification and combustion fuels and methods of making the feed stocks.  Components derived from processed MSW waste streams are used to make the feed stocks, which are substantially free of glass, metals, grit and noncombustibles.

Filed February 28, 2017 in U.S. District Court for the Northern District of Ohio, the complaint names Vexor Engineered Fuel as the accused product.

Energy-Efficient Exercise Equipment

Green Fitness Equipment Co. v. Precor Inc.

It’s not every day you see patent litigation involving green exercising technology, but this one is about exactly that.

In a complaint filed February 8, 2017 in U.S. District Court for the Southern Distric of California, Green Fitness alleges that Precor has incorporated its patented invention into its EFC Elliptical Cross-trainer products that include Active Status Light technology.

The patent-in-suit is U.S. Patent No. 8,884,553, entitled “Current monitor for indicating a condition of attached electrical apparatus” (‘553 Patent).

The ‘553 Patent is directed to a current monitor that indicates a condition of attached electrical equipment.  The current monitor can determine a predetermined range in which current being withdrawn by the attached electrical apparatus lies.  Based on the determined range, corresponding display electronic elements, such as light emitting diodes (LEDs), can be activated.

The commercial embodiment of Green Fitness’s patented invention is its Treadmill Saver product.

LEDs

Metrospec Technology LLC v. Hubbell Lighting, Inc.

This lawsuit was filed February 3, 2017 in U.S. District Court for the District of Minnesota.  The complaint asserts three patents relating to high intensity flexible light circuits.

The patents are U.S. Patent Nos. 8,143,631, 8,525,193 and 9,341,355, each entitled “Layered structure for use with high power light emitting diode systems.”

The asserted patents are directed to a layered structure comprising an electrically insulating intermediate layer interconnecting a top layer and a bottom layer.  The top layer, the intermediate layer, and the bottom layer form an at least semi-flexible elongate member which is bendable laterally to a radius of at least 6 inches, twistable relative to its longitudinal axis up to 10 degrees per inch, and bendable to conform to localized heat sink surface flatness variations having a radius of at least 1 inch.

Metrospec alleges that the NorFlex product offered by Hubbell’s Thomas Research Products division infringes the patents.

Unity Opto Technology Co. v. Cree, Inc.

Unity Opto Technology Co. v. Cree, Inc.

Unity Opto Technology (UOT) sued Cree twice in January, seeking a declaratory judgement that Cree’s U.S. Patent Nos. 8,596,819 (‘819 Patent), 8,628,214 (‘214) Patent),  8,998,444 (‘444 Patent) and 9,052,067 (‘067 Patent) are invalid and that UOT does not infringe the ‘067 Patent.

The ‘819 and ‘214 Patents are entitled “Lighting device and method of lighting” and directed to a lighting device which emits light with an efficacy of at least 60 lumens per watt, and up to at least 300 lumens in some embodiments, where the output light has a CRI Ra of at least 90.  The lighting device comprises at least one solid state light emitter, e.g., one or more light emitting diodes, and optionally further includes one or more lumiphor.

The ‘444 Patent is entitled “Solid state lighting devices including light mixtures” and directed to a solid state lighting apparatus including at least a first LED and a second LED.  The first LED emits light in the blue portion of the visible spectrum and red light in response to the blue light. The second LED emits light having a color point that is above the planckian locus of a 1931 CIE Chromaticity diagram, and in particular may have a yellow green, greenish yellow or green hue.

Entitled “LED lamp with high color rendering index,” the ‘067 Patent is directed to an LED lamp that can emit light with a color rendering index (CRI) of at least 90 without remote wavelength conversion.

The first complaint was filed January 3, 2017 in U.S. District Court for the Central District of California.  The second complaint was filed January 6, 2017 in the same court.

Solar Mounting Systems

Rillito River Solar, LLC v. Bamboo Industries LLC

In a lawsuit filed January 26, 2017 in U.S. District Court for the Eastern District of California, Rillito sued Bamboo Industries LLC dba SolarHooks for alleged infringement of three patents relating to solar mounting systems.

The complaint lists SolarHooks’ Composition Flashing Kit as the accused product.

