Board Rules Wind Turbine Design Cannot Be a Trademark

September 22nd, 2017 by Eric Lane No comments »

In an interesting case at the intersection of patent and trademark law, as well as that of functionality and branding, Change Wind Corporation (Change) has lost its bid to register its turbine design as a federal trademark.

Change filed U.S. Trademark Application No. 86046590 (‘590 Application) in August of 2013 seeking registration of the following design mark for wind turbines and wind-powered electricity generators:

The application described the design as consisting of “four vertically extending turbine blades . . . obliquely curved in a twisting manner” and extending above and blow the “truncated cone” of a tapered “cylindrical base.”

The Trademark Examining Attorney refused registration under Section 2(e)(5) of the Trademark Act, which prohibits registration of a mark that is functional.

Change appealed the refusal of the applied-for design and, in a recent decision, the Trademark Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office affirmed.

Prevailing case law holds that a product design or feature is functional if it is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.”

There are four categories of evidence the courts use to determine whether a design is functional.  Those include evidence of a utility patent disclosing utilitarian advantages of the design, advertising materials touting the design’s utilitarian advantages, the availability to competitors of functionally equivalent designs, and facts indicating the design results in simpler or cheaper manufacturing.

The most damaging evidence for Change was its U.S. Patent No. 9,103,321 (‘321 Patent), which not only showed the applied-for design in the patent drawings, but also recited features of the design in its claims.  Here’s FIG. 1A (almost identical to the design in the trademark application):

Here’s an excerpt from claim 1 of the ‘321 Patent:

A wind turbine comprising:

a frame structure;

a housing enclosing said frame structure;

a rotary, wing assembly supported by said frame structure, said rotary wing assembly including rotating eccentric cams and including asymmetric, helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly;

It clearly recites the curved blades / helical swept wings and their function.  Thus, the Board found that the ‘321 Patent showed that the applied-for design features are functional:

The patent thus plainly discloses the functional role of the three components disclosed and claimed in Applicant’s drawing of the mark: the conical tower, the helical wings, and the boundary fences affixed to the helical wings. These features are necessary elements of the invention and are essential to the functioning of Applicant’s wind turbine.

The Board went on to find the evidence of record on advertising to be inconclusive, and also found that the design alternatives were “merely variations of a single basic” turbine design.

The Board found that the evidence, viewed as a whole, establishes that the design was functional because it was essential to the use or purpose of the product.

One lesson is to choose either the patent or trademark route for a technological design and go with it; often it’s not feasible to do both.

August 18th, 2017 by Eric Lane No comments »

Green Patent Blog is on vacation.

 See you in the Fall.

Clean Tech in Court: Green Patent Complaint Update

August 1st, 2017 by Eric Lane No comments »

Several new green patent complaints were filed in May and June in the areas of advanced batteries, electroluminescence lighting technology, green cleaning solvents, and LEDs.

 

Advanced Batteries

Milwaukee Electric Tool Corp. et al. v. Chervon (HK) Ltd.

In this lawsuit Milwaukee Electric asserted infringement of three patents relating to lithium-ion battery powered cordless power tools.

The patents-in-suit are:

U.S. Patent No. 7,554,290, entitled “Lithium-based battery pack for a hand-held power tool”

U.S. Patent No. 7,944,173, entitled “Lithium-based battery pack for a high current draw, hand held power tool”

U.S. Patent No. 7,999,510, entitled “Lithium-based battery pack for a high current draw, hand held power tool”

The complaint was filed May 5, 2017 in U.S. District Court for the Eastern District of Wisconsin.  The accused products are Chervon’s Kobalt, Masterforce, Performax, and Craftsman branded tools.

 

Electroluminescence Lighting Technology

Shenzhen EL Lighting Technology Co. v. Midwest Trading Group, Inc.

Filed in U.S. District Court for the District of Colorado on May 5, 2017, Shenzhen’s complaint accuses Midwest Trading Group of infringing U.S. Patent No. 6,960,725 (‘725 Patent).

