Clean Tech in Court: Green Patent Complaint Update

May 20th, 2015 by Eric Lane No comments »

A number of new green patent complaints were filed in the last two months in the areas of energy storage, LED lighting, and smart grid (including lighting control).

 

Energy Storage

Power Regeneration, LLC v. Siemens Corporation et al.

A Texas company call Power Regeneration has accused Siemens of infringing a patent relating to energy storage systems.  Filed April 6, 2015 in federal court in Tyler, Texas, the complaint alleges that Siemens’ SITRAS energy storage systems infringe U.S. Patent No. 7,085,123 (’123 Patent).

The ’123 Patent is entitled “Power supply apparatus and power supply method” and directed to a power supply apparatus and method wherein the non-polar characteristics of the electrodes of a capacitor are used to improve the energy utilization efficiency of a battery through reciprocating switches of polarity connection between the battery and the capacitor.  The capacitor allows for reverse charging, and the apparatus delivers a stable power output.

LEDs

Koninklijke Philips N.V. et al. v. Troy-CSL Lighting, Inc.

On March 20, 2015, Philips sued Troy-CSL for infringement of seven patents relating to LEDs and LED lighting devices.  The complaint was filed in the U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 6,013,988, entitled “Circuit arrangement, and signalling light provided with the circuit arrangement”

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

U.S. Patent No. 6,250,774, entitled “Luminaire”

U.S. Patent No. 6,561,690, entitled “Luminaire based on the light emission of light-emitting diodes”

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. 7,325,138, entitled “Methods and apparatus for providing power to lighting devices”

The accused products are Creative Systems Lighting (CSL) and Troy branded interior and exterior LED lighting products.  Philips has asserted several of these patents before (see previous posts, e.g., here and here).

 

Smart Grid

Endeavor MeshTech, Inc. v. Synapse Wireless, Inc.

Endeavor MeshTech, Inc. v. Tantalus Systems, Inc.

On March 25, 2015, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed two more patent infringement complaints.  One was filed against Synapse Wireless in the U.S. District Court for the Northern District of Alabama (Endeavor v. Synapse), and the other against Tantalus Systems in the Eastern District of North Carolina (Endeavor v. Tantalus).

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.

The accused products are systems, modules, devices, and services under Tantalus’s TUNet brand and Synapse’s SNAP brand.

 

Sunrise Technologies, Inc. v. Cimcon Lighting, Inc.

Sunrise Technologies, Inc. v. Selc Ireland Ltd.

On April 8, 2015, a Massachusetts company called Sunrise Technologies filed suit against two competitors (Sunrise v. Cimcon; Sunrise v. Selc) in the U.S. District Court for the District of Massachusetts.  The complaint asserts U.S. Patent No. 7,825, 793, entitled “Remote monitoring and control system” (’793 Patent).

The ’793 Patent is directed to a communication system that communicates information between an end user device and a remote end user via a communication node mounted on the upper part of a utility pole.  The communication node is capable of communicating with a nearby user device using a low-power communication protocol such as the Zigbee protocol and transmits the communication to the end user via a neighborhood mesh network of nodes mounted on utility poles.

The accused products are Cimcon’s iSLC’s line of intelligent wireless controllers and Selc’s Wireless Central Monitoring Systems.

 

Intuitive Building Controls, Inc. v. Control4 Corporation

Intuitive Building Controls, Inc. v. Acuity Brands, Inc.

Intuitive Building Controls, Inc. v. AMX LLC

Intuitive Building Controls, Inc. v. Crestron Electronics, Inc.

Intuitive Building Controls, Inc. v. United Technologies Corporation et al.

Texas-baseed Intuitive Building Controls (IBC) fired off five complaints asserting infringement of one or more of three patents relating to lighting control systems.  The lawsuits were all filed in federal court in Marshall, Texas on April 14, 2015.

The patents-in-suit are U.S. Patent Nos. 6,118,230, entitled “Lighting control system including server for receiving and processing lighting control requests”(’230 Patent), 6,160,359, entitled “Apparatus for communicating with a remote computer to control an assigned lighting load” (’359 Patent), and 5,945,993, entitled “Pictograph-based method and apparatus for controlling a plurality of lighting loads” (’993 Patent).

