Archive for January, 2011

Smart Meter Patent Suit Survives Silver Spring’s Indefiniteness Challenge

January 31st, 2011


Mesh Comm is an Atlanta, Georgia, company and the owner of U.S. Patent No. 7,379,981 (‘981 Patent) relating to a system for enabling wireless communication between meters so utilities can remotely monitor and control energy usage. 

Entitled “Wireless communication enabled meter and network,” the ‘981 Patent is directed to a wireless network comprising (1) a “network cluster” of at least two networks, with each composed of individual wireless transceivers called “virtual nodes” that measure, collect, and transmit utility usage data, (2) a “virtual gate” or “VGATE” that links the virtual nodes to an external network, and (3) a “virtual network operations entity” or “VNOC,” that transmits, receives, and translates data from one format to another.

The patented technology operates on Bluetooth wireless protocol but is designed to overcome the limitation that  Bluetooth networks can support a maximum of only eight devices.  The system solves this problem by linking two or more Bluetooth devices together to form network clusters.

In fall 2009 Mesh Comm sued PEPCO, a utility, and Silver Spring Networks, a California smart grid solutions developer, in federal court in Maryland, alleging that certain wireless communication enabled meters and networks the defendants were making, using, and selling infringed the ‘981 Patent (MeshComm_Complaint).

Last month the court construed 24 patent claim terms and denied defendants’ summary judgment motion challenging claim 1 (the only asserted independent claim) as being invalid for indefiniteness under Section 112, paragraph 2 of the Patent Act (MeshComm_Opinion).  This provision provides that patent claims must “particularly point[] out and distinctly claim[]” the subject matter of the invention.

It’s hard to determine which side got the better of the claim constructions because there were so many terms at issue, and most were construed in accordance with the express language of the ‘981 Patent.

As to the indefiniteness ruling, defendants challenged the claim term “associated with” in the phrases “self-configuring virtual node associated with the first network” and “a wireless communication connection between at least [one] virtual node associated with the first network and at least one virtual node associated with the second network.”

The court rejected defendants’ contention that “associated with” was indefinite because it has multiple possible meanings, holding instead that the term can be given a meaning in light of the ‘981 Patent’s claims and description.  The court construed the term to mean “wirelessly connected to.”

The court also held the term “module” was not indefinite because references to the term in the ‘981 Patent convey the requisite structure for performing the claimed functions.

So this case appears to be moving forward.  This is not the first time Mesh Comm has asserted the ‘981 Patent against smart meter makers and utilities.  Mesh Comm has sued E.On, Louisville Gas & Electric, and Trilliant in KentuckyLandis+Gyr and Oncor Electric in Texas, and EKA Systems and Tampa Electric Company in Florida.

Furthermore, Mesh Comm, apparently a non-practicing patentholder (NPP), is not the first NPP to make its presence felt in the smart grid space.  Sipco LLC, another Atlanta-based owner of wireless communication network patents, sued Florida Power & Light as well as a number of smart meter makers for patent infringement.

Energy Recovery Spins Out Energy Savings for Desalination

January 28th, 2011

Energy Recovery Inc. (ERI), a company based in San Leandro, California, has developed technology that reduces the amount of energy required for desalination. 

The technology does not directly relate to filtering water, but instead harnesses the pressure in the wastewater stream of reverse osmosis systems and transfers that pressure to the incoming feed stream to reduce the energy required to run the desal process.

According to ERI’s web site, the technology in its PX device (pictured above) has led to seven U.S. patents and international patents. 

Tim Dyer, the company’s CTO, commented on ERI’s IP.  “We innovate and create intellectual property along the way to address existing and emerging industrial energy recovery needs.  Our strategy drives our IP, and our IP drives our strategy.”

U.S. Patent No. 7,201,557 (‘557 Patent) relates to some of ERI’s fundamental innovations.  Entitled “Rotary pressure exchanger,” the ‘557 Patent is directed to a pressure exchange apparatus for transferring the pressure of a high pressure fluid stream to a lower pressure fluid stream.

