Archive for January, 2010

Mitsubishi Powers Past GE in ITC Wind Turbine Case

January 27th, 2010

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Mitsubishi has pulled off a come-from-behind victory in a wind turbine patent case against General Electric (GE) in the U.S. International Trade Commission (ITC). 

In a Notice issued on January 8th, the ITC terminated its investigation of GE’s complaint and found Mitsubishi did not violate any claims of the three patents asserted by GE.

GE filed the complaint in March of 2008, accusing Mitsubishi of infringing certain claims of U.S. Patent Nos. 5,083,039 (’039 Patent) and 6,921,985 (’985 Patent).  GE later amended the complaint to include U.S. Patent No. 7,321,221 (’221 Patent). 

The ’039 Patent is entitled “Variable speed wind turbine” and is directed to a variable speed turbine that provides responsive control of generator torque. 

The ’985 Patent is entitled “Low voltage ride through for wind turbine generators” and is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system. 

The ’221 Patent is entitled “Method for operating a wind power plant and method for operating it” and is directed to improved methods for stabilizing the supply voltage to a wind turbine after voltage drops without jeopardizing the electrical components of the turbine.  

A more detailed discussion of the asserted patents can be found in my previous post on the federal court case between GE and Mitsubishi here.

The ITC decision to let Mitsubishi off the hook reversed an administrative law judge’s (ALJ) ruling in August of last year that Mitsubishi had violated the ’039 and ’985 Patents. 

Shortly after the ALJ decision, an ITC investigative attorney filed a petition with the ITC commissioners questioning certain infringement findings and raising concerns about whether GE met the domestic industry requirement of Section 337.

The Notice of Termination clears the way for Mitsubishi to assemble its imported turbine components and build a $100 million wind power plant in Forth Smith, Arkansas.

Santa Clara Law Journal to Hold Clean Tech Symposium

January 22nd, 2010

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The Computer and High Technology Law Journal (CHTLJ) at Santa Clara University School of Law is hosting a symposium next week on legal issues in clean technology, including a panel discussion on international IP issues.

The event will be held on Friday, January 29, 2010 at the Computer History Museum in Mountain View, California, and California MCLE credit is available for those who attend.

The event is entitled “The Clean Technology Revolution:  Developing Solutions for Tomorrow’s Legal Challenges” and consists of four panel sessions, including a discussion with in-house counsel and venture capitalists about the issues affecting their businesses, legal issues raised by the smart grid, issues in international IP and technology transfer, and the impact of government regulation and access to government funding. 

The keynote speaker will be Paul Dickerson, former COO of the U.S. Department of Energy’s Office of Energy Efficiency and Renewable Energy and current partner at the Haynes and Boone law firm.

I will be participating in the panel session on international IP issues along with Todd R. Miller of Jones Day, Cal – Berkeley Economics Professor Bronwyn Hall and Santa Clara Law Professor Colleen Chien.

More about the symposium and registration info are available online at the CHTLJ web site here.

From Preclusion to Exclusion? ITC Staff Supports Paice Summary Judgment Motion

January 20th, 2010

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In two previous posts (here and here) I discussed the patent infringement case between hybrid drivetrain technology company Paice LLC (Paice) and Toyota in the U.S. International Trade Commission (ITC).

In September of last year, Paice filed a complaint in the ITC asking the agency to investigate whether Toyota’s importation of the third generation Prius, the Camry hybrid and two Lexus models (Accused Products) infringed U.S. Patent No. 5,343,970 (’970 Patent).

After the ITC agreed to open an investigation, Paice moved for summary determination of infringement, validity and enforceability of the ’970 Patent. 

Specifically, Paice contended that Toyota was barred from asserting a defense of non-infringement of the ’970 patent and from challenging the validity or enforceability of the ’970 patent under the principles of claim preclusion and issue preclusion because of a prior federal district court and appeals court ruling against Toyota.

In a response issued in December and made public earlier this month, the ITC staff agreed with Paice and supported its motion.   The response noted that, although the Accused Products are different from those at issue in the federal court case, Toyota admitted that the hybrid drivetrains are materially the same as the vehicles found to infringe in that lawsuit.