The complaints against Control4 (Intuitive v. Control4), AMX (Intuitive v. AMX), and Crestron (Intuitive v. Crestron) assert all three patents.  The complaints against Acuity Brands (Intuitive v. Acuity) and United Technologies (Intuitive v. United Technologies) list only the ’230 Patent.

Jury Verdict for Everlight Knocks Out Nichia Patents

May 13th, 2015 by Eric Lane No comments »

 

A previous post discussed the declaratory judgment complaint (Everlight-Nichia ComplaintEverlight Electronics filed against Nichia in federal court in Michigan in April 2012.

Everlight sought declaratory judgment of non-infringement, invalidity, and unenforceability due to inequitable conduct of two patents owned by Nichia:  U.S. Patent Nos. 5,998,925 entitled “Light Emitting Device Having a Nitride Compound Semiconductor and Phosphor Containing Garnet Fluorescent Material” (’925 Patent), and 7,531,960 entitled “Light Emitting Device with Blue Light LED and Phosphor Components” (’960 Patent).

Everlight suffered a setback later that year when the court granted Nichia’s motion to dismiss the inequitable conduct claims.

However, the Taiwanese company scored a big victory recently when the Michigan jury unanimously found multiple claims of the ’925 and ’960 Patents invalid.  More particularly, claims 2, 3 and 5 of the ’925 Patent were found to be invalid due to obviousness, claims 2, 14 and 19 of the ’960 Patent were found to be invalid due to obviousness, and claims 14 and 19 of the ’960 Patent were also found invalid for lack of enablement.

The jury declined to find claims 2, 3 or 5 of the ’925 Patent to be invalid on the additional enablement ground.

While this is an important win for Everlight, it is just one battle in a sprawling patent war between these two LED rivals.  The litigation dates back to 2005 when Nichia first targeted Everlight for patent infringement and extends to various venues around the world.

Nichia has sued an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ’960 Patent (Japanese Patent No. 4350094).  Nichia also filed suit against Everlight in Germany asserting the European counterpart to the ’925 Patent (European Patent No. EP 0 936 682).

In addition to this DJ action, Everlight has filed a number of reexaminations proceedings targeting Nichia’s LED patents.

CEPGI Year in Review Shows Green Patents Hit All-time High in 2014

May 6th, 2015 by Eric Lane No comments »

The Clean Energy Patent Growth Index (CEPGI) recently released its 2014 Year in Review.  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 3609 green patents granted in 2014 is the highest annual total since CEPGI began tracking green patent trends in 2002.  This is a jump of 434 from 2013.

The largest number of green patents was in solar technology, with 1238 solar patents, a 28 percent increase from the previous year.  Fuel cell patents were in second place, with 1024 (a 27% jump from 2013), followed by wind patents (623), and hybrid/electric vehicle patents (521).  Biofuels patents (230) were in the fifth position.

The top green patentee for 2014 was Toyota, which had 149 patents granted, followed by General Motors, with 126 granted green patents, Samsung (102 patents), Hyundai (101 patents), and Honda (97 patents).  The overall leader in granted green patents since 2002 is still General Motors, followed by Honda, Toyota, GE, and Samsung.

By technology sector, Toyota was the fuel cell patent leader in 2014 with 101 fuel cell patents granted, Samsung was the top solar patentee of the year (37 patents), and Hyundai topped the list for hybrid/electric vehicle patents, with 56.  While GE had been the top wind patentee for eight years running, Vestas came out on top in 2014, with 80 granted wind patents.

In 2014, green patent owners were a diverse group:  according to the report, “over 1500 entities contributed to the record total of Clean Energy patents last year.”

CEPGI also breaks out its data by jurisdiction, looking at the countries and individual U.S. states of green patentees.  The United States was the 2014 leader with 1504 green patents granted.  Japan took second place, with 696 patents, followed by Korea (346), Germany (316), Denmark (120), and Taiwan (118).

