Archive for April, 2011

USPTO Official “Optimistic” that Green Patent Fast Track will be Extended Again

April 30th, 2011

Last week Robert Bahr, the Acting Associate Commissioner for Patent Examination Policy at the U.S. Patent and Trademark Office (USPTO), said he was “optimistic” that the USPTO would extend the Green Technology Pilot Program if and when it reaches its 3000 application limit.

The statement was part of his keynote address at the Intellectual Property Congress for Green Energy Technology in San Francisco. 

When the program gets very close to maxing out, the USPTO would likely go back to the patent examiners’ union to seek its approval to extend the program, Bahr said.

It was the examiners’ union concerns that the Green Technology Pilot Program would lead to too much extra work for patent examiners that led the USPTO to impose the 3000 cap when the program launched in late 2009.

The USPTO has extended the program once already, from its original end date of December 8, 2010 to December 31, 2011.

For more information on the USPTO Green Technology Pilot Program see my previous posts here, here and here.

Need to FedEx a Renewable Energy System? Call SkyBuilt

April 28th, 2011


SkyBuilt Power, an Arlington, Virginia, company, has won a 2011 Edison Award in the Best Energy and Sustainability Product category for its renewable energy power stations. 

SkyBuilt designs and develops integrated, modular power systems including the first rapidly deployable combined solar and wind power station.

SkyBuilt’s U.S. Patent No. 7,230,819 (‘819 Patent), entitled “Mobile power system,” relates to the company’s core technology.  The ‘819 Patent is directed to a transportable power system that incorporates two different types of power generating devices.

The mobile power system (10) includes a housing (12) and one or more brackets (14) coupled to the housing.  Solar panel arrays (18) are coupled at one end to the brackets (14) and at another end to adjustable struts (20).

A wind turbine (24) may be mounted on a pole (22), which is mounted to a corner of the housing (12).

According to the ‘819 Patent, key advantages of the system include the versatility to add various configurations of different renewable energy sources and ease of transport and assembly, particularly in that the system is the size of a standard ISO freight container.

SkyBuilt sells the mobile power station under the brand name SkyStation, which its web site calls a “complete power station in a standard freight container.”

DOE Offers Deep Discount on Patent Licenses to Speed Tech Transfer

April 25th, 2011

In a previous post, I wrote about the U.S. Department of Energy’s (DOE) Energy Innovation Portal, an online tech transfer tool designed to link energy technologies developed by U.S. national laboratories and other research institutions with potential licensing and commercialization partners.

Last month, Energy Secretary Steven Chu announced the “America’s Next Top Energy Innovator” challenge, a plan to encourage transfer of these technologies by reducing the cost and simplifying the process for obtaining an option agreement to license them.

In particular, DOE will establish a standard set of licensing terms for startups to reduce the upfront time and cost of negotiating and processing licenses and provide faster access to the technologies.

Starting on May 2, 2011, DOE will post its streamlined template option agreement online for entrepreneurs to submit to the laboratories.  Applicants have to identify the technology of interest and submit a business plan to be considered for the program.

From May 2 through December 15, 2011, the total upfront cost of licensing DOE patents will be reduced to just $1,000 for a portfolio of up to three patents.  According to the DOE press release, this represents a savings of $10,000-50,000 on average in upfront fees.

Other license terms, such as equity and royalties, will be negotiated on a case by case basis and will kick in only if the licensee company becomes commercially successful.

Any of the over 15,000 unlicensed patents and patent applications held by the national laboratories will be available for licensing under this program.

For more information on the program see the press release here, and for information on the available technologies see the Energy Innovation Portal.

To Foster Green Innovation Clean Tech Exec Says Let’s Get Baked

April 24th, 2011


David Muchow, the President and CEO of SkyBuilt Power, shared an article of his with me in which he lays out his vision of how the U.S. can foster green innovation.

Entitled “How to Bake the Green Technology Cake:  The Missing Key to Technology Innovation,” the article analogizes the process of getting an invention from conception to marketplace to that of baking a cake (see a modified version of the article here).

For small inventors, in particular, Muchow observes that the necessary ingredients are scattered, the cook takes too long, and oftentimes there’s no oven.  So he lays out three steps for baking the “innovation cake.”

The Ingredients:  According to the article, the necessary ingredients – funding, legal advice, business advice, industry knowledge, customers – have to be collected from many different sources. 

The proposed solution is an on-line one-stop virtual information meeting place for inventors, grantors, buyers, sellers, VCs and patent lawyers.  Muchow calls this a technology eBay or “t-Bay” and suggests creating one for each technology or product subject area.

The Cooking Time:  Here, the problem is the length and cost of the patent process.   The article suggests a guaranteed time frame for granting or rejecting green patent applications.

