Archive for October, 2010

The Grass May Get Greener: USPTO Floats Plan To Extend and Expand Green Patent Fast Track Program

October 31st, 2010

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The U.S. Patent and Trademark Office (USPTO) recently issued a Notice requesting comments on a proposed plan to extend and expand the Green Technology Pilot Program, which provides accelerated examination for patent applications relating to green technologies.

According to the Notice, the USPTO is considering extending the program to December 31, 2011; it is currently scheduled to end December 8, 2010. 

Also, in what would be a welcome eligibility change, the USPTO is considering expanding the program to include green patent applications filed on or after the December 8, 2009 program launch date; currently, only applications filed before that date are eligible.

If the eligibility change becomes effective, any green patent application that has not yet begun examination will be eligible for the fast tracking program.

The Notice states:

Participation was previously limited to applications filed before December 8, 2009. The USPTO is expanding the eligibility for the pilot program to include applications filed on or after December 8, 2009. The program is also being extended until December 31, 2011. These changes will permit more applications to qualify for the program, thereby allowing more inventions related to green technologies to be advanced out of turn for examination and reviewed earlier.

The public comment period for the Notice ends December 20, 2010.

Expansion of the program to include newly-filed green patent applications was something I called for in a previous post and could have a significant effect on participation.

With this change, the basic eligibility requirements would be as follows:

the application is any non-reissue, non-provisional utility application for which a first office action has not been issued;

the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);

the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and

the applicant must request early publication of the application.

Green Patent Policies & Initiatives: From CIPO to WIPO to Infinity

October 27th, 2010

There has been a flurry of activity on the green patent policy front in recent weeks, including a new green patent database, a green patent study, a green patent bank and a proposed new green patent fast track program.

First, the World Intellectual Property Office (WIPO) recently launched the IPC Green Inventory, an on-line tool to facilitate searches for green patent data (see the WIPO press release here). 

The inventory is linked to WIPO’s International Patent Classification system and contains around 200 topics relevant to “environmentally sound technologies.”  Those categories are based on a set of technological terms listed by the UN Framework Convention on Climate Change.

The goal is to aid interested parties in identifying emerging green technologies and potential partners for R&D and commercialization of these technologies.

Meanwhile, the European Patent Office (EPO) released the results of a global study on the emergence and distribution of clean energy technologies.  The study is entitled “Patents and clean energy: bridging the gap between evidence and policy.”

The patent-based analysis was a collaboration between EPO, the United Nations Environment Programme and the International Centre for Trade and Sustainable Development.

The study showed that six countries – Japan, the US, Germany, Korea, France and the UK – account for 80% of worldwide green patenting activity.

Interestingly, the study indicates that a surge of green patenting activity coincided with the adoption of the Kyoto Protocol in 1997, suggesting a link between the climate change treaty and green tech development.

The study included a licensing component that found only limited licensing activity to developing countries, with the bulk of the activity in Brazil, India and China.  But the data indicates that IP rights are not a principal barrier to clean tech transfer. 

In China, a private equity fund called Infinity Group has launched an IP Bank to fund the commercialization of green IP and clean technologies as well as technologies in other industries (see the IP Wire story here). 

The bank, based in Suzhou, China, will allow ownership and licensing of IP in partnership with entrepreneurs and Chinese companies.

Finally, the Canadian Intellectual Property Office (CIPO) announced proposed amendments to the patent rules that would create an expedited examination program for green patent applications (see the CIPO press release here).

The proposed amendments would accelerate the prosecution of patent applications relating to environmental technologies by providing expedited examination upon submission of a request and a declaration by the applicant. 

In particular, proposed new paragraph 28(1)(b) would provide that the Commissioner can advance a patent application out of turn on the request of:

(b)  the applicant, if the applicant files with the Commissioner a declaration indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.

Nichia Sues U.S. Tool Maker Over LED Patents

October 24th, 2010

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Japanese LED maker Nichia has initiated another patent infringement suit, this time against a Washington state hand tool company called Wilmar Corporation (Wilmar). 

The complaint (nichia-wilmar-complaint.pdf), filed in the Eastern District of Texas in Marshall, accuses Wilmar of infringing U.S. Patent Nos. 5,998,925 (’925 Patent), 7,531,960 (’960 Patent), 5,652,434 (’434 Patent) and 6,093,965 (’965 Patent).

The ’925 and ’960 Patents are members of the same patent family.  The two related patents describe a light emitting diode (100) that minimizes deterioration in emission light intensity by including a phosphor in the coating resin (101) that covers the light emitting component (102). 

