Archive for November, 2009

Green Patent Predictions: Law Firm Forecast Predicts Rise in Clean Tech Patents

November 24th, 2009

The Woodcock Washburn law firm recently released its 2009 Cleantech Patent Forecast, which predicts rising numbers of clean tech patents in the next few years.

The firm used a proprietary algorithm to predict future clean tech patent trends based on past and current trends in various clean tech sectors.  The sectors analyzed by the report are wind, solar, biofuels, hybrid-electric and fuel cells, all of which are predicted to see growth.

The projected growth in issued patents is as follows:

wind – from 236 in 2008 to almost 600 in 2012

hybrid-electric – from 743 in 2008 to over 1,400 in 2012

solar – from 363 in 2008 to over 900 in 2012

biofuels – from 140 in 2008 to 530 in 2012

fuel cells – from 723 in 2008 to 931 in 2011, down to 912 in 2012

According to the report, the relatively slow growth in fuel cell patents reflects the maturity of the sector compared to the other clean tech sectors.

Whether or not the forecasted stats turn out to be accurate, few would dispute the report’s predictions as to the general trajectory of green patents.

A123 Asks Appeals Court to Reinstate Home Court Advantage in Battery Patent Suit

November 20th, 2009

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In April 2006 A123 Systems Inc. (A123), a Boston area lithium ion battery maker, brought a declaratory judgment action against Canadian utility Hydro-Quebec (H-Q) in federal court in Boston seeking declarations that A123 did not infringe U.S. Patent Nos. 5,910,382 (’382 Patent) and 6,514,640 (’640 Patent) and that the patents are invalid.  H-Q is the exclusive licensee of the ’382 and ’640 Patents.

The ’382 and ’640 Patents are entitled “Cathode materials for secondary (rechargeable) lithium batteries” and relate to host materials for use as electrodes in lithium ion batteries.  The patented materials provide a larger free volume for lithium ion motion that allows higher conductivity and therefore greater power densities.

In September 2006 A123 requested a stay of the Boston case pending the resolution of re-examination of the two patents in the U.S. Patent and Trademark Office (PTO).  The court dismissed the case without prejudice so the parties could subsequently move to reinstate it.

Also in September 2006, H-Q and the University of Texas (UT), which owns the ’382 and ’640 Patents, sued A123 for infringement of the patents in federal court in Texas.

This spring, after the PTO completed its re-examination of both patents, A123 asked the court in Boston to reopen its DJ action.  A123 argued that the Boston case should take precedence over the pending Texas action because it was the earlier filed case.

However, in a recent memorandum opinion (a123_memorandum.pdf) Judge Tauro of the U.S. District Court for the District of Massachusetts ruled that the Boston action could not be reinstated because A123 had failed to join the University of Texas.

Judge Tauro held that UT was a necessary party as the owner of the patents-in-suit because UT had not transferred all substantial rights in the patents to H-Q (the H-Q license contained some field of use restrictions).

Not only was UT not joined by A123, but UT could not be joined as a defendant in the Boston suit, the memorandum opinion held, because it is immune from suit.  Under the Eleventh Amendment, a federal court cannot hear a suit against a state without the state’s consent.

Last month A123 appealed (a123_notice_of_appeal.pdf) Judge Tauro’s order denying the motion to reopen the case (a123_order.pdf) to the Court of Appeals for the Federal Circuit (the appellate court that hears all patent appeals).

At least prior to A123′s appeal and Judge Tauro’s order, the Cleantech Litigation blog reported that the parties were trying to settle the suit. 

DVD Standards Groups Accused of Freezing Out EcoDiscs

November 15th, 2009

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EcoDisc Technology AG (EcoDisc AG) is a Swiss company that has developed the EcoDisc, a thinner, lighter eco-friendly DVD.  According to EcoDisc AG, its technology provides a 52% reduction in carbon dioxide emssions compared to a standard DVD.

