Bruce Kania’s TedX Talk on Transition Water

March 3rd, 2015 by Eric Lane No comments »

In a previous post, I spoke with Bruce Kania of Floating Island International (FII) about the company’s floating island technology and patent portfolio.

FII’s floating islands help maintain the health of wetland ecosystems through a “concentrated” wetland effect, i.e., higher removal rates of nitrate, phosphate and ammonia as well as reduction of  total suspended solids and dissolved organic carbon in waterways.

You can hear Mr. Kania speak in a compelling TedX talk on Transition Water.  This summary of the talk explains the concept:

In our drive to provide food for a growing world population, we have invented then squandered billions of tons of artificial fertilizer, impairing most of our surface waters over the last 70 years.  By viewing this fertilizer as a resource, we can “transition” these water-borne nutrients back out through the food-web, while creating more abundance, more food, and transitioning water towards sustainability.

 

Gevo Gets Good GVR in Supreme Court Decision

February 24th, 2015 by Eric Lane No comments »

A previous post discussed one significant piece of the massive patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.  The most recent prior thread of this case – which resembles a yo-yo in its narrative – was an appellate court win for Butamax.

Initially, the district court ruled for Gevo, granting its motion for summary judgment of non-infringement under the doctrine of equivalents of two Butamax patents - U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent).  The district also denied both parties’ motions on literal infringement and reached split decisions on validity of the patents.

Butamax appealed, and the Court of Appeals for the Federal Circuit then vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

Gevo petitioned to the U.S. Supreme Court to hear the case, and in a single, swift decision known as a GVR, the Supremes granted the petition, vacated the Federal Circuit decision, and remanded for further proceedings.  Grant-Vacate-Remand, hence GVR (read a blurb on the decision and GVR at the Patently-O blog here).

The Federal Circuit must now reconsider this case in light of the Supreme Court’s recent Teva Pharmaceuticals decision, which raised the standard for appellate review of district court factual determinations in patent claim construction rulings.

Previously, the Court of Appeals for the Federal Circuit used a “de novo” standard, which meant it could take a fresh look at the evidence on claim construction and make its own determination, which led to a high reversal rate.  After Teva, the Federal Circuit can reverse only where it finds “clear error” in the district court’s consideration of the facts in a claim construction decision.

So the yo-yo, in this thread of the patent war at least, swings back to Gevo with Butamax’s victory wiped out for the moment (see Gevo’s patent PR on the GVR decision here).

Chevy Unveils Bolt; Planned Production Date Would Secure BOLT Trademark

February 17th, 2015 by Eric Lane No comments »

A previous post took a deep dive into two recently filed U.S. eco-mark applications filed by General Motors for the marks BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523 for “motor land vehicles, namely, automobiles”).

That post explained how GM could secure federal trademark registrations for these marks without ever actually using them in the United States.  The analysis provided support for some of the electric vehicle blogs, which speculated that GM might not actually intend to use the marks at all, but instead was merely using the trademark system to ward off competitors from using them.

We’ve been proven wrong.

At the Detroit Auto Show last month, GM unveiled the Chevrolet Bolt, an all-electric concept car coming to market in 2017.  The Bolt supposedly will have a 200-mile driving range (with a battery made by LG Chem), DC fast charging capability, and autonomous driving technology.  A recent GM Bolt article confirms production of the Bolt EV.

The 2017 planned production date probably impacted the timing of GM’s trademark application filings.

As discussed in my previous post, U.S. trademark applications filed on the basis of foreign filed applications, as the BOLT and CHEVROLET BOLT applications are (they are based on Brazilian trademark applications) can register in the U.S. by virtue of the foreign applications maturing to registration without the need to actually use the marks in the U.S.

However, without eventual use, typically within three years of the U.S. registration date, the U.S. registrations become vulnerable to cancellation for non-use of the marks.  So the owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot successfully enforce its trademark in a U.S. court.

The target production date of 2017 would put GM’s use of its BOLT and CHEVROLET BOLT trademarks comfortably within the three-year period after registration of its trademark applications.  So if GM sticks to its plans for the Chevy Bolt, it will have enforceable trademark rights after all.

Toyota Offers Limited Free Trial of Fuel Cell Vehicle Patents

February 10th, 2015 by Eric Lane No comments »

In the wake of Tesla’s move to make its entire patent portfolio available via a blog post / covenant not to sue, Toyota made big news recently with a similar though more limited green patent proclamation of its own.