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According to the ’925 Patent, incorporating a phosphor in the LED reduces deterioration: 

the phosphor used in the light emitting device has excellent resistance against light so that the fluorescent properties thereof experience less change even when used over an extended period of time while being exposed to light of high intensity.  This makes it possible to reduce the degradation of characteristics during long period of use and reduce deterioration due to light of high intensity emitted by the light emitting component . . . to provide a light emitting device which experiences less color shift and less luminance decrease.

The ’434 and ’965 Patents, entitled “Gallium nitride-based III-V group compound semiconductor,” are related patents in a different family. 

The “III-V” in the title refers to those columns of the periodic table, and the full title means a nitride semiconductor of a Group III element containing gallium, such as GaN, GaAlN, InGaN or InAlGaN.

These patents are directed to an LED (10) having an electrically insulating substrate (11) and a layer (12) of an n-type gallium nitride-based III-V Group compound semiconductor on a surface (11a) of the substrate. 

A layer (13) of a p-type gallium nitride-based III-V Group compound semiconductor is formed on the surface of the n-type semiconductor layer (12) (the “p” means that extra positive charge is added to the semiconductor; the “n” means extra negative charge is added).

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A p-type electrode (15) covers the surface of the p-type semiconducting layer (13), which is partially etched away to partially expose the surface of the n-type semiconductor layer (12).  An n-type electrode (14) is formed on the exposed surface portion of the n-type semiconductor layer (12).

The p-type electrode (15) is connected with a bonding wire (21) at a bonding pad (17) formed on a portion of the surface of the p-type electrode (15).

According to the ’434 and ’965 Patents, prior gallium nitride-based III-V semiconductors suffered from conductivity problems. 

They also required that light be observed on the side of the substrate, opposite the side of the semiconductor layers, which led to large chip sizes.  

According to the ’434 and ’965 patents, the patented structure is a major improvement for this type of LED and alleviates these problems.   

Nichia’s complaint doesn’t name any specific accused products, but Wilmar makes headlamps and flashlights that incorporate LED lighting.

Nichia has aggressively asserted its LED patents in recent years, including in a global patent war against Korean rival Seoul Semiconductor that the parties settled last year.

Toyota Tends Gardner with Hybrid Vehicle Patent Win

October 19th, 2010

In a previous post, I wrote about patent attorney-inventor Conrad O. Gardner’s infringement suit against Toyota in which he accused the automaker of infringing U.S. Patent No. 7,290,627 (’627 patent). 

In that case, Gardner alleged that Toyota infringed the ’627 Patent by making and selling the second generation Prius, the Camry hybrid and the Highlander hybrid.

The ’627 Patent is entitled “Extended range motor vehicle having ambient pollutant processing” and is directed to a hybrid vehicle control system which controls the relative contribution of driving force from an internal combustion engine and an electric motor by sensing the vehicle’s speed and transferring the driving force contributions accordingly.

Last year Toyota succeeded in knocking out one claim of the ’627 Patent, and Toyota has now won the case outright in the district court.

In an order issued last month (gardnerorder.pdf) Judge Richard A. Jones of the U.S. District Court for the Western District of Washington granted Toyota’s motion for summary judgment of non-infringement of the three remaining claims of the ’627 Patent.

The court had previously construed two of the patent’s claim terms “motor-generated driving force transfer means” and “engine-generated driving force transfer means” to mean that an engine drives one set of wheels and an electric motor drives a different set of wheels.

The construction of the first term also required (1) the combination of a drive shaft, clutch, transmission, and axle, or (2) the combination of an electric motor direct drive and axle.

The court found that the Prius, the Camry and the two-wheel-drive Highlander do not infringe the ’627 Patent because in those vehicles the engine and the electric motor both drive the same set of wheels, specifically the front wheels.

The four-wheel-drive Highlander was found to be non-infringing because the separate electric motor that drives the rear wheels is not connected to the wheels through a clutch, nor does it constitute a direct drive.

The court issued a subsequent order (gardnerorder2.pdf) denying Gardner’s motions for partial summary judgment against Toyota’s inequitable conduct counterclaim and invalidity argument.

Gardner has appealed both summary judgment decisions (gardnernotice.pdf).

U.S. Federal Trade Commission Targets LED Lamp Maker for Alleged Greenwashing

October 15th, 2010

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Legal responses to greenwashing – making false or misleading claims about purportedly environmentally friendly products, services or practices – come in two common varieties.