Specifically, the EcoDisc uses about 50% less polycarbonate (an oil derivative) and needs about 50% less energy for production.  It is 0.6 mm, about one-half the thickness of a standard DVD, which typically comprises two 0.6 mm discs epoxied together.  Also, the EcoDisc can be recycled due to the absence of toxic bonder.

Last month, EcoDisc AG sued the DVD Format/Logo Licensing Corporation (DVD FLLC) and the DVD Forum in federal court in Los Angeles, alleging that the two DVD standards organizations have acted to suppress the use of EcoDisc technology, violating antitrust and false advertising laws.

Manufacturers, or “replicators,” that want to produce DVD products using DVD FLLC specifications and the familiar DVD logo owned by DVD FLLC (pictured below) have to obtain a license to do so.

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According to the complaint (ecodisc_complaint.pdf), DVD FLLC recently sent a written communication to all of its licensed replicators stating that any replicator that manufactures 0.6mm discs, including EcoDiscs, would be in breach of the DVD FLLC license agreement and could have its license terminated.

The complaint also alleges that DVD FLLC recently filed a sham lawsuit against one of EcoDisc AG’s customers.

EcoDisc AG is asking the court for injunctive relief and and an order that defendants post and disseminate corrective advertising.

Apparently, EcoDisc AG has had some recent success in combatting DVD FLLC.  According to the complaint, in April a German court issued a preliminary injunction against DVD FLLC, prohibiting the organization from stating to EU replicators that the manufacture of 0.6mm discs is in breach of the license agreement and might lead to termination of the license.

Akeena DJ and Infringement Action Aims to Ease Mounting Tension

November 12th, 2009

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Akeena Solar is a Los Gatos, California solar installer and the owner of U.S. Patent No. 7,406,800 (’800 Patent”), entitled “Mounting system for a solar panel” and directed to an integrated module frame and racking system for solar panels.

The ’800 Patent describes a mounting system for a solar panel (100).  FIG. 2 shows three modules (102A-102C) coupled together to form an integrated system.  A splice (104e) mechanically connects one module to another and provides the electrical grounding connection between the solar modules.

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In the example shown in FIG. 2B, an east-west splice (104) connects modules (102A and 102B).  The splice (104) is a tapered conductive metal to provide the grounding between modules and is grooved for easy screw insertion.  The splice (104) precisely aligns the modules and allows for compression of connector sockets to complete the electrical connection between adjacent modules.

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According to the ’800 Patent, the splice (104) provides several useful features, including mechanical rigidity between modules, an alignment method between modules and a grounding path that eliminates the need to run a grounding wire between the modules.

Last month, Akeena sued Zep Solar, Inc. (Zep), groSolar and High Sun Technology, Inc. (HST) in the Northern District of California. 

The complaint (akeena_complaint.pdf) contains two counts.  The first is against groSolar and HST for infringement of the ’800 Patent.  According to the complaint, Zep’s solar panel mounting system infringes the ’800 Patent, and groSolar has teamed up with Zep to distribute and install Zep systems.

The second claim is against Zep and HST for a declaratory judgment that Akeena does not infringe Zep’s U.S. Patent No. 7,592,537 (’537 Patent), entitled “Method and apparatus for mounting photovoltaic modules.” 

The complaint bases DJ jurisdiction on a couple of e-mails between the parties.  Specifically, the complaint alleges that Zep sent an e-mail to Akeena’s counsel to bring the ’537 Patent to its attention, and Zep’s CEO sent an e-mail to Akeena’s president regarding the ’537 Patent and stating that “Zep’s legal team is ready for a fight if that is what is needed.”

Though solar installers don’t invest as heavily in IP as other players in the solar sector, it is an increasingly crowded field that may see more patent suits like this one in the future.

Biofilm, Bugs and Bioreactors: The IP Behind Coskata’s New Biofuel Facility

November 8th, 2009

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In a previous post, I wrote about Coskata’s patent-pending ethanol production process.  The Illinois-based cellulosic ethanol company’s proprietary technology makes ethanol from various feedstocks by converting it to synthesis gas, or syngas, and then fermenting the gas using anaerobic microorganisms.