California was the leading U.S. state, with 385 patents, followed by Michigan (227), New York (132), and Texas (77), Ohio (56), and Massachusetts (55).

The full report can be found here.

Trade Secrets Lit Updates: Sinovel Challenges Summons Service and Philips Computer Fraud Claim Fails

April 29th, 2015 by Eric Lane No comments »

There are updates on a couple of green tech trade secrets cases, each involving allegations of misappropriation by Chinese companies and their employees.

First, as discussed in a previous post, the ongoing litigation between American Superconductor (AMSC) and Sinovel includes a criminal indictment against the Chinese wind turbine maker, two of its employees, and a former AMSC employee.

The defendants are charged with conspiracy to commit trade secret theft and criminal copyright infringement.  The technology involved is AMSC’s source code, software, equipment designs and technical drawings that relate to regulating the flow of electricity from wind turbines to the electricity grid

In a recent oral argument, Sinovel asked the U.S. Court of Appeals for the Seventh Circuit to reverse a lower court ruling and quash a summons, arguing it was improperly served on its U.S. subsidiary.  An article about the oral argument can be found here.

The second is a lawsuit brought by Koninklijke Philips and Philips Lumileds against Chinese competitor Elec-Tech International (ETI), several ETI subsidiaries, two corporate directors, and a former Lumileds employee named Dr. Gangyi Chen.  Philips alleged theft of trade secrets relating to high-energy LED lighting technology.

Elec-Tech moved to dismiss the complaint for a number of reasons, including an inadequately pleaded claim under the Computer Fraud and Abuse Act (CFAA), the only federal cause of action in the case.

In a recent decision, a federal court in San Jose, California dismissed Philips’ case, holding that the federal law claim under the CFAA could not be sustained.

The CFAA prohibits various computer crimes related to accessing computers without authorization in order to obtain information or data.  The problem for Philips was that Dr. Chen, who was alleged to have stolen the trade secret information, was authorized to access the Philips Lumileds network and did not exceed his authorized access while downloading the information prior to his resignation.

Specifically, the complaint was deficient because it lacked any allegation that someone without authorization accessed the confidential information:

By the Complaint’s own allegations, none of the CFAA Defendants accessed Lumileds’ information – Dr. Chen did, at a time when he was authorized to download this information.

While Dr. Chen may have misappropriated the information (a state law claim) and given it to the CFAA Defendants, the court held there is no “claim against those Defendants under the CFAA because they themselves did not hack Lumileds’ system.”

The court rejected Philips’ argument that Dr. Chen was an “agent” of the CFAA Defendants and they should be held liable based on their indirect, unauthorized access through Dr. Chen’s access, holding that the CFAA Defendants lack of access was fatal to the claim:

None of the CFAA Defendants entered or used Lumileds’ network.  At most, they encouraged Dr. Chen to do so, and stood to benefit from alleged misappropriation.  This action may give rise to a number of claims, but it does not support a theory of liability under the CFAA.

Expect this case to start up again in state court.

CleanTech PatentEdge Annual Report Shows Green Patenting Grew in 2014

April 21st, 2015 by Eric Lane No comments »

Berkeley-based IP Checkups recently published its 2014 Annual Report on cleantech patenting trends.  Based on the firm’s proprietary green patent database -  Cleantech PatentEdge™ - the report contains much interesting analysis driven by this powerful data analytics tool.

The major finding of the report is that, after a year of decline in 2013, worldwide patent activity grew last year, rising consistently in each quarter of 2014.  This is measured by the number of cleantech patent documents published, which typically means a lag time of 18 months from application filing date.

In the United States, the number of published cleantech patent applications grew by 8% from 2013 to 2014, and the number of U.S. patent publications and grants reached a five-year high.

Looking across all cleantech sectors, the report found that U.S. patent activity increased by an average of 13% in 2014, with renewable energy generation being the leading sector.  Within that sector, solar and biofuels showed the most growth.