The automaker announced that its patents related to hydrogen fuel cell technology would be available for use without any royalties.

Toyota’s press release provides a general overview of the number and nature of the patents on offer:

Toyota will invite royalty-free use of approximately 5,680 fuel cell related patents held globally, including critical technologies developed for the new Toyota Mirai.  The list includes approximately 1,970 patents related to fuel cell stacks, 290 associated with high-pressure hydrogen tanks, 3,350 related to fuel cell system software control and 70 patents related to hydrogen production and supply.

While there appear to be no restrictions on hydrogen production and supply technologies (“patents for hydrogen production and supply will remain open for an unlimited duration”), the fuel cell patents are subject to an important caveat:

Patents related to fuel cell vehicles will be available for royalty-free licenses until the end of 2020.

This is a significant limitation for putative car makers that might elect to manufacture fuel cell vehicles based on Toyota’s patented technologies.  They would get six years of free use, but come January 1, 2021 it seems these automakers would become licensees obligated to pay royalties to Toyota.

And it’s difficult, if not impossible, to determine in advance the amount of royalties that would be owed at that time.  The royalty figure presumably would be negotiated between Toyota and each licensee and would vary depending on a number of factors including how many and which patents cover the licensee’s vehicles and the territories in which the licensor is making and selling the vehicles.

Furthermore, the licensee would be in a terrible negotiating position because it would have already invested substantial resources in developing, manufacturing, and marketing the licensed vehicles and might now be facing a patent infringement lawsuit if it doesn’t reach a deal with Toyota.  With this leverage, Toyota might be able to impose a higher royalty rate than would otherwise be justified.

This uncertainty around the eventual royalty rate could make even a putative royalty-free (for now) licensee think twice about using the patented technologies on offer.  It might actually make more long-term economic and business sense for a car company to independently develop its own fuel cell vehicle technology than to pay royalties to Toyota for the life of the offered patents.

Of course, this concern doesn’t apply to potential licensees of Toyota’s patented hydrogen production and supply technologies, which are royalty-free in perpetuity, and thus truly constitute a Toyota Hydrogen-Patent Commons.

But with respect to the fuel cell vehicle patents, you might get a free trial now, but you’ll eventually have to pay the piper.

Clean Tech in Court: Green Patent Complaint Update

February 3rd, 2015 by Eric Lane No comments »

Several new green patent complaints were filed in late 2014 (late October, November, and December) in the areas of environmental remediation, LEDs, green dry cleaning solvents, and smart grid.

 

Environmental Remediation

Peroxychem LLC v. Innovative Environmental Technologies, Inc.

Peroxychem sued Innovative Environmental Technologies (IET) for patent infringement in the Eastern District of Pennsylvania.  Filed November 7, 2014, the complaint alleges that IET infringes U.S. Patent No. 7,785,038 (’038 Patent).

The ’038 Patent is entitled “Oxidation of organic compounds” and directed to methods and compositions for treating organic compounds present in soil and groundwater involving the use of a composition comprising a solid state, water soluble peroxygen compound and zero valent iron.

According to the complaint, IET’s activities at a site called Hexcel in Lodi, New Jersey infringe the ’038 Patent.

 

Neochloris, Inc. v. Emerson Process Management Power & Water Solutions, Inc. et al.

Filed December 3, 2014 in the U.S. District Court for the Northern District of Illinois, Neochloris’s complaint alleges that Emerson infringes U.S. Patent No. 6,845,336 (’336 Patent).

The ’336 Patent is entitled “Water treatment monitoring system” and directed to a monitoring system to receive data from water sensors, analyze water quality conditions inputted by the sensors and predict effluent water quality and process upsets.  The monitoring system includes an artificial neural network module to determine solutions to actual and potential water quality and process upsets.

According to the complaint, Emerson’s Delta V System infringes the ’336 Patent.

 

LEDs

Harvatek Corporation v. Cree, Inc.

Just weeks after Cree sued Harvatek for infringement of six patents relating to white light LED technology, Harvatek responded with a lawsuit of its own.  Harvatek filed a complaint December 5, 2014 in the Northern District of California, asserting one patent against Cree.

Entitled “Reflection-type light-emitting module with high heat-dissipating and high light-generating efficiency,” U.S. Patent No. 8,079,737 is directed to a reflection-type light-emitting module that includes a reflection-type lampshade unit with an open casing and a reflective structure formed on the open casing.

The accused products include the Cree LRP-28 series LED lamp.