The rotary pressure exchanger (11) has a housing (13) containing a rotor (15) with a plurality of channels (16).  A low pressure seawater feed stream from a reverse osmosis system is pumped through a straight inlet conduit (39) and fills an inlet passageway (41).

At the same time, high pressure brine from the reverse osmosis system is pumped through an elbow conduit (51), fills a plenum chamber (53) and enters axial channels (16), causing the rotor (15) to spin.

As the rotor (15) spins, there is periodic alignment of each channel (16) with the opening to a discharge seawater passageway (65) in an upper end cover (19).  According to the ‘557 Patent, whenever this alignment occurs the seawater in the channels is instantly pressurized.

Thus, the pressurized seawater is caused to flow out of the channels, fill an upper plenum chamber (45) and exit through an elbow discharge conduit (43).

Similarly, when a rotor channel (16) is aligned with the opening to the seawater inlet passageway (63) and the opening to the brine discharge passageway in the lower end cover (21), the seawater forces the low pressure brine out of the pressure exchanger (11) through the straight discharge conduit (49). 

ERI’s pressure exchanger has the advantage of simplicity, with the rotor being the only moving part.  The rotor and associated components seal the high pressure portion of the reverse osmosis process by keeping high and low pressure separate without the need for pistons.

According to ERI’s web site, the PX device makes desalination more economical and less energy intensive by reducing the amount of energy required by up to 60%.

Report Reveals Surprise Patent Champ for Hybrid Cars

January 25th, 2011

Last month the Griffith Hack law firm and patent analytics firm Ambercite published a joint report on hybrid car patents. 

The report analyzed 58,000 hybrid car patents and their interrelationships using Ambercite’s network patent analysis (NPA) methodology.  NPA uses citation linkages between patents to make determinations about the relative importance of the patents. 

The theory is that patents having the strongest relationships to other patents based on the number, strength and direction of citations represent the most important innovations.

Quite unexpectedly, the NPA method indicated that it was not a major automaker like Toyota or Honda that owned the strongest hybrid car patents, but was instead the hybrid drive train technology licensing company Paice

According to the report, Paice held the first, second, fourth and seventh strongest patents, namely, U.S. Patent Nos. 6,209,672, 5,343,970 (‘970 Patent), 6,338,391, and 6,554,088.

Arguably, this result confirms the importance of the ‘970 Patent as established by the 2007 decision of the U.S. Court of Appeals for the Federal Circuit affirming Toyota’s infringement of the patent

Indeed, the report expressly raises the intriguing possibility that the relationships revealed by NPA could predict instances of patent infringement.

The report can be downloaded here via the Griffith Hack web site.

New Front Opens in Wind Patent War as Mitsubishi Stages Intervention*

January 20th, 2011


What began as a separate action may become formally linked to the largest extant U.S. wind power patent war as Mitsubishi has requested to intervene in a lawsuit brought by GE against a former employee over rights to two wind patents.

Last spring GE sued Thomas Wilkins, an electrical engineer who had worked for Enron Wind and then GE after it acquired Enron, in the Eastern District of California, accusing Wilkins of breaching his employment agreements with both companies by his actions with respect to U.S. Patent Nos. 6,924,565 (‘565 Patent) and 6,921,985 (‘985 Patent).  GE filed an amended complaint in October 2010 (ge-wilkins_am_complaint.pdf).

GE alleged that Wilkins refused to assist in the prosecution of the application that matured into the ‘565 Patent, recently asserted an ownership interest in and offered to license the ‘565 Patent on a publicly-available web site, and recently asserted an ownership interest in and offered to license the ‘985 Patent to Mitsubishi.