The report lists the top twenty worldwide cleantech patent assignees.  Samsung, Toyota, and Panasonic topped the list, with General Electric and Mitsubishi rounding out the top five.

The patent assignees are broken out by industry sector, and the report provides other useful information, such as an in-depth look at patenting trends in transportation and analysis of cleantech venture capital funding trends.  Significantly, cleantech VC funding saw a 28% YOY increase from 2013 to 2014.

For more information, visit the Cleantech PatentEdge web site here.

BASF Brings Battery Battle to the Border

April 14th, 2015 by Eric Lane No comments »

A previous post reported that chemical giant BASF and UChicago Argonne LLC (Argonne) sued Belgium-based Umicore and Japan-based Makita Corporation for infringement of two patents relating to cathode materials for lithium-ion batteries.  That lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

The same day BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries have imported and sold in the United States lithium ion cathode materials and batteries that infringe the same patents.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337.  It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO2.(1−x)Li2M′Oin which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the ITC complaint, Argonne is the owner of the ’082 and ’143 patents and BASF produces lithium ion cathode materials under an exclusive license to the patents.

Recently, the ITC issued a Notice announcing that it would investigate BASF’s and Argonne’s claims of infringement.

BASF and Argonne have requested a limited exclusion order that would prevent Umicore and Makita from importing Umicore’s cathode materials, allegedly marketed and sold under the Cellcore product group, and certain Makita power tools using lithium ion batteries.

Although Umicore and Makita are now squeezed in both the ITC and federal court, they may ask the court to stay the parallel court action in view of the ITC investigation.

Big Win for Butamax as PTAB Knocks Out All Claims of Gevo Patent

April 6th, 2015 by Eric Lane No comments »

Previous posts (e.g., here and here) discussed various threads of the major biofuels patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.

A relatively new mechanism for challenging the validity of a U.S. patent is inter partes review (IPR), an administrative trial proceeding before the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) in which a third party can challenge the validity of a patent based on printed prior art publications.

Last year Butamax filed a petition with the PTAB for IPR of Gevo’s U.S. Patent No. 8,546,627 (’627 Patent).  The ’627 Patent is entitled “Renewable compositions” and directed to processes for preparing a renewable jet fuel.

The claimed processes comprise fermenting biomass with a microorganism, dehydrating the resulting alcohol to form biofuel precursors, and then subjecting the biofuel precursors to processes such as oligomerization, hydrogenation, and aromatization to form the fuel.

In a recent decision, the PTAB ruled that all 21 claims of the ’627 Patent are invalid in view of several prior art references cited by Butamax.

More particularly, the PTAB held that U.S. Patent Application Publication No. 2008/0132741 to D’Amore discloses five of the seven steps of independent claim 1 of the ’627 Patent.  Because the sixth and seventh steps of claim 1 are recited as optional, D’Amore was found to anticipate the claims.  D’Amore was also held to anticipate dependent claims 7, 11 and 14 of the ’627 Patent.

As the primary prior art reference, the PTAB applied D’Amore in combination with several other printed publications in holding all of the claims invalid.  The PTAB also considered ASTM D1655 jet fuel standards as an important secondary reference and found that D’Amore in combination with the standards rendered claims 2-7, 11, 14 and 18-21 obvious.

The PTAB found an additional ground for invalidity of independent claim 18 in International, or PCT, Patent Publication No. WO 2007/061903 to Bradin.  Bradin is entitled “Alternative fuel and fuel additive compositions” and directed to alternative gasoline, diesel fuel, marine diesel fuel, jet fuel, and flexible fuel compositions including an alcohol and/or a glycerol ether or mixture of glycerol ethers, which can be derived from renewable resources.

Clean Tech in Court: Green Patent Complaint Update

March 24th, 2015 by Eric Lane No comments »

In January and February, there were a number of green patent infringement lawsuits filed in the areas of biofuels, hybrid vehicles, LEDs, smart grid, advanced batteries, solar power, and water meters.

Advanced Batteries

BASF Corporation et al. v. Umicore N.V. et al.