The ‘725 Patent is entitled “Electroluminescence (EL) tube and wire and manufacturing method” and directed to an electroluminescent wire core having a flexible central electrode, a luminescent layer and a transparent, conductive layer.  An outer surface of the central electrode is coated with the luminescent layer and the transparent, conductive layer, and the luminescent power is covered by thermoplastic macromolecular polymer and synthetic resin.

The accused products are the PowerXcel LIGHT-UP cables.

Green Cleaning Solvents

GreenEarth Cleaning, LLC v. Cameron Park Fresh Cleaners, Inc.

GreenEarth Cleaning, LLC v. Walrus Cleaners, Inc.

These actions for patent infringement, trademark infringement, and breach of contract were filed June 23 and June 26, 2017, respectively, in the U.S. District Court for the Western District of Missouri.

Although the complaints (GreenEarth Cleaning, L.L.C. v. Cameron Park Fresh Cleaners, Inc.GreenEarth Cleaning, L.L.C. v. Walrus Cleaners, Inc.)list nine patents, there is only one count of patent infringement asserting U.S. Patent No. 5,942,007 (‘007 Patent).

The ‘007 Patent is entitled “Dry cleaning method and solvent” and directed to dry cleaning methods comprising the steps of immersing clothes in a dry cleaning fluid including a cyclic siloxane composition, agitating the clothes in the composition, and then removing the cyclic siloxane composition by centrifugal action and air circulation.

According to the Abstract of the ‘007 Patent, the “cyclic-siloxane-based solvent allows the system to result in an environmentally friendly process which is, also, more effective in cleaning fabrics and the like than any known prior system.”

GreenEarth alleges that both defendants breached their respective license agreements with GreenEarth.

 

LEDs

Lighting Science Group Corporation v. Leedarson Lighting Co. et al.

Lighting Science Group sued Leedarson May 9, 2017 in federal court in Orlando for infringement of 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 alleges that defendant’s downlight luminaires, including the DL-N19A9ER1-27 and DL-N19A11FR1-27 families of products, infringe the asserted patents.

Nitride Semiconductors Co. v. Rayvio Corporation

In this lawsuit involving UV LED technology, Nitride accuses Rayvio of infringing U.S. Patent No. 6,861,270, entitled “Method for manufacturing gallium nitride compound semiconductor and light emitting element” (‘270 Patent).

The ‘270 Patent is directed to a method for manufacturing a GaN compound semiconductor which can improve light emitting efficiency even when dislocations are present. An n type AlGaN layer, a undoped AlGaN layer, and a p type AlGaN layer are laminated on a substrate to obtain a double hetero structure. When the undoped AlGaN layer is formed, droplets of Ga or Al are formed on the n type AlGaN layer.

The compositional ratio of Ga and Al in the undoped AlGaN layer varies due to the presence of the droplets, creating a spatial fluctuation in the band gap. Because of the spatial fluctuation in the band gap, the percentage of luminous recombinations of electrons and holes is increased.

The complaint was filed May 23, 2017 in U.S. District Court for the Northern District of California.  The accused products include Rayvio’s SB4 LED.

Document Security Systems, Inc. v. Cree, Inc.

Document Security Systems, Inc. v. Everlight Electronics Co. et al.

Document Security Systems (DSS) filed two lawsuits June 8, 2017 in U.S. District Court for the Central District of California asserting several LED patents.

The complaint against Cree (Document Security Systems, Inc. v. Cree, Inc.) lists as accused products, e.g., some of Cree’s XLamp ML products, CLM Series products, CLP Series products, and XLamp XB-D Family LED products.

The complaint against Everlight (Document Security Systems, Inc. v. Everlight Electronics Co., Ltd. et al) lists the PLCC Top View SMD LED, the 2214 package series, the 3020 package series, and several other products.

The combination of asserted patents varies by suit but comprise the following:

U.S. Patent No. 6,949,771, entitled “Light source”

U.S. Patent No. 7,256,486, entitled “Packing device for semiconductor die, semiconductor device incorporating same and method of making same”

U.S. Patent No. 7,279,355, entitled “Method for fabricating a packing device for semiconductor die and semiconductor device incorporating same”

U.S. Patent No. 7,524,087, entitled “Optional Device”

U.S. Patent No. 7,919,787, entitled “Semiconductor device with a light emitting semiconductor die”

 

Everlight Electronics Co. v. Bridgelux, Inc.