 

Green Dry Cleaning Solvents

GreenEarth Cleaning, L.L.C. v. Personal Touch Valet Wholesale Bronx, Inc.

Kansas City-based GreenEarth Cleaning holds a number of patents directed to its environmentally friendly dry cleaning methods and solvents.  On December 23, 2014, GreenEarth sued Personal Touch Valet for alleged infringement of U.S. Patent No. 5,942,007 (’007 Patent).

The ’007 Patent is directed to methods and systems of dry cleaning articles comprising several steps including immersing the articles to be dry cleaned in a dry cleaning fluid including a cyclic siloxane composition.

The complaint, filed in the U.S. District Court for the Western District of Missouri, alleges that Personal Touch Valet is in breach of a license agreement with GreenEarth and is infringing the ’007 Patent and several other related patents.

GreenEarth previously sued Glyndon Laundry for patent and trademark infringement.

 

Smart Grid

Endeavor MeshTech, Inc. v. Leviton Manufacturing Co., Inc.

Endeavor MeshTech, Inc. v. Eaton Corporation

On October 31, 2014, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed two more patent infringement complaints.  One was filed against Leviton Manufacturing in the U.S. District Court for the District of Delaware (Endeavor v. Leviton), and the other against Eaton in the Northern District of Ohio (Endeavor v. Eaton).

The complaints accuse each defendant of infringing three patents in a family – U.S. Patent Nos. 7,379,981  8,700,749, and 8,855,019, each entitled “Wireless communication enabled meter and network.”  The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

Law Firm Disqualified in Li-ion Battery Patent Suit

January 27th, 2015 by Eric Lane No comments »

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

Celgard has filed several lawsuits alleging infringement of U.S. Patent No. 6,432,586 (’586 Patent), including one against LG Chem.  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.

Last month, the Court of Appeals for the Federal Circuit disqualified the Jones Day law firm from representing Celgard in the litigation due to a conflict of interest.  Jones Day was concurrently representing Apple in other matters when it entered the case on behalf of Celgard against LG Chem.

The problem was LG Chem is Apple’s Li-ion battery supplier.  The district court granted Celgard’s motion for a preliminary injunction against LG Chem, the case was appealed, and Apple intervened seeking to disqualify Jones Day.

In a 5-page opinion, the Federal Circuit ruled for Apple, finding that the duty of loyalty protects Apple from Jones Day continuing to represent Celgard.  This despite the fact that Apple was not a named party in the case:

This conclusion is not altered by the fact that Apple is not named as a defendant in this action.  The rules . . . make clear it is the total context, and not whether a party is named in a lawsuit, that controls whether the adversity is sufficient to warrant disqualification.

Here, the total context, which included both Apple’s potential problem with LG Chem as a supplier and Celgard as a putative licensor or supplier, compelled a conclusion that Jones Day’s representation of Celgard was adverse to Apple:

Apple faces not only the possibility of finding a new battery supplier, but also additional targeting by Celgard in an attempt to use the injunction issue as leverage in negotiating a business relationship.  Thus, in every relevant sense, Jones Day’s representation of Celgard is adverse to Apple’s interests.

The Patently-O blog discusses this case here and notes the danger this opinion may raise for law firms involved in patent infringement litigation.

In view of this decision, some of those firms might attempt to extend the scope of their already unenforceable advance conflict waivers, which I previously wrote about here.

The Top Green IP Stories of 2014

January 20th, 2015 by Eric Lane No comments »

Before we get into the new news, let’s take a quick look back at the top green IP stories of 2014.

 

5.  GE Wins Ownership of Key Wind Patent

In what was something of a sideshow, but with major implications for the main event, the Court of Appeals for the Federal Circuit effectively ended a dispute between GE and a former employee, Thomas Wilkins, over ownership of one of the patents involved in larger litigation with Mitsubishi.

After Wilkins brought a lawsuit to correct inventorship of U.S. Patent No. 6,921,985 (’985 Patent), Mitsubishi intervened in the suit.   The Federal Circuit ultimately ruled for GE because the document Wilkins argued demonstrated his conception of the invention did not disclose any elements of the claimed invention.

In fact, the court held, the document in question “does not even depict the key feature Wilkins claims to have invented, i.e., a UPS powering the wind turbine’s three controllers.”