The case has aroused Mitsubishi’s interest because the ‘985 Patent is one of several asserted by GE against Mitsubishi in at least two lawsuits, including a patent infringement case in Texas and an investigation in the U.S. International Trade Commission, for which GE is appealing the ITC’s ruling.  Among other things, Wilkins’ inventive contributions to the ‘985 Patent were at issue in the ITC case.

The ‘985 Patent is also one of the patents-at-issue in Mitsubishi’s antitrust suit against GE, in which it has accused its rival of engaging in an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines.  The antitrust case has been stayed pending resolution of the patent infringement suits.

The ‘985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system.  To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.

In its motion to intervene (mitsubishi_motion.pdf), Mitsubishi argues that it has a right to intervene because this action raises the same technology and ownership issues as the other lawsuits between GE and Mitsubishi, and as the only prospective licensee of the ‘985 Patent, Mitsubishi is the real party-in-interest.

Also pending is Wilkins’ motion to dismiss (wilkins_mot_dismiss.pdf), in which he asserts that GE’s claims are barred by the 4-year California state statute of limitations for actions relating to written contracts.  Wilkins contends that all of the claims stem from his alleged breaches of employment agreements, which occurred back in 2004 and 2005.

So an interesting new chapter unfolds in the GE-Mitsubishi wind patent war.  The resolution of Mitsubishi’s motion to intervene and Wilkins’ motion to dismiss will determine whether this latest chapter will be a long one or a short one.


*Mr. Wilkins disputes the accuracy of this post.

Greenwashing in Context and other Green IP at AIPLA Orlando

January 19th, 2011

I will be speaking at the American Intellectual Property Law Association’s (AIPLA) Mid-Winter Institute next month in Orlando as part of a panel on green IP.

The other speakers on the panel – called “IP Rights in a Green World:  Opportunities, Challenges and Hazards” – are Douglas Pearson of Jones Day in Washington, DC and Maureen Gorman of Davis McGrath in Chicago. 

Mr. Pearson will speak on potential threats to patent rights in green technologies, Ms. Gorman will cover green branding issues in a presentation entitled “The Future’s so Green, I Gotta Wear Shades:  ‘Greening” Your Brand Without ‘Greenwashing’ It,” and I will provide an overview of greenwashing and anti-greenwashing legal activity (see the Institute program here).

Entitled “Greenwashing in Context:  Commercial Consumers, Cleantech Counterfeiters and Eco-Mark Enforcement,” my presentation observes that most discussions of greenwashing are unduly restricted to cases in which an individual consumer, a class of consumers, or a consumer watchdog such as the FTC challenges a company making false or misleading green claims about its products or services.

To put greenwashing in its proper context we have to consider a wider range of cases, some of which are not immediately recognizable as instances of greenwashing.

To do so requires looking beyond individual consumers to commercial consumers and beyond green brand owners to counterfeiters of clean tech products and eco-mark infringers. 

From this broader vantage point, and keeping in mind the definition of greenwashing – making false or misleading claims about purportedly environmentally friendly products, services, or practices – we are able to recognize, observe and understand greenwashing in its proper context.

For example, the eco-mark infringers hawking counterfeit Suntech solar modules are not typically viewed as greenwashers, nor is Suntech’s eco-mark enforcement campaign against them seen as anti-greenwashing activity.

Similarly, the commercial litigation between Cogen and Hess over misrepresentations about the energy efficiency of cogeneration equipment is not immediately recognized as a greenwashing case.

But they are instances of greenwashing and anti-greenwashing legal actions and are at least equally, if not more, important than the false or misleading claims directed at individual consumers.

Commercial “consumers” of green products and services such as renewable energy project developers, plant operators, utilities, retailers, distributors, and installers have a huge impact on implementation of clean technologies.  As such, it is crucial that they receive genuine products and accurate service information.

Thus, my presentation argues that studies of greenwashing should embrace the proper, broad context that includes green commercial consumers.

Registration information for the AIPLA Mid-Winter Institute is available here.

January 18th, 2011



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