On the enforcement side, Everlight sued Bridgelux for patent infringement June 10, 2017 in federal court in San Francisco.

U.S. Patent Nos. 6,335,548 and 7,253,448 entitled “Semiconductor radiation emitter package” and directed to a semiconductor optical radiation package including a leadframe, a semiconductor optical radiation emitter, and an encapsulant.  The leadframe has a heat extraction member, which supports the semiconductor optical emitter and provides one or more thermal paths for removing heat.  The encapsulant covers and protects the emitter and optional wire bonds from damage and allows radiation to be emitted.

The complaint alleges that Bridgelux’s 2835 LED products infringe the patents.

 

Nanolumens Acquisition Inc. et al. v. Gable Signs & Graphics, Inc.

Nanolumens Acquisition Inc. et al. v. InfiLED USA, LLC

Nanolumens Acquisition Inc. et al. v. PixelFlex LLC

Nanolumens filed at least three infringement suits in June, each asserting three flexible LED display patents.

The patents are U.S. Patent No. 8,963,895, entitled “Ubiquitously mountable image display system,” relating to a ubiquitously mountable image display systems; U.S. Patent No. 9,159,707, entitled “Flexible display,” relating to a flexible display.  U.S. Patent No. 9,640,516, entitled Flexible display apparatus and method”,” relating to a flexible display apparatus and methods.

The complaint against Gable was filed June 9, 2017 in U.S. District Court for the District of Maryland; the complaint against InfiLED was filed June 9, 2017 in federal court in Atlanta; the complaint against Pixelflex was filed June 12, 2009 in federal court in Nashville.

Celgard Urges Supremes to Condemn Judgments Without Opinions

July 13th, 2017 by Eric Lane No comments »

Previous posts (e.g., herehere and here) discussed the patent enforcement activity of Celgard, a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries.

In these lawsuits, Celgard has asserted U.S. Patent No. 6,432,586 (’586 Patent).  The ’586 Patent is entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

A bunch of competitors challenged the ‘586 Patent in inter partes review (IPR) proceedings in the U.S. Patent and Trademark Office (USPTO).  After the Patent Trial and Appeal Board (PTAB) of the USPTO found claims 1-11 of the ‘586 patent invalid as obvious in the proceedings brought by LG Chem, Celgard appealed.

In a one-line per curiam order handed down in December last year, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.  The Federal Circuit denied Celgard’s subsequent petition for rehearing en banc.

Celgard has now appealed the case to the Supreme Court.  In its petition for certiorari, the company asks the Supremes to consider four questions.

First, are IPR proceedings unconstitutional?:

Whether inter partes review – an adversarial process used by the the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Second, are the Federal Circuit’s judgments without opinions improper?:

Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?

Third, and related to the second question, do the Federal Circuit’s judgments without opinions violate the principles of justice?:

Whether the Federal Circuit’s pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?

Fourth, Celgard challenges the PTAB’s obviousness ruling:

Whether the Patent Office’s consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court’s precedent in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

For more on the importance of the issues raised in this advanced battery case, see Patently-O’s post here.

For my part, I probably too frequently judge without opining.  Perhaps there’s a broader lesson for all of us here…

Economic Eco-marks: Certifying Green Bonds

June 29th, 2017 by Eric Lane No comments »

Green bonds are important because public initiatives such as the UN’s Green Climate Fund can provide only a small portion of the financing needed for climate-related projects.

Issued by municipalities and development banks, these bonds tie the proceeds of bond issues to environmentally friendly investments.

But which projects count as green, and how can investors be sure the investments are legitimate?

A recent article in the Economist about standards for green bonds notes that one option is a second opinion from an environmental consultancy or auditor like KPMG.

Certification is another option.  Here’s where eco-marks com in.  The Climate Bonds Initiative (CBI) offers certification of green bonds.

