Archive for September, 2008

Suntech Power Accuses Rival of Trademark Infringement, Asks Court to Nix Expo Booth

September 30th, 2008

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Suntech Power Holdings (“Suntech”) is a Chinese solar module provider specializing in building-integrated photovoltaics.  Suntech owns U.S. Trademark Registration No. 3,111,705 (“’705 registration”) for its SUNTECH design mark (pictured above).

Last month Suntech sued competitor Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”) in federal court in San Diego for alleged infringement of the ’705 registration and its unregistered SUNTECH word mark.

The ’705 registration (suntechreg.pdf) lists the goods sold under the SUNTECH design mark as:

Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries

According to the complaint (suntechcomplaint.pdf), Sun Tech Solar’s infringing activity includes use of the trademarks SUN TECH and SUN TECH SOLAR in connection with the sale of solar modules that are similar to Suntech’s products. 

In addition, Sun Tech Solar operates a web site at the address www.solarsuntech.com, which Suntech alleges is confusingly similar to its web site (www.suntech-power.com) and uses its SUNTECH mark in the domain name. 

The complaint also notes that Sun Tech Solar will be exhibiting and advertising using the allegedly infringing trademarks at the Solar Power Conference & Expo – probably the largest international solar power conference – in San Diego October 13-16. 

The complaint requests an injunction prohibiting Sun Tech Solar from using the allegedly infringing marks and asks for treble damages and punitive damages.

One interesting note on timing is that Suntech didn’t file an application for registration of its SUNTECH word mark (suntechapp.pdf) until August 29, 2008, one day after it filed the complaint. 

Surely Suntech would have preferred to have the word mark registration to assert against Sun Tech Solar, but the design mark still provides a strong case because the word portion of it would likely be deemed the dominant feature of the mark for consumer recognition purposes.

It’s possible that the timing of the suit itself was influenced by the Solar Power Conference, and indeed, Suntech has moved for a preliminary injunction (suntech_pi_motion.pdf) asking the court to shut down its rival’s booth at the expo.

VCs Targeted in Gasification Patent Suit

September 27th, 2008

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Quantum Catalytics, Inc. and its Houston, Texas subsidiary Texas Syngas, Inc. (collectively ”Quantum”) sued Ze-Gen, Inc. (“Ze-Gen”) and New Bedford Waste Services, LLC (“NBW”) in federal court in Boston, Massachusetts last month for alleged infringement of 14 patents directed to gasification technology and misappropriation of trade secrets relating to the technology. 

The patents, which Quantum acquired from the bankruptcy estate of a Massachusetts company called Molten Metal Technology, include U.S. Patent Nos. 5,191,154, 5,322,547, 5,744,117 and 5,866,095

The patents describe methods of converting organic waste into syngas using liquid metal reactors.  The patented processes separate carbon dioxide and result in gas that can be used to generate electricity.

Quantum has taken a hardball approach in this case by seeking to expose individual executives of Ze-Gen and the company’s investors and patent attorney to infringement liability.  Thus, the complaint (quantumcatalyticscomplaint.pdf) names as individual defendants the President and Chief Technology Officer of Ze-Gen, as well as Ze-Gen’s outside patent counsel.

In addition, Quantum has accused two venture capital firms, Flagship Ventures (“Flagship”) and Vantage Point Venture Partners (“Vantage”) of contributory infringement and inducing infringement because of their alleged ownership interests and management roles in Ze-Gen. 

According to the complaint, Flagship and Vantage have control of and involvement in Ze-Gen’s allegedly infringing activities because a member of each firm sits on Ze-Gen’s Board of Directors. 

However, Quantum will have to clear a high hurdle to prove that the VCs induced infringement.  Per the Federal Circuit Court of Appeals’ DSU Medical decision, Quantum has to show that Flagship and Vantage possessed the specific intent to induce Ze-Gen’s alleged infringement of the patents-in-suit. 

That is, Quantum has to show more than just the VCs’ intent to cause the acts that it alleges are infringing.  Instead, Quantum must prove true culpability – that the VCs knew of the patents and intended to induce infringement of the patents.

It will be interesting to see how the infringement claims against Flagship and Vantage play out.  Infringement liability for clean tech VCs would be a disturbing development in clean energy financing.  In view of the ever increasing venture funding of clean technology companies, this could become a very significant case, and one the VCs should be watching.

Google.org Invests in Geothermal Technology, Seeks Patent on Floating Data Centers

September 24th, 2008

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Last month Google.org announced investment of over $10 million in geothermal technology.  Specifically, the web search company’s investment arm will give $6.25 million to Sausalito California-based geothermal company AltaRock Energy (AltaRock), $4 million to Redwood City, California drilling technology company Potter Drilling (Potter) and almost $500,000 to the Southern Methodist University Geothermal Lab (SMU) (see greentech media piece here)

Although the United States trails other countries in some renewable energy sectors such as solar, wind and biofuels, it is the world leader in geothermal energy.