The Missing Oven:  The article notes the lack of a central, physical meeting place for all stakeholders and proposes creating Local Technology Centers (LTC) in each state where inventors, business firms, law firms, investors, government representatives and engineers could meet.

These would act as both “supermarkets” for the ingredients and the “ovens” in which to bake them as inventors could present their inventions to panels of experts, with winners receiving grants to spend on across-the-board support at the LTCs.

Muchow says his plan would ultimately pay for itself as the LTCs could take equity interests in the startups being formed and get paid back in full with interest if the companies become profitable.

Apparently, somebody in the U.S. government has been listening because a group of federal agencies recently announced they would partner to launch a green entrepreneurial initiative promoting “Proof of Concept” Centers, which bear a striking resemblance to Muchow’s LTCs.

Called the i6 Green Challenge, the plan to accelerate high-growth entrepreneurship in green technologies will provide $12 million to establish or expand the Centers, whose function is to:

support all aspects of the entrepreneurship process, from assisting with technology feasibility and business plan development, to providing access to early-stage capital and mentors to offer critical guidance to innovators.  Centers allow emerging technologies to mature and demonstrate their market potential, making them more attractive to investors and helping entrepreneurs turn their idea or technology into a business.

Pre-heat your oven to 375º F and get out those measuring cups.

In PV Furnace Case Green Patent Litigation Moves Upstream

April 21st, 2011


Despatch Industries (Despatch) is a Minnesota company which designs and makes industrial ovens and furnaces, including furnaces for use in solar cell manufacturing. 

Despatch owns U.S. Patent No. 7,514,650, entitled “Continuous infrared furnace,” and directed to a furnace for treating material with infrared radiation which has a mechanism to allow easy access to interior components (‘650 Patent).

In October of last year, Despatch sued California competitor TP Solar (TP) for patent infringement in federal court in Minnesota, and last month the court transferred the case to Los Angeles (Despatch-Transfer-Order).

According to the complaint (Despatch-TP_Solar-Complaint), TP is selling furnaces that infringe the ‘650 Patent, including the Model MD-225 Firing Furnace with Integrated Dryer.

The ‘650 Patent describes a furnace (10) having a heat transfer zone (20), a cooling zone (120), and a conveyor (50) to transport the material to be treated.  The heat transfer zone (20) has an upper portion (30) and a lower portion (40).

The lower portion (40) is removable, and can be lowered using a jack (60) to allow access to the interior of the heat transfer zone (20) and the components therein.  According to the ‘650 Patent:

The access to the interior of the furnace 10 provided by moving the lower portion 40 of the furnace from the bottom of the furnace may allow for, among other things, maintenance or replacement of insulation, lamps, the conveyor, and other elements not easily accessible without moving the lower portion.

So green patent litigation is moving up the supply chain to the players that manufacture for the clean tech manufacturers.

It’s All Green IP All the Time at the IP Congress for Green Energy Technology

April 19th, 2011


I will be speaking at the Intellectual Property Congress for Green Energy Technologies (Green IP Congress) in San Francisco next week as part of a panel on green patent fast track programs.

The panel is called “Capitalizing on Accelerated Review for Green Innovation,” and my co-panelists are James McEwen, co-author of a tome on IP in government contracts, and Richard Ogawa, Chief IP Officer for several companies, including Stion and PVT Solar.  Michael Tschupp, of the Sustainable Marks blog, will moderate.

My presentation is called “Global Green Patenting:  Risks and Opportunities from the Fast Track to the Highway,” and will review the anti-patent policies proposed by the UN and developing countries in the recent international climate change treaty talks.  Such policies seek to weaken or eliminate green patents due to a belief that patents act as a barrier to international transfer of clean technologies.

My talk will highlight significant instances of clean tech transfer that belie the notion that green patents are acting as such a barrier. 

I will also provide an overview of some of the exciting opportunities in international green patenting such as the fast track programs offered by the United States, the UK, Korea, and others, which expedite processing and examination of clean tech patent applications.

Aside from academic symposia at law schools, the Green IP Congress is the first conference I know of in the U.S. that is focused entirely on green IP issues. 

It’s a two-day affair and includes presentations and panel discussions on green IP licensing models, international joint ventures using green IP, IP issues in smart grid, green IP litigation, and green branding and green marketing.

Philip Totaro, who has written insightful pieces about wind patents in this space, will speak on “Current and Future Trends in Wind Turbine Technology.”

Other featured presentations include John Lucas of DOE on government assistance for green technologies and Kathryn Atchison and Kathleen McCowin, of UCLA and Berkeley, respectively, on the role of the university in developing and commercializing green energy technologies.