CBI owns certification mark Registration No. 4,682,352 (‘352 Registration) for CLIMATE BOND CERTIFIED (see the mark above) for:

Analyzing, evaluating and inspecting environmental projects associated with the issuance of financial bonds by governments and corporations to raise finance for investment in emission reduction, climate change adaptation or other climate change related solutions

The certification statement in the ‘352 Registration says the following:

The certification mark, as intended to be used by authorized persons, is intended to certify that a climate bond issuer had obtained full certification by the Climate Bond Standards Body following successful completion of a Climate Bonds Registration Application and having provided evidence that a full verification had been conducted by a Climate Bonds approved verification body.

According to the Economist piece, CBI estimates that 85% of green bonds issued in 2017 have undergone an external review.

Certification marks, and the processes that underlie them, perform critical verification functions and, in this case, reduce greenwashing.

Certification marks differ from ordinary trademarks and service marks in that, instead of indicating the commercial source of a product or service, they communicate that goods or services meet certain quality or manufacturing standards.  They are owned not by the individual businesses, but by the organizations that set the standards.

For further discussion of certification marks see my previous posts herehere, and here.

GPB Makes List of Top 100 IP Blogs, Coming in at No. 62 With a Bullet

June 15th, 2017 by Eric Lane No comments »

I’m very pleased to share that Green Patent Blog has been selected as one of the Top 100 Intellectual Property Blogs.

Compiled by Feedspot, the Top 100 were selected from thousands of IP blogs.  The list reflects rankings based on a number of criteria, including Google reputation and search ranking, social media influence and popularity, quality and consistency of posts, and review by Feedspot’s editorial team.

GPB came in at No. 62.  The perennial upper echelon of IP blogs includes IP Watchdog, Patently-O, IP Newsflash, and Law360’s Intellectual Property Blog.  Kudos to those champions!

Thanks to Feedspot for this honor.  It’s nice to get the recognition, but the true privilege of blogging comes when someone tells me my blog has served as a valuable tool for research and publication of new works on clean tech IP, and the real satisfaction is that of creating and publishing a well-crafted post on an original idea.

Clean Tech in Court: Green Patent Complaint Update

May 29th, 2017 by Eric Lane No comments »

There were many new green patent complaints filed in March and April in the areas of advanced batteries, fuel efficiency, green cleaning solvents, LEDs, smart grid, and solar power.

 

Advanced Batteries

Somaltus LLC v. Johnson Outdoors, Inc.

On March 14, 2017 Somaltus, a non-practicing entity, filed a patent infringement complaint against Johnson Outdoors in federal court in Marshall, Texas.

The lawsuit 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 Minn Kota Digital Onboard Chargers.

 

Fuel Efficiency

Transtex LLC et al. v. WABCO Holdings Inc.

In this lawsuit involving aerodynamic trailer skirts for improving the efficiency of truck trailers, Transtex has asserted eight patents against WABCO.

The patents are as follows:

U.S. Patent No. 7,748,772, entitled “Resilient aerodynamic trailer skirts “

U.S. Patent No. 7,887,120, entitled “Aerodynamic trailer skirts”

U.S. Patent No. 7,942,467, entitled “Aerodynamic skirt support member”

U.S. Patent No. 7,942,469, entitled “Aerodynamic skirt panel”

U.S. Patent No. 7,942,471, entitled “Aerodynamic skirt shape”

U.S. Patent No. 8,292,351, entitled “Resilient strut for aerodynamic skirt”

U.S. Patent No. 8,449,017, entitled “Aerodynamic skirt resilient member”

U.S. Patent No. 8,678,474, entitled “Self-repositioning aerodynamic skirt”

The accused products are the TrailerSkirt TS248 and TS259 flat panel trailer skirts.

 

Green Cleaning Solvents

GreenEarth Cleaning, LLC v. Natomas Fresh Cleaners, Inc.

This action for patent infringement, trademark infringement, and breach of contract was filed April 18, 2017 in the U.S. District Court for the Western District of Missouri.

Although the complaint lists nine patents, there is only one count of patent infringement asserting U.S. Patent No. 5,942,007 (‘007 Patent).

The ‘007 Patent is entitled “Dry cleaning method and solvent” and directed to dry cleaning methods comprising the steps of immersing clothes in a dry cleaning fluid including a cyclic siloxane composition, agitating the clothes in the composition, and then removing the cyclic siloxane composition by centrifugal action and air circulation.