Coskata owns Patent Application Publication Nos. 2008/0305539 and 2008/0305540, directed to a membrane supported bioreactor system for converting syngas to biofuels (collectively “Bioreactor Applications”). 

According to the Bioreactor Applications, the disclosed processes boost efficiency by using one side of a membrane as the syngas contact surface and the opposite side as the surface for growing the microorganisms.  The gas is fed onto the contact side and transported through the membrane to a biofilm of anaerobic microorganisms, where it is fermented into biofuels.

Last month, Coskata opened a semi-commercial ethanol facility in Madison, Pennsylvania that makes ethanol using the company’s microorganisms and bioreactor technology.  According to the company’s press release, the flex facility will produce ethanol from numerous feedstocks, including wood biomass, agricultural waste, sustainable energy crops and construction waste.

To build the facility, Coskata teamed up with Westinghouse Plasma Corporation, which suppled the gasification technology for the project.

I had the opportunity to speak to Wes Bolsen, Coskata’s CMO, about the new facility, the company’s technology and the company’s IP.  He confirmed that the Pennsylvania facility uses Coskata’s patent-pending bioreactor technology.

Bolsen also told me that Coskata has patents directed to microorganisms used in the fermentation process, but that the company favors trade secret protection for some of the newer strains of “bugs,” including some of those used in the new facility.

According to Bolsen, Coskata ”will continue with patents, trade secrets and whatever combination of the two” the company needs.  “Our IP is the core of this business,” he said.  ”Our IP and innovation is what keeps us ahead in the industry.”

GreenShift-ing Focus to Pre-Grant Damages in Ethanol Processing Patent Suit

November 5th, 2009

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GS CleanTech Corporation (GS), a wholly owned subsidiary of GreenShift Corporation, is a New York company that develops technology relating to energy efficient ethanol production processes.

GS owns U.S. Patent No. 7,601,858 (’858 Patent), entitled “Method of processing ethanol byproducts and related subsystems” and directed to methods of recovering oil from byproducts of ethanol production.

Dry milling is a popular method of producing ethanol by fermentation of the starch in corn or other grains.  However, this method creates a waste stream comprised of byproducts called whole stillage.

According to the ’858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

The ’858 Patent issued on October 13, 2009.  The same day, GS filed suit in federal court in Manhattan accusing New Jersey-based separator and decanter maker GEA Westfalia Separator, Inc. (Westfalia) and multiple as yet unnamed defendants of contributory infringement and inducing infringement of the ’858 Patent. 

According to the complaint (greenshift-complaint.pdf), Westfalia sells centrifuges for corn oil extraction and directs its customers to use the methods taught in the ’858 Patent.

Because the suit was filed upon patent issuance, GS’s recoverable damages are quite limited.  So GS is claiming provisional patent rights under Section 154(d) of the patent statute, which allows recovery of a reasonable royalty if the infringer had actual notice of the published patent application and the claims of the issued patent are substantially identical to the originally published claims.

This strategy demonstrates the importance of promptly notifying any potential infringers as soon as your patent application publishes, which is 18 months after filing in the U.S.

Thanks again to the Cleantech Litigation blog for the head’s up about this case.

KIPO Announces Super Speedy Green Patent App Exam

November 1st, 2009

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The Korean Intellectual Property Office (KIPO) recently announced that green patent applications are now eligible for “super speed” examination that provides examination results in just one month.

The special examination procedure applies to patent applications directed to several categories of technologies relating to the environment or “low-carbon green growth.”

To qualify for the super speedy examination, green patent applicants must request that a prior art search be conducted by one of the three search agencies officially sanctioned by KIPO.

According to the KIPO press release (see 10/20/09 item), the super speed system was to start on October 1 and will cut the already quick Korean timeline “from application to acquire a patent” from an average of 18 months (or three months for preferential examinations) to a stunningly short period:

Using the superspeed examination system . . . the period can be slashed to less than a month, the fastest examination period in the world.

Thanks to Stu Soffer for bringing this news to my attention.