The patents-in-suit are U.S. Patent Nos. 8,153,700 (‘700 Patent), 9,134,044 (‘044 Patent) and 9,447,988 (‘988 Patent).

Entitled “Roofing system and method,” the ‘700 Patent is directed to a roof mounting system which includes a roof substrate and flashing supportable on the substrate and an outwardly extending projection having a concave interior side and an aperture extending through the projection between top and bottom surfaces of the flashing. A seal is provided that is conformable with the concave interior side and can define a seal aperture substantially aligned with the flashing aperture.

The ‘044 and ‘988 Patents are entitled “Roof mount assembly” and directed to a mount assembly which includes a flashing including an aperture, a bracket including a first portion and a second portion, the first portion having an opening and a countersink extending around the opening, the second portion extending at an angle away from the flashing, the second portion including a slot configured to be coupled to the structure, a fastener, and a seal extending around the aperture and positioned between the flashing and the first portion of the bracket, the seal engaging the countersink of the bracket and being compressed against the flashing.

Are Trump’s Trademarks Impeachable Intellectual Property?

March 16th, 2017 by Eric Lane No comments »

Followers of this blog may have recognized through the years an implicit belief in a connection between the sometimes intricate rules of intellectual property and larger, high-level issues, principally climate change, but also business, competition, and innovation.

Indeed, I do believe that IP has an impact on those important issues and in those areas of human endeavor, otherwise why would I be blogging in this space?

One thing I never imagined, though, is that IP could potentially have implications for the fate of a head of state, particularly an American president.

Recent news reports (e.g., here, here and here) raise the fascinating prospect that Trump’s trademark filings in other countries (e.g., China, Russia) could be a basis for impeachment.

There are two theories of the case.  Each is rooted in the Emoluments Clause of the U.S. Constitution, which prohibits federal officials, including the president, from accepting anything of value from foreign governments unless explicitly approved by Congress.

First, the quid pro quo theory:

For a specific Trump trademark application or group of applications approved by another nation’s intellectual property office, one might ask whether that nation’s government was promised something in return, is obtaining something in return, or hopes to obtain something in return or otherwise influence the American president.

In February, the Chinese Trademark Office registered an important Trump trademark.  Diane Feinstein, a U.S. Senator from California, questioned the timing of the registration, noting that it came days after Trump reaffirmed the U.S. “One China” policy on a phone call with his Chinese counterpart.  This was a reversal by Trump after questioning the United States’ commitment to the policy during his election campaign.

At issue is Chinese Trademark Registration No. 14831415, registered February 14, 2017 for the TRUMP mark for various construction services.  According to its records history, the application was filed back in 2014, was initially accepted in March 2015, and then refused registration less than a month later.

The application was ultimately approved and published for opposition November 13, 2016, days after Trump won the U.S. presidential election, and then proceeded to registration.

Second, the valuable brand theory:

The second theory rests on the simple fact that Trump profits from his brands.  Arguably, then, when an intellectual property office – an agency of another nation’s government – grants Trump protection for his trademarks, that action constitutes something of value from that government.

Taking this broader view, as reported by recent articles in The New York Times and The Washington Post, it is relevant that the Chinese Trademark Office also approved and published for opposition 38 other trademark applications containing the term “TRUMP” on February 27 and March 6, 2017.

As pointed out by a trademark lawyer from the Sheppard Mullin law firm quoted in the Post piece, the timing of the approvals is not particularly suspicious.  These approved applications were filed in April 2016.  Under a recent revision to Chinese trademark law, the Chinese Trademark Office is supposed to complete examination of an application within nine months of its filing date.

It also should be noted that seven TRUMP applications filed around the same time were not initially approved.

Under the valuable brand theory, though, timing is less significant.  So long as decisions approving trademarks and actions registering them are taken by another nation while Trump is in office, there is potential value flowing from that nation to the American president.  And according to a recent AP story, Trump currently has 49 trademark applications pending in China.

This author admittedly lacks the constitutional law background to render any opinion on the the viability of either theory, so I will leave it to others with the requisite expertise to weigh in on whether Trump’s trademarks might constitute impeachable intellectual property.