According to the Abstract of the ‘007 Patent, the “cyclic-siloxane-based solvent allows the system to result in an environmentally friendly process which is, also, more effective in cleaning fabrics and the like than any known prior system.”

GreenEarth alleges that Natomas Fresh, which had a license from GreenEarth, continues to use liquid silicone as a dry cleaning solvent though it is no longer a licensee.

 

LEDs

Document Security Systems, Inc. v. Seoul Semiconductor Co. et al.

Document Security Systems, Inc. v. Everlight Electronics Co. et al.

Document Security Systems, Inc. v. Cree, Inc.

In three lawsuits filed April 13, 2017 in federal court in Marshall, Texas, Document Security Systems has sued Seoul Semiconductor (Document Security Systems, Inc. v. Seoul Semiconductor Co., Ltd. et al.), Everlight Electronics (Document Security Systems, Inc. v. Everlight Electronics Co., Ltd. et al.), and Cree (Document Security Systems, Inc. v. Cree, Inc.).

The combination of asserted patents varies by suit but comprise the following:

U.S. Patent No. 6,949,771, entitled “Light source”

U.S. Patent No. 7,256,486, entitled “Packing device for semiconductor die, semiconductor device incorporating same and method of making same”

U.S. Patent No. 7,279,355, entitled “Method for fabricating a packing device for semiconductor die and semiconductor device incorporating same”

U.S. Patent No. 7,524,087, entitled “Optional Device”

U.S. Patent No. 7,919,787, entitled “Semiconductor device with a light emitting semiconductor die”

The accused products include LED devices for the automotive market.

Epistar Corporation v. Lowe’s Companies, Inc.

Epistar sued Lowe’s for patent infringement on April 28, 2017 in U.S. District Court for the Central District of California.

The patents-in-suit are:

U.S. Patent No. 6,346,771, entitled “High power LED lamp”

U.S. Patent No. 7,560,738, entitled “Light-emitting diode array having an adhesive layer”

U.S. Patent No. 8,791,467, entitled “Light emitting diode and method of making the same”

U.S. Patent No. 8,492,780, entitled “Light-emitting device and manufacturing method thereof”

U.S. Patent No. 8,587,020, entitled “LED Lamps”

According to the complaint, the Kichler Lighting 60 W equivalent dimmable bulb, the Utilitech 60 W equivalent warm white bulb and similar products infringe the patents.

 

Golight, Inc. v. KH Industries, Inc. et al.

Filed March 1, 2017 in the U.S.District Court for the District of Colorado, Golight’s lawsuit asserts U.S. Patent No. 9,255,687, entitled “LED system and housing for use with halogen light fixtures” (‘687 Patent).

The complaint alleges that KH’s LED NightRay line of lighting products infringes the ‘687 Patent.

The ‘687 Patent is directed to an optical projection lens for mounting in front of LEDs.  The lens has a plurality of protrusions of varying thickness wherein the outermost edges of each protrusion has the thickest measurement, the center of each protrusion has the thinnest measurement, and the protrusions merge individual beams of light into a single beam of light.

 

Lemaire Illumination Technologies, LLC v. LG Electronics USA, Inc. et al.

Lemaire Illumination Technologies sued LG for alleged infringement of three patents relating to LED lighting technology.

The patents-in-suit are U.S. Patent Nos. 6,095,661 (‘661 Patent), 6,488,390 (‘390 Patent) and 9,119,266 (‘266 Patent).

The ‘661 Patent is entitled “Method and apparatus for an L.E.D. flashlight” and the ‘390 Patent is entitled “Color-adjusted camera light and method” and these related patents are directed to an LED flashlight including  a control circuit for maintaining a predetermined light output level of the LED units as a charge on a battery varies.

The ‘266 Patent is entitled “Pulsed L.E.D. illumination apparatus and method” and directed to an illumination source for a camera including one or more LEDs and a control circuit for driving the LEDs with electrical pulses at a frequency high enough that light produced has an appearance to a human user of being continuous rather than pulsed.

Filed in federal court in Marshall, Texas on April 14, 2017, the complaint lists the LG G3 and G4 smartphones as accused devices.