The particular technology Google.org is funding is EGS, or enhanced geothermal systems, which involve drilling deep holes into hot rock in two locations and injecting water into the cracks in the first location.  Steam pressure forces the resulting super-heated water up through the holes in the second location, and that heat is used to run a turbine and produce electricity.

According to AltaRock’s web site, the company owns a portfolio of EGS patent applications and holds exclusive licenses for related intellectual property.  However, searches of the U.S. Patent & Trademark Office database for AltaRock as assignee yielded no results, and AltaRock did not respond to an e-mail inquiry about its patent portfolio.  A similar search for SMU also came up empty.

The good news for AltaRock continued this month as it reached a deal with building products and real estate firm Weyerhauser Company to develop geothermal projects in northern California, Oregon and Washington.

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Potter owns a patent application directed to drilling systems and methods for geothermal heat pump applications.  U.S. Patent Application Pub. No. 2008/0093125 (’125 application) describes a method for creating more stable bore holes by making the holes non-circular.

According to the ’125 application, elliptical, oval or eccentric shaped holes prevent portions of the rock formation from breaking apart from the bore hole wall.  Non-circular bore holes also facilitate installation of piping for heat pumps and provide improved geometry for heat exchange.

In addition to funding clean technologies, Google is developing its own.  Last month Google Inc.’s U.S. Patent Applicaton Pub. No. 2008/0209234 (’234 application) published. 

The ’234 application describes a floating platform-mounted computer data center with an electrical generator and cooling units.  The data center of the ’234 application gets its electricity from wave power and is cooled by the sea water upon which it floats.

Prosecuting Eco-Marks Part IV: Green Patent Blog Requests Reconsideration, Argues Acquired Distinctiveness

September 21st, 2008

 

In response to a final Office Action rejecting my GREEN PATENT BLOG trademark application, I recently filed a Request for Reconsideration in an attempt to keep the dream alive for GPB.  After a final Office Action, a trademark applicant can appeal the decision or file a Request for Reconsideration raising a new issue.

My Request for Reconsideration raised the new issue of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

Fortunately the trademark rules allow applicants to argue acquired distinctiveness in the alternative, so I did not have to concede that the GREEN PATENT BLOG mark is merely descriptive of the services provided.  Instead, I maintained my position that the mark is not merely descriptive and added the acquired distinctiveness argument.

Specifically, I argued that readers of Green Patent Blog have come to recognize the mark as an identifier of my blogging services.  I used both indirect evidence, such as other blog and media mentions listing me as the author of Green Patent Blog, and direct evidence consisting of e-mails from readers saying that they identify me as the source of the clean tech IP blogging services (a big thank you to all the readers who helped me in this regard!).

If the examining attorney buys my argument and supporting evidence on acquired distinctiveness, the GREEN PATENT BLOG mark will be published for opposition, and then registered if nobody opposes.  Otherwise, I’ll get another office action and have to take it from there.

Ford to Explore Wind Turbines on Car Roofs

September 17th, 2008

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Most solutions for the clean cars of the future focus on plug-in electric vehicles, fuel cells, biofuels or hydrogen.  Last month, Ford added a twist to this mix when it agreed to look at a wind turbine and generator system for motor vehicles invented by Edward Deets (see CitizensVoice.com article). 

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Deets owns U.S. Patent No. 7,135,786 (’786 patent), which covers a wind-driven generator that can use wind power to charge the battery that runs an electric motor.  The ’786 patent describes an enclosure with controllable shrouds (16) that can open and close to channel air to turbine (18).

The rotational energy of the turbine causes an alternator or generator to generate electricity, which charges the storage battery (52).  A regulator (50) prevents overcharging of the battery.

According to the CitizensVoice article, Deets, who has a pilot license, was inspired by the use of wind to run electric motors on older airplane models.

Deets and Ford aren’t the only ones exploring the possibility of tapping different renewable energy sources for cars – Sunrise Solar is making a solar-collecting sunroof that could charge a battery or power a vehicle’s air conditioner.

VUTEk Finds LED “Cure” for Leggett Printer Patent

September 15th, 2008

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I’ve noticed that the most commonly-litigated category of clean tech patents seems to be light-emitting diode (LED) patents.  I suspect this is because LEDs have such a wide variety of uses, from instrument panels to traffic lights to cell phones as an energy-efficient substitute for incandescent bulbs. 

One such use that I recently learned about is as an ultra-violet light source to dry ink in digital ink jet printers. 

Leggett & Platt, Inc. (L&P) is a Missouri-based company with several different product segments, including residential furnishings, industrial materials, and specialized products such as sewing machines and industrial printers. 