Hmm . . . a Few Bars: Tesla Changes its Tune on Model 3 Trademark

March 8th, 2017 by Eric Lane No comments »

About a year ago, Tesla filed two new trademark applications in the U.S. Patent and Trademark Office (USPTO) – Application Serial Nos. 86/960,133 and 86/960,138 – the first for its three bars design and the second for the mark MODEL 3 with three bars:

 


Last month, Adidas filed an opposition proceeding in the USPTO opposing registration of the two applications.  The problem was that Tesla’s trademark applications were not for electric vehicles, but for clothing.

In its Notice of Opposition, Adidas argued that it would be damaged if Tesla were to obtain these registrations because consumers would be confused by the similar trademarks used on related products and such use would dilute the distinctiveness of Adidas 3-bar brand:

Tesla decided not to fight, instead withdrawing its trademark applications, which led the USPTO Trademark Trial and Appeal Board to declare Adidas the victor.

According to a few recent articles (e.g., on engadget and GeekWire), Tesla has changed its logo from three bars to the number 3.

From a quick scan of the federal trademark records, it doesn’t look like Tesla has filed any new trademark applications since giving up on the bars.  However, the automaker has a pending application for MODEL 3 for clothing – Application Serial No. 86/301,896 – filed back in 2014.

Should the USPTO Delay Publication of Trademark Applications? (Part 1)

March 1st, 2017 by Eric Lane No comments »

A while back, I published a couple of posts (here and here) about Chevrolet’s trademark applications for BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523).  The automaker had previously filed trademark applications for the same marks in Brazil, and the U.S. applications claimed priority to the Brazilian ones.

At the time, there was much speculation in the blogosphere about Chevy’s intentions:  was the company really planning a new vehicle called the BOLT or was it trying to preclude others from using the name?

Given that question, my posts focused on the use requirement for registration of most U.S. trademarks and explained that, for a U.S. trademark application claiming priority to an application filed in another country, the applicant can obtain a U.S. registration based on registration of the priority application in that country.

This is an exception to the general rule that the applicant must use the mark in the U.S. for the goods and/or services listed in the application to get a registration and must prove such use by submitting a specimen showing such use.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least for the purpose of obtaining a U.S. trademark registration.  I concluded, therefore, that perhaps Chevy’s motivation was to skirt the use requirement in the United States.

That explanation probably was wrong because, as it turned out, Chevy did unveil a concept car call the BOLT at the Detroit Auto Show in January 2015 and indicated it would start production in 2017.

Nevertheless, that might have been the end of the matter for me if I hadn’t caught another notable news item from around the same time about the intricacies of trademark filing.

As reported by the Wall Street Journal’s law blog and the Trinidad Express, among others, before filing its U.S. trademark application for APPLE WATCH Apple filed an application for the mark in the Caribbean twin island nation of Trinidad and Tobago.

As technology reporters, bloggers, and consumers wondered what Apple would call its new smartwatch, the company had already taken the critical step in securing its trademark rights to the name several months before launching the product.  And it did so way off the radar so as to keep it under wraps.

This is because, unlike patent applications, U.S. trademark applications are immediately publicly available after filing (it may take a day or two for processing, but there is no publication delay in the system).

So while those tech observers certainly thought to search the U.S. trademark application records to glean Apple’s branding intentions, it would have occurred to no one to attempt a review of Trinidad and Tobago trademark filings.

Within six months, Apple filed at least one U.S. application for APPLE WATCH claiming priority to the Trinidad and Tobago application (Application No 86389945).

Since the Chevrolet Bolt posts and the Apple Watch news, my mind has drifted back these trademark filing curiosities many times.

For some reason, they bother me, and I find myself posing this question:  why should a U.S. trademark applicant that wants to take that crucial first step of securing its rights with a trademark filing while maintaining control of a new brand launch have to file an application in an intellectual property office in some obscure corner of the planet?

My idea, which has been percolating for a while, is this:  perhaps there should be a delay in initial publication of new trademark applications, a brief “blackout” period to maintain applicants’ confidentiality.  I’ll explain this proposal in detail in Part 2 of this post.