Robert Bahr, the Acting Associate Commissioner for Patent Examination Policy at the U.S. Patent and Trademark Office, will deliver the keynote address.

The Green IP Congress will be held at the Hilton San Francisco Financial District on April 27-28, 2011.  More information can be found here, and the brochure is here (Green IP Congress Brochure).  Feel free to use my speaker discount code – HAB374 – to save $400 off the registration fee.

Green Sunset?: A USPTO Green Patent Fast Track Update

April 16th, 2011

 In previous posts (most recently here), I’ve written about the U.S. Patent and Trademark Office’s (USPTO) green technology pilot program to expedite examination of green patent applications.

The latest USPTO green technology pilot program statistical report (green_report_summary) indicates that there have now been more than 3,000 petitions filed, so the program is getting fairly close to maxed out. 

However, the number of filed petitions is not dispositive; the program is scheduled to end when 3,000 petitions are accepted into the program, or at the end of this year, whichever comes first.

There are currently about 1,300 petitions that are still pending, including about 1,000 that have been dismissed (i.e., initially turned away but could be appealed), and about 300 awaiting initial decision. 

So the number of remaining slots for the program depends on how these 1,300 or so pending petitions break for acceptance or final denial.

Over the nearly year and a half period the program has been running, 1,595 petitions have been granted, 195 petitions have been finally denied, and 250 patents granted in the program.

It’s hard to say exactly how much time applicants have left to file their fast track petitions, but unless the USPTO extends the program again or makes it permanent, the window may close fairly soon.

In Smart Meter Patent Suit TransData Focuses Antennae on Texas Utility

April 14th, 2011


TransData is a Texas company that designs and manufactures smart meters and related products.

TransData owns U.S. Patents Nos. 6,181,294 (‘294 Patent), 6,462,713 (‘713 Patent) and 6,903,699 (‘699 Patent), which relate to antenna and wireless communication devices for use with electric meters.

Last month TransData sued CoServ, a Texas utility, for infringement of the ‘294, ‘713 and ‘699 Patents.  According to the complaint (TransData-Complaint), filed in federal court in Tyler, Texas, CoServ is infringing these patents by using and selling the Landis+Gyr Focus AX electric meter.

The ‘294, ‘713 and ‘699 Patents are related patents which trace back to an original 1998 filing date.  They describe early solutions for wireless transmission of electrical consumption data. 

In particular, the patents are directed to electric meters (100) and an antenna (170, 270) for use with the electric meters.  The antenna includes antenna elements (172, 174, 272, 274) located within a dielectric housing (120, 220) and a balance circuit (176, 276).

The balance circuit (176, 276) mechanically supports the antenna elements (172, 174, 272, 274) so the antenna elements can cooperate and act as a dipole. 

According to the patents’ specification:

The present invention . . . introduces the broad concept of outfitting an electric meter with an internal, wireless communications antenna, allowing the electric meter circuitry within the meter to communicate via a data network wirelessly couplable thereto.

Like the seminal variable speed wind turbine patent involved in the recent GE-Mitsubishi litigation, the patents in this suit are an example of mature clean technologies in the courtroom.

Guest Post: Simply Electrifying – GE’s Acquisition of Converteam

April 11th, 2011



by Philip Totaro, Principal, Totaro & Associates

The General Electric Company (GE) recently announced that it would take a 90% stake in Converteam for US$3.2B.  Converteam’s core technology focus is on converters and grid interconnect equipment for solar and wind as well as permanent magnet generators / motors for wind turbines and propulsion systems.

While based in Europe, Converteam has 19 issued patents in the US and 18 pending applications which have published so far.  As it relates to solar and wind, the largest portion of their portfolio deals with frequency and voltage regulation, and more specifically with active and reactive power control.

U.S. Patents Nos. 7,372,174, 7,511,385, 7,656,052, 7,692,321 and 7,755,209 all relate to a full power conversion system with a reactive power control approach utilizing a DC link demand signal as input to converter controller:It is interesting that long-time Siemens AG wind turbine technology thought leader, Henrik Stiesdal is listed as a co-inventor on these patents, highlighting the commercial relationships with Siemens for their 3MW direct drive wind turbine technology. 

With a cross license arrangement on key generator, converter and controls technology between Siemens AG and Converteam, this deal now provides GE with access to IP rights which they may need to continue operating their own technology.

In addition, Converteam has their own flavor of a variable speed control patent with U.S. Patent No. 7,405,490 (‘490 Patent) in which adjustment of active power output from the generator is based on input from the DC to AC inverter which is connected to the power grid. 

In light of the expiration of GE’s noteworthy and heavily litigated U.S. Patent No. 5,083,039 relating to variable speed control with an induction generator, the ‘490 Patent may be part of a suite of patents which helps GE protect the next generation of variable speed technology.