 

Philips Lighting North America Corporation et al. v. Deco Enterprises, Inc.

In a lawsuit filed April 12, 2017 in U.S. District Court for the District of Massachusetts, Philips asserted five patents related to LED drivers and circuits against Deco.

The patents-in-suit are:

U.S. Patent No. 6,094,014, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”

U.S. Patent No. 6,586,890, entitled “LED driver circuit with PWM output”

U.S. Patent No. 7,038,399, entitled “Methods and apparatus for providing power to lighting devices”

U.S. Patent No. 7,262,559, entitled “LEDS driver”

U.S. Patent No. 8,070,328, entitled “LED downlight”

The accused devices listed in the complaint include the Lucera series surface-mounted LED lighting fixtures.

 

Putco, Inc. v. Metra Electronics

This lawsuit involves LED headlight technology.  Putco alleges that Metra’s Heise Lighting Ssystems LED headlight replacement kits infringe U.S. Patent No. 9,243,796, entitled “LED lamp with a flexible heat sink” (‘796 Patent).

The ‘796 Patent is directed to an LED lamp with a flexible heat sink and a method of installing the lamp into a light fixture.

The complaint was filed March 10, 2017 in U.S. District Court for the Southern District of Iowa.

 

Blackbird Tech v. Civilight North America

Blackbird Tech v. Euri Lighting

Blackbird Tech v. Great Eagle Lighting

Blackbird Tech v. MSI Lighting

Blackbird Tech v. Satco Products

Blackbird Tech v. S.E.L.S.

Blackbird Tech initiated several new lawsuits April 19, 2017 in U.S. District Court for the District of Delaware.

The asserted patent in these 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 complaints can be found here: Blackbird Tech LLC v. Civilight North America Corp.Blackbird Tech LLC v. Euri LightingBlackbird Tech LLC v. Great Eagle Lighting CorporationBlackbird Tech LLC v. MSI Lighting, Inc.Blackbird Tech LLC v. S.E.L.S. USA, LLCBlackbird Tech LLC v. Satco Products, Inc..

 

Smart Grid

Clean Energy Management Solutions, LLC v. ABB Inc.

Clean Energy has asserted infringement of U.S. Patent No. 6,577,962 (‘962 Patent).  The complaint was filed March 1, 2017 in federal court in Marshall, Texas and names ABB as the sole defendant.

Entitled “System and method for forecasting energy usage load,” the ‘962 Patent is directed to systems and methods for forecasting energy usage load for a facility including a parameter identification module for determining periodic energy load usage of the facility and a load prediction module for generating energy usage load forecast profiles for the facility.  A set of matrices may include a matrix for storing coefficients for determining periodic changes in energy load usage, and a model parameter matrix for storing load parameter information.

The accused product is ABB’s Energy Management Software with Energy Management and Optimization Solution.

 

Solar Power

Allsop, Inc. v. Ambient Lighting, Inc.

Allsop sued Ambient for alleged infringement of U.S. Patent Nos. 8,657,461 and 8,192,044, both entitled “Solar-powered collapsible lighting apparatus” and directed to a solar-powered lighting apparatus having a light transmissible spherical shade coupled to a housing that receives a solar cell, a battery and at least a portion of a lighting element assembly.

The complaint was filed April 10, 2017 in federal court in Seattle.

The accused product are several models of Ambient’s collapsible lanterns, including the “Coastal Blues 12” solar lanterns.

Rillito River Solar LLC v. Ecolibrium Solar Inc.

Rillito River Solar sued Ecolibrium March 22, 2017 in the U.S. District Court for the District of Arizona.

The complaint alleges that Ecolibrium’s EcoX line of products infringe U.S. Patent No. 9,422,723, entitled “Roofing grommet forming a seal between a roof-mounted structure and a roof” (‘723 Patent).

The ‘723 Patent is directed to a roof mount assembly including a piece of flashing positioned on the substrate.  The flashing includes a first surface, a second surface opposite the first surface and an aperture extending through the flashing.  A fastener extends through the flashing aperture, a bracket is connected to the flashing via the fastener, and a water-tight seal is positioned between the flashing aperture and the fastener.

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.