 

4.  Tesla’s Chinese Trademark Troubles

Tesla’s eco-mark issues in China were resolved, renewed, and resolved again in 2014.  Early in the year, Tesla said it had obtained a court decision granting it the right to use the TESLA mark in China over a cybersquatter and prior registrant of the TESLA mark named Zhan Baosheng.

A few months later, Mr. Zhan sued Tesla for trademark infringement in China, demanding the American electric car maker stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

Shortly thereafter, Zhan apparently got his pay day when Tesla resolved the dispute – this time via a direct settlement rather than relying on the Chinese court system. Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications.   He also agreed to transfer his domain names, including tesla.cn and teslamotors.cn to Tesla.

 

3.  GreenShift Loses Big in Ethanol Patent Case

2014 saw a major decision in the patent infringement litigation between GreenShift (with its New York subsidiary, GS Cleantech) and a host of ethanol producers across the midwestern United States over patented ethanol production processes.

After multiple actions were consolidated in the Southern District of Indiana and the claims of the key patent family were construed and re-construed, the court issued a sweeping 233-page decision ruling on all of the pending motions for summary judgment brought by the original parties to the suit.

GreenShift lost big, with the court making several rulings on infringement, all for defendants.  Worse yet for GreenShift, the court held three of the four patents in the key patent family invalid because of the company’s commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

 

2.  Record Settlement Under Clean Air Act for Alleged Greenwashing

After their reputations took a beating in 2012 under a barrage of consumer class actions alleging false or misleading fuel efficiency claims, last year the Korean automakers entered into a record settlement with the U.S. government amid additional allegations of greenwashing.

The Environment and Natural Resources Division of the U.S. Department of Justice (DOJ) and the California Air Resources Board (CARB) sued Hyundai and Kia, alleging they sold over a million vehicles that did not meet the requirements of the Clean Air Act because the automakers used improper testing procedures and analysis and submitted faulty fuel economy data to the U.S. Environmental Protection Agency.

Hyundai and Kia quickly settled with the DOJ and CARB.  Under the settlement, the automakers did not have to admit the truth of the allegations but agreed to pay about $100 million, about $93.6 million to the DOJ and about $6.4 million to the CARB.  This is the largest penalty ever imposed under the Clean Air Act.

The car companies also forfeited 4.75 million greenhouse emission credits – earned for building vehicle emissions under the legal limit – which they had previously claimed and are estimated to be worth over $200 million.

 

1.  The Tesla-Patent Commons

The biggest green IP story of 2014 was Elon Musk’s announcement that Tesla would “donate” its entire patent portfolio.  Specifically, Musk’s post on the company blog said “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

In the wake of the announcement, more details emerged about Tesla’s patents and the technologies covered.  Reaction to the move was mixed, with some arguing it was a public relations stunt that would ultimately hurt Tesla.

In my post on the announcement, I wondered whether the temptation of exploiting Tesla’s technology would outweigh exclusivity concerns:

Ultimately, the impact of Musk’s decision may turn on to what extent other such players will be motivated to invest in manufacturing vehicles, batteries, etc. using Tesla’s patented and patent-pending technology with the obvious upside being the proven innovation that technology brings and the down side being no exclusivity, instead of investing in their own R&D and patent protection where the upside may be exclusivity and the down side may be inferior or unproven technologies.

Only time will tell what, if any, impact Tesla-Patent Commons will have on the electric vehicle market.

December 20th, 2014 by Eric Lane No comments »

 

 

Green Patent Blog is on vacation.

Happy Holidays!


 

 

 

GreenShift Loses Across the Board in Ethanol Patent Case

December 14th, 2014 by Eric Lane No comments »

In a number of prior posts (e.g., here, here and here), I discussed the series of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech (GS), against a host of ethanol producers across the midwestern United States.

The lawsuits involve GS’s patented ethanol production processes, described and claimed in a host of patents, principally the ’858 Patent Family consisting of U.S. Patent Nos. 7,601,8588,008,516 and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”

The patents relate to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

GS has been on an aggressive patent enforcement campaign over the last several years, and multiple actions were consolidated in the Southern District of Indiana, where the ’858 Patent Family was construed and re-construed.

In a sweeping 233-page decision issued in October and made public last month, the court ruled on all of the pending motions for summary judgment brought by the original parties to the suit.

On plaintiff’s side, the motions brought by GS were for summary judgment of infringement of at least some claims of each patent in the ’858 Patent Family by each of fourteen different defendants.