In May 2005, L&P sued VUTEk (which now appears to be owned and operated by Electronics for Imaging, Inc.) in the Eastern District of Missouri, alleging that the digital printer maker’s  PressVu UV printers infringe L&P’s U.S. Patent No. 6,755,518 (’518 patent).

Some printing materials bend or warp when exposed to the heat or infrared radiation used by digital printers.  The ’518 patent describes a method and apparatus for printing ink on such deformable materials without causing them to deform. 

To print on these materials, the ’518 patent describes a “cold” ultra-violet (UV) radiation source and the use of an ink that can be cured (i.e., dried) by exposure to UV radiation.  Some of the claims of the ’518 patent recite a cold UV assembly effective to “substantially cure the ink,” a term the district court interpreted to mean “cured to a great extent or almost completely cured.”

Last month, the U.S. Court of Appeals for the Federal Circuit (the federal court that hears all appeals of patent cases) affirmed the district court’s judgment that the asserted claims of the ’518 patent are invalid as “anticipated” by a prior art reference (if all of the elements of a patent claim are expressly or inherently disclosed by a publication that pre-dates the filing date of a patent, the patent is anticipated by the reference and deemed invalid). 

The dispositive issue in the case was whether the prior art reference, U.S. Patent No. 6,457,823 (’823 patent), discloses a cold UV source that is effective to substantially cure the ink.  The Federal Circuit found that the ’823 patent expressly discloses that LEDs, which can provide cold UV light, will cure the ink 75-80%.

The court further held that the LEDs disclosed by the ’823 patent necessarily are effective to substantially cure the ink, and therefore the ’823 patent inherently anticipates the ’518 patent:

Thus, while the ’823 patent may not expressly disclose that the LEDs cure the ink to a great extent, it inherently discloses LEDs that are “effective to” do so.

The Federal Circuit affirmed that P&L’s ’518 patent is invalid and, because an invalid patent cannot be infringed, VUTEk escaped infringement. 

Nichia and Seoul Semiconductor LED Patent Wars Continue

September 12th, 2008

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I’ve written several posts about the legal wrangling between Japanese LED maker Nichia Corp. (Nichia) and its Korean competitor Seoul Semiconductor Company, Ltd. (Seoul).  Last month Nichia opened a new front in the companies’ patent wars with a suit filed in the Eastern District of Michigan.

The complaint alleges that Seoul’s Acriche brand light sources (pictured above) contain LEDs that infringe Nichia’s U.S. Patent No. 6,870,191 (’191 patent).  The Acriche product line has been getting some press because it supposedly is the first LED product that does not require an AC/DC converter and therefore can plug directly into ordinary AC electrical outlets.

The complaint also names Avnet, Inc., one of Seoul’s authorized distributors of LEDs, as a defendant.  Nichia is requesting an injunction and damages, as well as a complete list from defendants of the entities from whom they purchased any allegedly infringing products.

The ’191 patent is directed to an LED where the surface of the substrate, or backing material, is roughened with recesses or protrusions.  The roughened surface serves to scatter or diffract the light generated in the semiconductor layers of the LED and increases the LED’s output power.

This patented structure alleviates the problem created when light from the light emitting region of the LED enters the inner surface of the LED’s conductive material or the outer surface of the substrate at an angle too large for efficient propagation and effective transmission.

With litigation in Korea, Japan, California, Michigan and the U.S. International Trade Commission involving LED patents, LED design patents and even false advertising claims, we’ve almost reached the point where a new lawsuit between Nichia and Seoul is no longer news.

Arter Neon Accuses Spa Equipment Maker of Infringing LED Sign Copyrights

September 9th, 2008

Arter Neon & LED Sign, Inc. (Arter Neon) is a Los Angeles area company that designs and sells neon and LED signs for retail and business displays.  Pong C. Kao is a principal of Arter Neon and the creator of several copyrighted signs and works of art sold by the company.

Kao is the named author on U.S. Copyright Registration Nos. VAu 742-862 for a “Scissors” LED design VAu 750-093 for a series of of neon and LED works.  Kao also has two applications pending before the U.S. Copyright Office for designs for a “Reflexology” sign and a “Foot Massage” sign.  Arter Neon is the exclusive licensee of these copyrights.

Last month, Arter Neon and Kao filed a complaint (arterneoncomplaint.pdf) in federal court in Los Angeles against Touch of Asia Spa Equipment, Inc. (TOA) and its principals and employees, alleging that TOA infringed Kao’s copyrights and breached a license agreement between the parties.

In July 2007, Arter Neon and TOA entered into a license agreement which permitted TOA to distribute signs containing some of Arter Neon’s copyrighted designs.  According to the complaint, Arter Neon provided TOA with images of the designs for TOA’s web site, and all orders for those products were to be forwarded to Arter Neon. 

