Archive for October, 2011

Clean Tech in Court: Green Patent Complaint Update

October 28th, 2011


Two green patent lawsuits have been filed in the last few weeks in the areas of smart grid and solar.

Smart Grid

Sensus USA Inc. v. Nxegen LLC

Sensus USA filed a complaint (Sensus-Nxegen_Complaint) against Nxegen on October 19, 2011 in the U.S. District Court for the District of Delaware. 

Sensus asserts two patents against Nxegen, U.S. Patent No. 5,438,329 (‘329 Patent), entitled “Duplex Bi-Directional Multi-Mode Remote Instrument Reading and Telemetry System,” and U.S. Patent No. 7,012,546, entitled “Modular Wireless Fixed Network for Wide-Area Metering Data Collection and Meter Module Apparatus” (‘546 Patent).

The ‘546 Patent covers a transmitting device connected to a gas or water meter which transmits signals relaying data related to the meter.  The ‘329 Patent covers a receiver designed to receive signals transmitted by a remote transmitter (such as described in the ‘546 Patent). 

The receiver described in the ‘329 Patent can be located in either a fixed or remote station, enabling a vehicle to remotely receive utility data by merely driving by a meter.  Figure 1 of the ‘329 Patent depicts the different possible configurations.


This is the second lawsuit in a growing legal battle in which the two companies are each asserting patents against each other.  A previous post discussed a patent infringement complaint Nxegen filed a against Sensus in July.


HeliOptix LLC v. Enfocus Engineering Corp.

HeliOptix, a New York manufacturer of building integrated solar energy systems, filed a complaint (Helioptix_Complaint) in the U.S. District Court for the Southern District of New York on October 14, 2011 accusing its California competitor, Enfocus Engineering (Enfocus), of infringing U.S. Patent No. 7,190,531 (‘531 Patent).

The ‘531 Patent is entitled “Concentrating Type Solar Collection and Daylighting System within Glazed Building Envelopes.”  The system utilizes a plurality of miniaturized solar modules, a focusing lens and an activating mechanism attached to the solar modules for actively tracking the sun. 

Figure 4A depicts the concentrating lens (220) and the solar cell (202).  

The system is designed to utilize concentrated solar energy to provide both electric and thermal energy, and to reduce the solar gain within a building.  The system utilizes a Fresnel lens to focus sunlight onto a photovoltaic cell mounted at a distance from the lens.  In addition, the collected solar energy can also be used for thermal energy production. 

The solar collectors are miniaturized in order to enable them to be mounted in a building façade, preferably between window panes as depicted in Figure 10A. 

Due to the size of the solar modules and their spacing, daylight is able to pass through the system to light a room.

The accused product is EnFocus’s Diamond-Power Solar Panel.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

Auction Block: DOE Asserts Ownership and Tries to Stop Sale of Evergreen Ribbon Patents

October 27th, 2011


I previously wrote about the patents for sale as a result of the bankruptcy of Massachusetts PV company Evergreen Solar.

Those patents include U.S. Patents Nos. 6,814,802, 7,022,180 and 7,507,291, each entitled “Method and apparatus for growing multiple crystalline ribbons from a single crucible” (collectively “Ribbon Patents”).

The Ribbon Patents cover Evergreen’s core innovation, a PV manufacturing process known as String Ribbon technology.

In a fascinating development, the U.S. Department of Energy (DOE) wrote a letter to Evergreen demanding that it assign title to the Ribbon Patents to DOE (DOE_Letter):

The Department of Energy (“DOE”) hereby demands that Evergreen Solar Inc. assign title to DOE for the following invention: method and apparatus for growing multiple crystalline ribbons from a single crucible (“the Gemini Method”), including U.S. Patent Nos. 6,814,802; 7,022,180; and 7,507,291 and all other pending U.S. or foreign patent applications and patents that relate or claim priority to any of the foregoing U.S. patents.