Compounding Toyota’s troubles was a ruling last week in the same case in which the ITC staff opposed the automaker’s cross-motion for summary judgment that claim preclusion should bar Paice from obtaining any remedy in the investigation. 

The response rejected Toyota’s argument because claim preclusion applies only to the cause of action and does not include the ensuing remedies.

Assuming the administrative law judge follows the recommendations of the ITC staff, the only remaining issue would be whether Paice meets the “domestic industry” requirement. 

19 U.S.C. 1337 requires that there be an industry in the U.S. relating to the products at issue, which includes both an economic prong (demonstrated investment in plant/equipment, labor/capital, research and development or licensing) and a technical prong (demonstrated practice of the asserted intellectual property right).

Now the big question is whether Toyota will continue to fight or decide to fold and pay royalties to Paice.  If the case moves forward, it will be interesting to see whether the ITC finds Paice’s engineering, R&D and licensing activities in the U.S. suffice to meet the domestic industry requirement.

Considering what is at stake in this case – Paice has requested a permanent exclusion order barring entry into the U.S. of the Prius, Camry hybrid and the two accused Lexus models – I wonder if and when the mainstream media will start to pay attention.

Litepanels Asserts Film Production LED Lighting Patents

January 7th, 2010

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Litepanels, LTD, a UK company, and Litepanels, Inc., a Los Angeles-based corporation (collectively ”Litepanels”), make LED lighting systems for use in film and TV production. 

Last month Litepanels sued Dot Line Corp. (Dot Line) and Infocus Camera & Imaging, LLC (ICI) in federal court in Tyler, Texas, alleging infringement of U.S. Patent Nos. 6,948,823 (’823 Patent) and 7,604,361 (’361 Patent) (litepanels_complaint.pdf). 

The ’823 Patent is entitled “Wide area lighting apparatus and effects system” and is directed to a camera mountable lighting frame (302) having multiple lamp segments (306) arranged in a radial pattern around a center hole (303).  Each lamp segment 306 comprises a plurality of LEDs (305).

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The portable frame could be circular (as picture above) or rectangular.  When the portable frame is mounted to a movable camera, the frame follows the movements of the camera.

The ’361 Patent is a continuation-in-part of the ’823 Patent and is entitled “Versatile lighting apparatus and associated kit.”  It is directed to an LED light panel with a self-contained battery unit that provides power to the light elements but not to the camera.

Litepanels previously asserted the ’823 Patent against Sony, which quickly settled the case about a month after the complaint was filed.

Cornell Spin Out Catalyzes CO2-Based Plastic Wrap

January 3rd, 2010

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Novomer, Inc. (Novomer) is a Cornell University spin out that makes green plastics, polymers and other chemicals from carbon dioxide and other renewable raw materials. 

Novomer uses catalysis systems invented by Cornell professor Geoffrey Coates, and patented by the university, to make various polymers.  One of the company’s primary products is polypropylene carbonate (PPC), known as NB-180, which consists of 50% fossil fuels and 50% carbon dioxide.

Through Coates’s chemical catalysis, epoxides (fossil fuel materials) can be reacted with carbon monoxide or carbon dioxide at low temperatures and pressures to produce high performance polymers that provide better barriers for storing food and decompose into environmentally benign products, according to the company’s web site.

U.S. Patent No. 6,133,402 (’402 Patent) relates to zinc- and other metal-based catalysts for co-polymerization of alkylene oxides and carbon dioxide.  U.S. Patent No. 7,304,172 (’172 Patent) is directed to cobalt catalysts, various co-catalysts and reversible chain transfer agents for use with cobalt catalysts for co-polymerization of propylene oxide and carbon dioxide. 

The ’172 Patent claims a few different catalysts, including a cobalt catalyst having the following general structure:

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Novomer also owns International Patent Application Pub. No. WO 2009/148889 (’889 Application), which published last month and is directed to methods of controlling the molecular weight distribution of polymers made by addition polymerization reactions.  The ’889 Application incorporates by reference the ’402 and ’172 Patents and some of Coates’s scientific publications.

Novomer recently partnered with Kodak to build a pilot production facility to make plastic wraps and coatings for testing by prospective customers.  According to this Greentech Media story, because of the huge amounts of oil that go into plastics manufacturing, if Novomer’s process were to go universal U.S. fuel consumption could drop by 5%.