In this lawsuit BASF and UChicago Argonne, LLC accuse Umicore and Makita Corporation of unfair trade practices, antitrust violations, and infringement of two patents relating to cathode materials for lithium-ion batteries.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO2.(1−x)Li2M′Oin which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the complaint, Umicore is selling cathode materials that infringe the ’082 and ’143 Patents, and Makita is one of the companies importing and selling batteries incorporating the materials.  The lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

Biofuels

C T E Global, Inc. v. Novozymes A/S

In a complaint filed January 9, 2015 in the U.S. District Court for the Northern District of Illinois, C T E Global seeks a declaratory judgment of invalidity and non-infringement of two Novozymes patents relating to an enzyme used in biofuel production.  The patents are U.S. Patent Nos. 6,255,084 (’084 Patent) and 7,060,468 (’468 Patent).

The ’084 and ’468 Patents are entitled “Thermostable glucoamylase” and are directed to an isolated glucoamylase enzyme which has higher thermal stability than prior glucoamylases.  The patents also claim starch conversion processes using the enzyme.  Glucoamylases are used to convert hydrolyzed corn starch to glucose, particularly in production of ethanol.

Novozymes and C T E previously litigated these patents and settled the case in 2012.  According to C T E, the ’084 and ’468 Patents are invalid in light of the U.S. Supreme Court Myriad Genetics decision holding that isolated natural products are not patent eligible subject matter.

Superior Oil Company, Inc. v. Solenis Technologies L.P.

This is not a patent infringement suit, but rather a priority /ownership dispute in which Superior Oil claims that the inventors of its patent for a method for recovering oil from the byproducts of ethanol production using various surfactants were the first to invent the technology.

Superior Oil’s patent is U.S. Patent No. 8,962,059, entitled “Bio-based oil composition and method for producing the same” (’059 Patent).  In its complaint, Superior Oil requests that the court declare that an interference-in-fact exists between the ’059 Patent and U.S. Patent No. 8,841,469 (’469 Patent), entitled “Chemical additives and use thereof in stillage processing operations” and owned by Solenis Technologies.

The complaint was filed February 24, 2015 in the U.S. District Court for the District of Delaware.

Hybrid Vehicles

Somaltus LLC v. Ford Motor Company

Somaltus filed this complaint for patent infringement in the U.S. District Court for the Eastern District of Texas on February 12, 2015.  Somaltus alleges that Ford infringes U.S. Patent No. 7,657,386 (’386 Patent) by selling vehicles equipped with an infringing hybrid battery system.

The ’386 Patent is entitled “Integrated battery service system” and 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.

Somaltus, a non-practicing entity, has also sued Nissan, Bosch Automotive Service Solutions, Auto Meter Products, and Cadex Electronics.

LEDs

Cree, Inc. v. Feit Electric Company, Inc. et al.

North Carolina LED manufacturer Cree sued Feit for alleged infringement of ten utility and design patents relating to LED technologies.  The complaint also alleges that Feit has engaged in false advertising in connection with marketing its LED products.

The patents-in-suit are:

U.S. Patent No. 6,657,236, entitled “Enhanced light extraction in LEDs through the use of internal and external optical elements”

U.S. Patent No. 6,885,036, entitled “Scalable LED with improved current spreading structures”

U.S. Patent No. 6,614,056, entitled “Scalable led with improved current spreading structures”

U.S. Patent No. 7,312,474, entitled “Group III nitride based superlattice structures”

U.S. Patent No. 7,976,187, entitled “Uniform intensity LED lighting system”

U.S. Patent No. 8,766,298, entitled “Encapsulant profile for light emitting diodes”

U.S. Patent No. 8,596,819, entitled “Lighting device and method of lighting”

U.S. Patent No. 8,628,214, entitled “Lighting device and lighting method”

U.S. Design Patent No. D653,366, entitled “LED lamp”

U.S. Design Patent No. D660,990, entitled “LED lamp”

The complaint includes greenwashing allegations as well, specifically that Feit’s advertising falsely suggests that some of its LED products meet the Energy Star standard relating to Luminous Energy Distribution when the products actually fail to meet this requirement.