Battery Conference to Offer a Full Day Battery IP Workshop

February 22nd, 2017 by Eric Lane No comments »

The 2017 National Battery (“NAAtBatt”) Annual Meeting and Conference, being held March 14-16 in Litchfield Park, Arizona, will include a full day session (“the first workshop its kind”) devoted to IP issues in advanced batteries.

The Workshop on Intellectual Property Issues in Advanced Battery Technology will cover several topics, including establishing an IP culture at advanced battery companies, patent prosecution in energy storage, licensing battery IP, patent pools and aggregators, advanced battery patent litigation, and big data in advanced battery IP.

The panelists include IP professionals from advanced battery technology companies as well as representatives from the U.S. Department of Energy Office of Technology Transfer, ARPA-E, several national laboratories, the U.S. Patent and Trademark Office, and the European Patent Office.

The workshop web page notes that “[t]he advanced battery industry relies heavily on intellectual property rights” and:

The ability of innovators to protect and monetize their discoveries through intellectual property rights is essential for moving innovations from the laboratory into commerce.

The workshop will run for one day, Tuesday, March 14, concurrently with the first half day of the NAATBatt conference.  CLE credit is available for attorneys.

Attendees may register for the workshop only or for the entire conference.  Registration information can be found here.

Clean Tech in Court: Green Patent Complaint Update

February 13th, 2017 by Eric Lane No comments »

LED technology continues to dominate green patent litigation, with at least 18 new lawsuits filed in November and December of 2016.  Solar mounting systems and waste management each saw one new lawsuit during this period.

 

LEDs

OptoLum, Inc. v. Cree, Inc.

Filed November 3, 2016 in federal court in Phoenix, Arizona, OptoLum’s complaint asserts three patents against Cree.

The patents-in-suit are U.S. Patent Nos. 6,573,536, 6,831,303 and 7,242,028, each entitled “Light emitting diode light source.”  They relate to early (their priority date is May 2002) LED technology designed to provide sufficient light output to be used as a general lighting source rather than a signaling source.

The patents are directed to LEDs that emit white light.  The diodes are mounted on an elongate member which is thermally conductive and is utilized to cool the diodes.

The accused products are Cree LED bulbs from 2013 and 2014 that are replacements for 60W and 100W incandescents.

Analog Integrations Corporation v. MagnaChip Semiconductor Corporation

In this lawsuit, Analog Integrations sued MagnaChip for alleged infringement of U.S. Patent No. 8,339,049, entitled “LED driving circuit having a large operational range in voltage” (‘049 Patent).

The ‘049 Patent is directed to an LED driving circuit including a current selecting circuit that controls the current transmission path in a plurality of LEDs according to respective threshold voltages of corresponding LEDs and a plurality of current limits.

Filed November 6, 2016 in U.S. District Court for the Southern District of New York, the complaint accuses MagnaChip’s driving circuit Product Model No. MAP9000 of infringing the ‘049 Patent.

The Regents of the University of California v. Zlight Technology LLC

The University of California has sued Zlight Technology in a case involving transparent LED technology to enable LED filament-style light bulbs.

UC alleges infringement of U.S. Patent No. 7,781,789, entitled “Transparent mirrorless light emitting diode” (‘789 Patent).

The ‘789 Patent is directed to an (Al, Ga, In)N LED in which multi-directional light can be extracted from one or more surfaces of the LED before entering a shaped optical element and subsequently being extracted to air.  The optical element is molded into a sphere or inverted cone shape, wherein most of the light entering the inverted cone shape lies within a critical angle and is extracted.

The invention also minimizes internal reflections within the LED by eliminating mirrors and/or mirrored surfaces, in order to minimize re-absorption of the LED’s light by the emitting layer (or the active layer) of the LED.

Filed November 7, 2016 in U.S. District Court for the Central District of California, the complaint lists a host of Zlight LED filament products alleged to infringe the ‘789 Patent.

Cree, Inc. v. E. Mishan & Sons, Inc.