The agreement prohibited TOA from manufacturing products containing the copyrighted designs or obtaining such products from a third party.

The complaint alleges that, during a delivery in June 2008, Kao noticed signs in TOA’s showroom that displayed the Arter Neon copyrighted designs but were not made by or purchased from Arter Neon.  When Kao confronted one of the principals of TOA, Hong Ju Liu, Liu allegedly refused to stop selling the third party merchandise.

According to the complaint, Arter Neon sent TOA written notice that it was terminating the agreement later that day.  The letter also requested that TOA cease and desist the infringing conduct.  The complaint alleges that a private investigator subsequently purchased infringing signs from KOA, and KOA continues to infringe.

On the copyright infringement claim, Arter Neon asks for an injunction and either compensatory damages (based roughly on the copyright holder’s lost profits) or statutory damages (the Copyright Act provides the option of calculating damages as a set figure, between $750 and $30,000 at the court’s discretion, per infringing work).

Should Arter Neon succeed on the breach of contract claim, the damages probably would have to be parsed by the type of breach.  This is because the license agreement has a “liquidated damages” clause, a provision that sets the damages sum for certain breaching acts. 

Here, the clause provides that failure to pay royalty payments and “unauthorized usage” of the copyrighted designs render KOA liable for $5,000 per instance of failure or unauthorized use. 

One potential area of contention is whether KOA’s purchases of signs containing the copyrighted designs from a third party constitute an unauthorized use of the designs subject to the liquidated damages clause or are another type of breach for which the damages amount is calculated by other methods. 

The specificity of the enumerated breaches in the liquidated damages clause (and the placement of the prohibition against purchasing the signs from a third party in a separate paragraph) seems to indicate that those acts are not subject to the provision. 

In any event, this case is definitely subject to the “be careful what you ask for” maxim – when Kao warned Liu that KOA’s conduct violated the license agreement and constituted copyright infringement, she allegedly replied, “go ahead and sue me.”

Greenline and Agri-Process Fight for Home Court Advantage in Biodiesel Processor Dispute

September 7th, 2008

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In a previous post, I wrote about a lawsuit between California biofuel processor design company Greenline Industries (Greenline) and Agri-Process Innovations (API), an Arkansas engineering firm. 

That suit, pending in federal court in Oakland, California, involves copyrighted processor designs as well as accusations of stealing trade secrets, breaching a processor installation agreement and engaging in false advertising.

In June API moved for the California case to be transferred to Arkansas, where it had previously sued Greenline over the same issues.  Shortly thereafter, in the Arkansas suit, Greenline moved for the case to be transferred to California.

In the event that two lawsuits involving the same parties and same issues are filed in different jurisdictions, federal courts apply a first-to-file rule to to determine where the suit will proceed. 

In a recent order (greenlineorder.pdf), Judge Claudia Wilken found that, because API sued in Arkansas before Greenline filed its California complaint, the Arkansas suit has priority for purposes of the first-to-file rule.  However, Judge Wilken denied API’s motion to transfer and deferred to the Arkansas court to decide the appropriate forum for the case on Greenline’s pending motion there.

Given the dueling venue motions (and the cost in attorney time they require), it’s clear that the parties think they have much to gain from fighting their battle on friendly home turf.

Kitchens and Web Sites Become Green Certifiable

September 5th, 2008

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There are two new green certifications to report.  First, FoodServiceWarehouse.com (FSW) has launched the Going Green Program, a comprehensive green certification program for commercial kitchens. 

The program includes a free certification process, as well as educational resources and incentives for kitchens to go green, such as extended warranties on energy efficient equipment. 

How much do commercial kitchens impact a building’s energy consumption?  This Matter Network story reports that, according to the U.S. Environmental Protection Agency’s Energy Star program data, commercial buildings with commercial kitchens use about 2.5 times more energy per square foot than buildings without kitchens.

Last month FSW filed a certification mark application (greenkitchenapp.pdf) with the U.S. Patent & Trademark Office for its CERTIFIED GREEN COMMERCIAL KITCHEN logo eco-mark (top).

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From kitchens to the internet, where CO2Stats offers the Green Certified Site carbon offset program for web sites.  Subscribers to the CO2Stats program insert a piece of HTML code which calculates the carbon emissions of the site.

The calculation includes both the energy used to run the web site and the power used by visitors to the site.  Based on the emissions calculation, CO2Stats buys renewable energy certificates for subscribers that offset the carbon footprints of their web sites.

Of course, the Green Certified Site certification is something I absolutely must have for this site, so I subscribed.  I just need to plug in that HTML code to green Green Patent Blog.  Too bad I don’t run a commercial kitchen…