On the other side, the defendants of course moved for summary judgment of non-infringement of the ’858 Patent Family.  The defendants also filed motions for summary judgment of invalidity of the ’858 Patent Family (with GS cross-moving for summary judgment that the patents are valid).

Finally, GS alleged a subset of six defendants infringe U.S. Patent 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts” (’037 Patent).  The ’037 Patent was also the subject of competing motions by both sides for summary judgment of infringement and non-infringement and/or invalidity.

The court made several rulings on infringement, all for defendants.  Here are a couple of highlights:

The court found the defendants entitled to summary judgment of non-infringement of a number of claims of the ’858 Patent Family because the claims require drying the concentrate, which the court construed to mean drying the reduced oil syrup leaving the oil recovery process without mixing it with anything else first.  The defendants’s processes mix the reduced oil thin stillage concentrate before drying the mixture.

A number of defendants’ motions for summary judgment of non-infringement of several claims of the ’516 Patent and ’484 Patent were granted because the claims require that the reduced-oil syrup be “substantially free of oil” and defendants do not remove most of the oil from the incoming stream.

But the big news is the court held three of the four patents (’858, ’516 and ’517) in the ’858 Patent Family invalid because GS made a commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

Under the patent law provisions in effect at that time, a sale of the invention or offer to sell the invention more than one year before filing a patent application directed to the invention invalidates a patent issuing on that application, so long as the invention was reduced to practice at the time of the offer.

The offer was in the form of a July 31, 2003 letter to a prospective customer which the court found was “the culmination of a commercial offer for sale”:

[T]he major elements of a contract for the sale of a system that could perform the the patented method are contained in the letter:  all items necessary to recover oil and the price.

All four patents of the ’858 Patent Family were also held invalid as obvious over a prior Prevost patent in view of the common practice of the ethanol industry at the time:

Prevost discloses centrifugation of concentrated thin stillage to recover oil.  The only elements of the ’858 patent family missing from Prevost’s explicit teachings are specific pH, moisture content and temperature range requirements that are indisputably encompassed by the standard operating conditions of a dry mill ethanol plant and the heating element recited in some of the claims.

If that weren’t enough, the court held the later-filed ’037 Patent invalid as obvious in view of the ’858 Patent and other prior art references.

At the end of the day, all of GS’s motions for summary judgment of infringement were denied, nearly all of its motions for summary judgment of validity of its patents were denied, none of the defendants was found to infringe GS’s patents, and the ’858 Patent Family was found to be invalid on multiple grounds.

CEPGI Report Shows Record Quarter for Green Patents and Solar Patents in Q2 2014

December 5th, 2014 by Eric Lane No comments »

The Clean Energy Patent Growth Index (CEPGI) recently released its Second Quarter 2014 Results.  Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents issued in the United States.

The big news is that the 940 green patents granted in the second quarter of 2014 is the highest total for any quarter since CEPGI began tracking green patent trends in 2002.  This is a jump of 250 from the first quarter and 200 more than Q2 last year.

The largest number of green patents was in solar technology, with 306 solar patents, up 55 from the first quarter.  This is an all-time high for solar patent grants and is part of a recent and sustained dominance, according to the report:

Solar patents were at a new high and again led the other technology sectors in the second quarter for the fifth quarter in a row…

Fuel cell patents were in second place at 232, a jump of 70 patents over the first quarter.  Wind patents were up 43 to 166, to take third place, while hybrid/electric vehicle patents were in fourth place with 142.  Next was biofuel/biomass patents, which reached a new high of 71, tidal patents (16), and geothermal patents (5).

The top green patentee for the second quarter of 2014 was Toyota, which had 33 patents granted, divided between fuel cells and hybrid/electric vehicles.  Toyota took the crown from the leader of the prior quarter, General Motors, which was in second place with 30 granted green patents, most of which were fuel cell patents.

Vestas and Samsung tied for third place, each with 26 patents.  All 26 Vestas patents were, unsurprisingly, in wind technology, and Samsung had 14 fuel cell patents, 11 solar patents, and one biofuel/biomass patent.  Honda, Hyundai, and Ford took the next three spots, followed by GE, Mitsubishi, and Panasonic.

CEPGI also breaks out its data by jurisdiction, looking at the countries and individual U.S. states of green patentees.  Japan was the Q2 leader with 183 green patents granted.  California took second place with 98 patents, followed by Germany  with 92, and Korea with 90.  Michigan (56), Taiwan (38), New York (31), Denmark (30), France (24), and Texas (24) rounded out the top ten.