Cree, Inc. v. Maxbrite LED Lighting Technology, LLC

Cree has asserted five utility patents and one design patent against E. Mishan & Sons in a lawsuit filed November 11, 2016 in U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 7,808,013, entitled “Integrated heat spreaders for light emitting devices (LEDs)

U.S. Patent No. 7,858,998, entitled “Semiconductor light emitting devices including flexible silicone film having a lens therein

U.S. Patent No. 8,167,463, entitled “Power surface mount light emitting die package”

U.S. Patent No. 8,622,582, entitled “Power surface mount light emitting die package”

U.S. Patent No. 9,070,850, entitled “Light emitting diode package and method for fabricating same”

U.S. Patent No. D615,504, entitled “Emitter package”

The accused products include flashlights such as the TACLIGHT tactical flashlight product.

The lawsuit against Maxbrite was filed November 18, 2016 in federal court in Oakland, California for both patent and trademark infringement.  For some reason, I haven’t been able to track down the complaint, but it appears to be, at least in part, a counterfeiting case (see LED Inside article here).

Tseng v. BBC International LLC et al.

On December 25, 2016, Shen Ko Tseng, an individual, filed this complaint in federal court in San Francisco against BBC International, Concept Technology, and Terry Electronics alleging infringement of an LED circuit patent.

The asserted patents are U.S. Patent Nos. 7,452,106, and 7,405,674, each entitled “Circuit device for controlling a plurality of light-emitting devices in a sequence” and directed to a circuit device for controlling light-emitting devices disposed in a sequence including a motion activated switch.  The controller is capable of driving the light-emitting diodes lighting up on the basis of a first predefined sequence and a consequent second predefined sequence when triggered by a motion-actuated switch.

The accused products are Batman, Thomas, Peanuts, and Spiderman branded LED illuminated shoes.

 

Blackbird Tech LLC v. Feit Electrical Company, Inc.

Blackbird Tech LLC v. Home Depot U.S.A., Inc.

Blackbird Tech LLC v. Hyperikon, Inc.

Blackbird Tech LLC v. Sunco Lighting, Inc.

Blackbird Tech LLC v. Letianlighting, Inc.

Blackbird Tech LLC v. Halco Lighting Technologies, LLC

Blackbird Tech LLC v. CleanLife Energy LLC

Blackbird Tech LLC v. Evergreen LED, LLC

Blackbird Tech initiated several new lawsuits in the last two months of the year.  The first, against Letianlighting, was filed November 9, 2016 in U.S. District Court for the District of Delaware.

The complaint asserts U.S. Patent No. 7,086,747, entitled “Low-voltage apparatus for satisfying after-hours light requirements, emergency light requirements, and low light requirements” (‘747 Patent).

The ‘747 Patent is directed to an energy efficient lighting apparatus wherein the circuit board is positioned adjacent the ballast cover so that the plurality of light-emitting diodes protrude through the plurality of ballast cover holes in the ballast cover, the lighting apparatus is coupled to a wall switch, and the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

The other seven complaints were filed December 8 and December 28, 2016, also in Delaware.  The patent in those suits is U.S. Patent No. 7,114,834 (‘834 Patent).  Entitled “LED lighting apparatus,” the ‘834 Patent is directed to a light comprising a housing, a plurality of LED lights coupled in an array inside of the housing, and a reflective protrusion for reflecting light from the LED lights out of the housing.

The LED array receives a consistent flow of DC current that will not result in the LED lights burning out. To prevent the LED array from burning out there is also a current regulator for controlling a current flowing through this LED array.

The accused product in the Feit complaint (Blackbird Tech LLC v. Feit Electrical Company, Inc.) is the 60 Watt Equivalent Dimmable G25 Bulb; the Home Depot complaint (Blackbird Tech LLC v. Home Depot U.S.A., Inc.) lists the Ecosmart 60W LED Replacement bulbs and the Hampton Bay LED Low Voltage 20W Equivalent Spotlight; the accused product in the Hyperikon complaint (Blackbird Tech LLC v. Hyperikon, Inc.) is the Daylight Glow Par 16 bulb, and the Sunco complaint (Blackbird Tech LLC v. Sunco Lighting, Inc.) lists the 6 Watt Pure Efficiency Spot Light.