The first is a private lawsuit brought by a consumer or group of consumers as a class action against a company accused of making such claims.  Notable examples include the false advertising suit involving the Honda Civic Hybrid and the class action against SC Johnson regarding use of the Greenlist label on its Windex cleaning product.

The second is a public enforcement action brought by a government agency and/or consumer watchdog on behalf of consumers.  One recent example is the Australian Competition and Consumer Commission action against two solar panel retailers.

In a new example of the latter variety, last month the U.S. Federal Trade Commission (FTC) brought an action against Lights of America (LOA), accusing the California LED lamp maker of violating the FTC Act by making false or unsubstantiated advertising claims about its products.

The complaint (ftc-lights_of_america_complaint.pdf), filed in federal court in Los Angeles, states three counts of such claims, relating to comparisons with incandescent lights, LED brightness claims and product life claims. 

First, the FTC alleges that LOA’s LED lamps produce significantly less light output than a typical incandescent light bulb at the wattage represented in the company’s promotional materials.

Specifically, LOA’s label for a particular LED lamp states that the product replaces a 40-watt incandescent light bulb.  But according to the complaint, the LED lamp produces only 74 lumens of light while a typical 40-watt incandescent bulb produces 405 lumens.

The FTC also alleges that LOA overstated the light output of one its LED lamps by representing that the lamp produces 90 lumens of light when the company’s tests demonstrated that it produces only 43 lumens.

The third count of the complaint states that LOA misrepresented the number of hours its LED lamps would last.  In particular, while LOA claimed that one of its LED recessed lamps will last 30,000 hours independent testing showed that the lamp lost 80% of its light output after only 1,000 hours.

The complaint requests that the court enter a permanent injunction to prevent future violations by LOA and award other equitable remedies on behalf of consumers.

This case comes as the FTC has announced proposed revisions to its “Green Guides,” which provide guidance on how to make environmental marketing claims that are above board, true and substantiated (see the Sustainable Marks blog post on the proposed revisions).

Patenting PETE: Stanford Application Covers New Solar Energy Conversion Technology

October 12th, 2010

Photon enhanced thermionic emission, or PETE, is a relatively new concept in solar energy production.  It is considered a major breakthrough because it utilizes both energy from sunlight (solar photons) and from the heat of the sun.

By harvesting both thermal and photon energy, the PETE process significantly improves the efficiency of solar energy conversion.

A team of researchers at Stanford University led by Professor Nicholas Melosh recently published a paper describing tests conducted using PETE.

Melosh is also a named inventor on a patent application directed to PETE, the eponymously titled U.S. Patent Application Publication No. 2010/0139771 (’771 Application), owned by Stanford University.  The ’771 Application describes the PETE principle and claims a PETE apparatus. 

The process works by thermalizing electrons (110), thereby boosting electron distribution (112).  In general terms, when cathode (104) is illuminated, photons (106) are absorbed to generate electron-hole pairs, and emitted electrons are received by anode (102).

The important thing, according to Professor Melosh, is that instead of electrons separating into their electron-hole pairs inside the semiconductor material, the electrons leave the material, are forced into a small vacuum gap and then collected by another electrode (102).  The ’771 Application states:

PETE is based in part on thermionic emission, where a fraction of Boltzmann-distributed electrons have sufficient thermal energy to overcome the material’s work function and emit into a vacuum.

One key advantage of the process is that the heat of the sun, which goes unused in standard PV, can be harvested and used.  The ’771 Application describes a PETE device set up so that waste heat can go to a thermal engine.

A PETE/solar thermal architecture is shown in Figure 6a of the ’771 Application (shown below).  In this embodiment, radiant energy (610) from the sun (608) is incident on cathode (602).  Electron current (614) emitted from cathode (602) is received at anode (604).

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As a result, the PETE device (620) can provide electrical power to an external load (606), and no separate heating is needed for the cathode (602).  Electrons and photons emitted from the cathode deliver heat energy to the anode, and a thermal engine (618) can remove this excess heat (616) from the anode and use it to generate additional electrical power.

According to a Stanford Report article, the PETE device hits peak efficiency at over 200 degrees Celsius, while most silicon solar cells are rendered inert by the time the temperature reaches 100 degrees.  This is borne out by independent claim 1 of the ’771 Application, which specifically recites a photocathode temperature of greater than 200 degrees Celsius.

The article also says that Melosh calculates the efficiency of the PETE process at 50%, and combined with a thermal conversion cycle, the PETE process could reach 55 or even 60 percent efficiency, almost triple the efficiency of existing systems.  In the words of Professor Melosh, PETE seems to be a “conceptual breakthrough” and a “real win.”