Smart Grid

Allure Energy, Inc. v. Honeywell International, Inc. 

On January 29, 2015, Allure Energy sued Honeywell in federal court in Austin, Texas, alleging false advertising and infringement of two patents relating to smart thermostat technology.

The complaint asserts U.S. Patent Nos. 8,626,344 and 8,457,797, both entitled “Energy management system and method” and directed to a wireless thermostat responsive to control action data communicated via a mobile app and other home energy management systems.

The accused device is Honeywell’s Lyric smart thermostat product.

Emerson Electric Co. et al. v. SIPCo LLC et al.

Previous posts (e.g., here and here) reported on SIPCo’s patent enforcement activities.

In this declaratory judgment (DJ) action, filed January 30, 2015 in federal court in Atlanta, Emerson, one of the defendants in SIPCo’s patent infringement suits, seeks a declaratory judgment that the claims of two SIPCo patents are invalid and not infringed.

The patents listed in Emerson’s complaint are U.S. Patent No. 6,044,062, entitled “Wireless network gateway and method for providing same,” and directed to certain wireless network systems having a server providing a gateway between two networks, and U.S. Patent No. 7,103,511, which relates to remote monitoring and control systems.

In 2013, Emerson filed a similar DJ suit against SIPCo targeting several patents.

Solar Power

Beacon Power, LLC v. SolarEdge Technologies, Inc. et al.

Beacon Power sued SolarEdge for patent infringement on January 9, 2015 in federal court in San Antonio, Texas.  The complaint asserts U.S. Patent Nos. 8,102,144 (’144 Patent) and 8,669,675 (’675 Patent), each entitled “Power converter for a solar panel.”

The ’144 Patent is directed to a solar power generation system including a DC-to-DC power converter configured and arranged to convert the raw power output for each solar module to a high voltage and low current output.

The ’675 Patent is directed to a solar power generation system wherein each DC-to-DC power converter is configured and arranged to convert the solar module output power (SOP) for each solar module to a converted solar module output power (COP) having a converted output voltage (COV) that is higher than the SOV and a converted output current (COI) that is lower than the SOI.

The accused products are SolarEdge’s P Series Power Optimizers.

Water Meters

Flow Dynamics, LLC v. Green4All Energy Solutions Inc. et al.

Filed February 20, 2015 in federal court in Palm Beach, Florida, Flow Dynamics’ complaint accuses Green4All of infringing U.S. Patent No. 8,707,981 (’981 Patent).

The ’981 Patent is entitled “System for increasing the efficiency of a water meter” and directed to a system and an associated valve assembly adapted to increase the efficiency of an upstream water meter. The valve assembly removes entrained water bubbles from the water supply, increasing the density of the water running through the water meter. This ensures that the water meter is not inaccurately including entrained air as metered water so water readings are more accurate.

Flow Dynamics alleges that Green4All’s H2minusO system infringes the ’981 Patent.

Going Round on IP and Climate Change

March 16th, 2015 by Eric Lane No comments »

The Bulletin of the Atomic Scientists recently published a spirited debate on the role of intellectual property rights (IPR) in commercialization and transfer of climate mitigation technologies.

The participants, who debated via a series of essays and responses, were Carlos M. Correa, director of the Center for Interdisciplinary Studies on Industrial Property and Economics at the University of Buenos Aires, Frederick M. Abbott, professor of international law at Florida State University College of Law, and Ahmed Abdel Latif of the International Centre for Trade and Sustainable Development.

Correa kicked off Round 1 with an essay entitled “The burden of intellectual property rights” in which he lays out the case for patents acting as a barrier to diffusion of green technologies to developing countries and for those countries to use compulsory licenses to access the technologies they need.

The essay makes some valid points.  Correa persuasively took on the argument of IPR defenders that the dearth of green tech patents in the poorer developed countries means patents do not stand in the way of green tech transfer and acquisition.  He noted, probably correctly, that these countries must rely on technology produced elsewhere, such as China and India, so patents in those countries are relevant to green tech transfer to the ultimate target markets, including developed countries.