The accused products listed in the Evergreen complaint (Blackbird Tech v. Evergreen) are the Yigeda Solid State Lighting Chandelier bulbs.  The Cleanlife Energy complaint (Blackbird Tech v. Cleanlife Energy) lists the CleanLife 7W LED MR16 Spot Light, and the Halco complaint (Blackbird Tech v. Halco Lighting Technologies) lists the Halco Solid State Lighting Chandelier bulbs.

 

Lighting Science Group Corporation v. Halco Lighting Technologies

Halco was also sued by LSG for allegedly infringing three patents whose commercial embodiment is LSG’s GLIMPSE lighting family of products.

The lawsuit asserts the following three patents: U.S. Patent No. 8,201,968 (‘968 Patent), U.S. Patent No. 8,967,844 (‘844 Patent), and U.S. Patent No. 8,672,518 (‘518 Patent).

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.  The ‘518 Patent and the’ 844 Patent are entitled “Low profile light and accessory kit for the same” and relate to LSG’s disc light LED devices.

The complaint was filed in federal court in Orlando, Florida on December 21, 2016.

 

Nichia Corporation v. Feit Electric Company, Inc.

Nichia Corporation v. Lowe’s Home Centers, LLC et al.

Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.

Nichia Corporation v. Vizio, Inc.

Nichia filed four lawsuits in federal court in Marshall, Texas on December 27, 2016, each asserting U.S. Patent No. 9,490,411 (‘411 Patent) (Nichia Corporation v. Feit Electric Company, Inc.; Nichia Corporation v. Lowe’s Home Centers, LLC et al.Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.Nichia Corporation v. Vizio, Inc.).

The ‘411 Patent is entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body” and directed to an LED manufacturing method in which a resin part and a lead are formed in a substantially same plane in an outer side surface, including sandwiching a lead frame provided with a notch part, transfer-molding a thermosetting resin containing a light reflecting material in a mold to form a resin-molded body in the lead frame, and cutting the resin-molded body and the lead frame along the notch part.

The accused Feit products include the Feit Electric 800 Lumen 3000K Dimmable LED, the LED Shop Light, the Dimmable Warm White LED Bulb, and the 40 W Equivalent Soft White Smart LED Bulb.

The accused Lowe’s products include the Utilitech 75 W Equivalent Par38 Warm White LED Flood Light Bulb, the 65 W Equivalent Dimmable Daylight LED Flood Light Bulb, and the 65 W Eqivalent Dimmable Soft White LED Flood Light Bulb.

The accused TCL and Vizio products are certain LED televisions.

 

Solar Mounting Systems

Rillito River Solar, LLC v. IronRidge Inc.

Rillito River Solar (dba EcoFastenSolar) sued IronRidge December 1, 2016 in the U.S. District Court for the District of Arizona.

The complaint alleges that IronRidge’s FlashFoot2 roof mounting system infringes U.S. Patent No. 6,526,701 (‘701 Patent).

Entitled “Roof mount,” the ‘701 Patent is directed to a roof mount including a base member, an attachment mount, and a spacer extending the base member to a roof surface. The base member has a protrusion, and the attachment mount defines a hollowed region for receiving the protrusion to form a compression fitting.  A substantially leak proof assembly is formed when the attachment mount is placed against the base member with a sealing material therebetween.

 

Waste Management

Pannell Manufacturing Corp. v. Smoker et al.

Pannell sued two individuals, Phillips Mushroom Farms, and E&H Conveyors for alleged infringement of three patents relating to mushroom composting.

The patents-in-suit are U.S. Patent Nos. 8,069,608, 8,205,379 and 8,561,344.  They are entitled “Mushroom compost compacting system and method” and are directed to systems and methods for compacting mushroom compost using a roller assembly mounted to a compost receptacle to form a nip, along with a web or conveyor to convey mushroom compost to and through the nip.  Mushroom compost is compacted to a particular height that can be adjusted by the user by adjusting the space between the roller and compost receptacle.

The complaint was filed December 2, 2016 in U.S. District Court for the Eastern District of Pennsylvania.