Converteam also has some patents relating to grid interconnection and generator technology.  U.S. Patent No. 7,471,532 is directed to a more efficient converter which requires fewer parts than the previous generation of technology. 

The move towards medium voltage on the power grid has been part of the emerging trends for the industry in the hopes of providing more efficient transmission of energy. 

U.S. Patent No. 7,675,271 deals with generator technology which helps the generator ramp up from standstill.  U.S. Patent No. 7,768,169, entitled “Magnet retaining arrangement,” and U.S. Patent No. 7,714,473, entitled “Electrical machines with reduced cogging,” both deal with permanent magnet generator technology which helps to enhance efficiency and improve reliability.

Converteam also recently announced that they are developing a superconducting generator, which they have termed HYDROGENIE for the hydro-power market.  According to a February 21st press release (Converteam_Release) the company has successfully completed some basic testing of this technology and are moving towards full scale testing of a 1.7MW generator later this year. 

The superconducting generator technology is likely to be the subject of numerous patents and is also highly likely to be leveraged into their other lines of business, such as wind generators and propulsion.

This acquisition is a notable example of the previously identified trend in the wind industry for “grid friendly” wind turbines which utilize permanent magnet synchronous generators as well as full power conversion with the ability to control power factor and provide VARs to the grid.

With the Converteam patent portfolio, GE has now added to their 300+ patents in the wind sector with key technology that further strengthens their position in these future technology areas.

Please visit for more information and to obtain the firm’s full wind turbine patent landscape study results or to download an offline copy of the summary.

Philips Asserts Five LED Patents; Tries to K.O. Seoul’s “Fundamental” LED Patent

April 7th, 2011


Dutch electronics giant Philips and its LED subsidiary Philips Lumileds Lighting Company (collectively “Philips”) have launched the opening shot in what could become a major green patent war.

In a complaint (Philips-Seoul-Complaint) filed last month in federal court in Santa Ana, California, Philips accused its Korean rival Seoul Semiconductor (Seoul) of infringing five patents relating to LED technology and asserted that one of Seoul’s “fundamental” semiconductor structure patents is invalid.

The Philips patents-in-suit are:

U.S. Patent No. 5,779,924, entitled “Ordered interface texturing for a light emitting device,” directed to an LED with a textured interface that improves light extraction;

U.S. Patent No. 6,274,924, entitled “Surface mountable LED package,” directed to an LED package with a heat sinking slug that is thermally isolated from the package’s metal leads;

U.S. Patent No. 6,547,249, entitled “Monolithic series/parallel LED arrays formed on highly resistive substrates,” directed to an array of LEDs wherein the p- and n- contacts are on the same side of the array and the individual LEDs are electrically isolated from each other by trenches or by ion implantation;

U.S. Patent No. 6,590,235, entitled “High stability optical encapsulation and packaging for light-emitting diodes in the green, blue, and near UV range,” directed to an LED component wherein the LED chip is encapsulatd by a rigid outer optically transmissive shell and an interior optically transmissive gel or resilient layer; and

U.S. Patent No. 6,717,353, entitled “Phosphor converted light emitting device,” directed to an LED device that includes a wavelength converting material Sr-SiON:Eu2+ which absorbs light emitted by the LED and emits light of a longer wavelength.

The accused products include Seoul’s Acriche, Top View, High Flux, Side View and Z-Power LEDs.

Philips is also seeking a declaratory judgment that its own products don’t infringe Seoul’s U.S. Patent No. 5,075,742 (‘742 Patent) and that the ‘742 Patent is invalid. 

The ‘742 Patent is entitled “Semiconductor structure for optoelectronic components with inclusions” and is directed to a structure having plural layers in semiconductor material.  One of the layers includes stacked sub-layers, with each sub-layer having three dimensional “inclusions” – improved electron-hole areas – and a narrow band gap. 

According to the ‘742 Patent, this structure overcomes certain problems in production of “III-V” semiconductors (so named for the columns of the Periodic Table in which the semiconductor materials are classified).

According to the complaint, Philips has a reasonable apprehension of being sued for infringement of the ‘742 Patent because of a press releases and public statements by Seoul calling the patent “fundamental to indium gallium nitride-based light emitting device technology,” and characterizing a recent court decision as holding that it would be “impossible for LEDs that use InGaN in their active layers” to avoid infringement of the ‘742 Patent.

The complaint also alleges that Seoul has threatened the “entire LED community,” and in discussions with Philips, specifically mentioned a European patent that is related to the ‘742 Patent.

These are major LED players with big litigation warchests so this could turn into a major green patent war.  This only a couple of years after Seoul wrapped up an epic LED patent battle with its Japanese competitor Nichia.