Two-Month Warning for the USPTO Green Patent Fast Track

October 8th, 2010

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Only two months remain for applicants who want to take advantage of the U.S. Patent and Trademark Office’s (USPTO) Green Technology Pilot Program.  The program – a fast track procedure for green patent applications – is scheduled to close its doors on December 8, 2010.

The program launched on December 8, 2009 and lasts just one year.  Although it was limited to only the first 3,000 petitions filed, the program has been undersubscribed and is highly unlikely to max out.  As of late September, only 735 of the 3,000 slots had been filled.

Applicants that wish to participate in the program need to file a petition with the USPTO requesting participation and indicating that their patent application complies with the program requirements. 

The basic eligibility requirements are as follows:

the application is a non-reissue, non-provisional utility application filed before December 8, 2009 for which a first office action has not been issued;

the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);

the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and

the applicant must request early publication of the application.

Like football’s two-minute warning, this post signals that time is running out to move your green patent application down the field. 

But if you miss out on the U.S. fast track, there are still many expeditious green patenting opportunities around the world:  the U.K. Intellectual Property Office, the Korean Intellectual Property Office , IP Australia, the Israeli Intellectual Property Office, the Canada Intellectual Property Office and the Spanish Intellectual Property Office all have or plan to launch procedures to expedite green patenting. 

Court Decision Could Bring Windmill Kite Patent Back Down to Earth

October 5th, 2010

Sky Windpower (Sky) is a California company that markets high altitude wind capture technology.  Sky is the exclusive licensee of U.S. Patent No. 6,781,254 (’254 Patent), which is entitled “Windmill kite” and relates to a flying electric generator (FEG). 

The FEG is essentially a kite with several rotors comprising aerofoil blades (their swept areas indicated by circles 5) attached to platform frame members (3, 4).  Each rotor extends from a nacelle (6) that contains a gear box, a dynamo and a control mechanism to control the angle of the rotor.

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Cables (8) may contain tethering lines to maintain the platform at a substantially fixed location and conductors to connect the dynamos to a ground level electrical supply.

According to the ’254 Patent, the FEG solves problems of the prior art relating to platform stability and the need to winch down the platform during times of weak or no wind.

The ’254 Patent explains that having at least three strategically placed rotors susceptible to blade pitch control stabilizes the platform.  In addition, the dynamos receive power and function as motors to drive the rotors for short periods, thereby keeping the kite aloft when there is no wind.

Bryan W. Roberts, the inventor and owner of the ’254 Patent, has been involved in two rounds of litigation with a company called Baseload Energy (Baseload) over the validity of the patent and certain rights to the technology. 

The first case – a dispute over an agreement between Roberts and Baseload to enter into a joint venture – ended in a Settlement Agreement. 

The Settlement Agreement granted Baseload an option to take a nonexclusive license under the ’254 Patent and contained fairly standard releases from liabilities, claims, etc. for both parties, though the releases expressly excluded disputes arising from the option provision.

After the option lapsed in the fall of 2008, Baseload filed a lawsuit against Roberts in federal court in Washington, DC seeking a declaratory judgment that the ’254 Patent is invalid and unenforceable.  Roberts moved for summary judgment on the ground that Baseload’s claims were barred by the Settlement Agreement. 

The district court granted the motion and held that the terms of the Settlement Agreement barred “all claims between the parties.” 

Baseload appealed, and in a recent decision, the U.S. Court of Appeals for the Federal Circuit reversed.  The Federal Circuit held that the language of the Settlement Agreement did not release claims of infringement of the ’254 Patent or the accompanying defenses of invalidity or unenforceability.

According to the decision, the release provision was not sufficiently clear and unambiguous to release patent invalidity claims because it lacked specific language regarding invalidity issues.  The existence of the option provision was also significant because, the Federal Circuit reasoned, a license wouldn’t be necessary where infringement claims are barred:

Most importantly, the parties could not possibly have intended to release any and all patent infringement claims, because the Settlement Agreement granted Baseload an option to acquire a nonexclusive license to use the technology claimed by the ’254 patent.  The license provision would be unnecessary if all infringement claims under the ’254 patent were released. . . .The parties must have intended to exclude infringement from the scope of the Settlement Agreement.

The Federal Circuit went on to hold that if infringement claims were preserved, the associated defenses of invalidity and unenforceability were also preserved.

The Federal Circuit remanded the case to the district court, where Baseload’s invalidity and unenforceability claims will go forward.