I agree to a large extent with Correa’s notion that IPRs should function not only as an incentive to innovators but more broadly as a vehicle for diffusion and commercialization of the technologies being developed and patented.  However, I think he goes too far in saying that the IP system should “ensure that new technologies are accessible to all countries.”   I don’t believe it is the role of the IP system to guarantee accessibility to innovation.

One misstep in the essay is the attempt to refute the point made by Professor Abbott and others that green tech patents rarely confer market power because most fundamental green technologies are off-patent and there is competition among the tremendous diversity of green technologies.

Correa counters that “many patents cover minor or trivial developments and may be used to block genuine innovation and competition.”  By definition, though, a patent directed to an incremental improvement will not block use of the earlier technology (without the improvement), and such a patent is highly unlikely to confer market power.

Correa also cites studies that show large numbers of patent applications filed on green technologies in recent years.  But these statistics are meaningless absent information on the inventions being patented and how those inventions compare to the many green tech inventions which are off-patent.

Where I strongly disagree with the essay is in its insistence that IPRs are a (clear and present) problem for developing countries seeking access to green technologies.  The support for this – presented in Correa’s Round 2 response entitled “The problem is real” – is that the problem has been recognized in environmental summits and climate change treaty talks over the years and countries such as Ecuador have proposed patent exemptions and reductions in patent terms.

Correa emphatically states that IPRs pose an actual problem:

But a problem does exist – insofar as the system of private appropriation of innovations may delay for 20 years (the normal duration of a patent) the introduction of new technologies into developing countries (the majority of the world). (emphasis in original)

While raising IPRs as a discussion topic and putting forth policy proposals may reflect a concern over IPRs as a potential problem, they do not make it an actual one.  The statement about patent term seems to recognize this distinction by admitting that a patent “may” delay introduction of new technologies.

While the possibility of a refusal to license patented green technology is mentioned, no documented cases of such refusals are discussed.

Perhaps this is why the Round 1 essay closes by calling for developing countries to use compulsory licenses to access to green technologies “whenever they find it convenient.”  Use of compulsory licenses when necessary may be an unattainable standard.

In his Round 1 contribution, entitled “A problem, but not without solutions,” Professor Abbott argues for a “middle path” between the defenders of IPRs and those calling for compulsory licensing of green tech patents.  One such path could be joint ventures between enterprises in developed and developing countries, facilitated by government policies to make investment in developing countries more attractive.

Abbott also proposes patent pooling, direct voluntary licensing, product development partnerships, and development buyout funds to purchase technology from high-income countries and share it globally.

Finally, Professor Abbott notes that IPRs are not the only factors that could be restricting access to green technologies in poorer countries; he writes that “entrenched economic actors” such as utilities may not want to introduce renewable energy technologies in some countries.  I would add to the list of non-IP factors in the poorer developing countries small market size, lack of infrastructure, and insufficient skilled labor.

As always, Ahmed Abdel Latif is a voice of reason in a contentious dispute.  That voice comes through in his essay, “Disputed impact, but not to be ignored” in which Abdel Latif calls for a “structured, incremental, and constructive debate on the issues.”

He thinks this debate should start by looking at practical initiatives that might encourage diffusion of green technologies into developing countries and later address the controversial issues such as changing IP regimes.

Whether the IP system needs changes, Abdel Latif reminds us, is still an open question.  Particularly, the essay notes that “the impact of intellectual property rights on low-carbon technologies in developing countries is both complex and hard to quantify.”  With the diversity of green technologies out there and the limited empirical research done so far, we still don’t have a clear picture of the role of IPRs.

Hence, the constructive debate Abdel Latif proposes, without giving undue weight to either side, but acknowledging the importance of IPRs:

The importance of intellectual property rights should be neither overestimated nor underestimated.  What’s certain is that intellectual property rights cannot be ignored.

As long as we have passionate and intelligent people like Correa, Abbott and Abdel Latif, we can be sure the role of IPRs in climate change will not be ignored.

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.