The DOE concurrently filed a motion in the Evergreen bankruptcy proceeding to get the court’s permission to obtain title to the Ribbon Patents (DOE_Motion).

According to the DOE letter and motion papers, the research and development that led to the String Ribbon technology was funded at least in part by DOE.  The letter states:

We believe the Gemini Method is a “subject invention” as defined by the Bayh-Dole Act and NREL subcontract ZDO-2-30628 . . . to which Evergreen Solar Inc. was a party.

The motion states that the federally funded research led to the String Ribbon process:

Under the Funding Agreement, Evergreen conducted the Gemini project to develop a method to generate two String Ribbons of silicon simultaneously out of [a] single crucible of molten silicon rather than just one String Ribbon at a time.

Under the Bayh-Dole Act, which governs rights in government-funded technology (see my post on Bayh-Dole here), Evergreen had to disclose to DOE any inventions developed with the federal funding and provide notice to DOE that it elected to retain title to the inventions. 

According to DOE, Evergreen failed to do so for the String Ribbon technology, so DOE can take ownerhsip of the Ribbon Patents.

The invention of the Ribbon Patents enables continuous and concurrent growth of multiple semiconductor ribbons from a single crucible.

Figure 2A, for example, shows a continuous two-ribbon dual growth system (20) including a crucible (21) having a melt (22) of silicon and two pairs of strings (25a, 25b) extending through the crucible. 

Each of the pairs of string (25a, 25b) has a fixed distance between the strings.  Two crystalline ribbons (27a, 27b) of silicon are drawn from the melt (22) as the cooler liquid silicon crystallizes at the tops of the menisci (29a, 29b). 

The pairs of strings (25a, 25b) pass through holes in the bottom of the crucible and become incorporated in and define the edge boundaries of the crystalline ribbons (27a, 27b).

According to the Ribbon Patents, the disclosed methods and apparatus allow for a substantially better rate of production and efficiency and reduce capital, material, and labor costs. 

According to some news reports, Chinese solar manufacturers have shown considerable interest in the auction of Evergreen’s assets.  Apparently, DOE wants to block sale of the String Ribbon technology to foreign companies.

Indeed, DOE’s motion papers argue the court should allow it to maintain its rights in the Ribbon Patents to “prevent foreign entities from gaining control over federally-funded technology and competing with American industry unfairly.”

Windy 500: GE Rotor Blade Patent Marks Milestone for USPTO Green Tech Pilot Program

October 25th, 2011


The U.S. Patent and Trademark Office (USPTO) recently announced that it has reached a milestone – issuance of the 500th patent through its Green Technology Pilot Program.

The honor goes U.S. Patent No. 8,029,241 (‘241 Patent), entitled “Wind turbine rotor blade with aerodynamic winglet” and owned by General Electric Company (GE).  The ‘241 Patent issued October 4, 2011.

GE has been a very active participant in the green tech fast track, and the ‘241 Patent is the 116th patent it has obtained through the program.

The ‘241 Patent is directed to a wind turbine (10) wherein each rotor blade (22) has a main foil section (42) and a winglet (46) pivotally connected to the main foil section (42).  

The winglet (46) pivots from an in-line position wherein the rotor blade has a first sweep length (68) to an articulated position wherein the rotor blade has a second, reduced sweep length (70), resulting in a decreased load on the rotor blades (22).

The rotor blades (22) have a deployable sleeve (50) extending from an end (48) of the winglet (46) to an end (44) of the main foil section (42).

The sleeve (50) provides an aerodynamic surface over the gap that would otherwise be created between the winglet (46) and the main foil section (42) when the winglet is in the articulated position.

The Green Technology Pilot Program expedites examination of patent applications relating to green technologies (see, e.g., previous posts here and here).

According to the USPTO press release, the average time between acceptance of a patent application into the program and a first office action on the merits is 68 days.

The application that matured into the ‘241 Patent was accepted on January 5, 2011 and received a first office action on March 24, 2011.  The initial application was filed on September 15, 2010, so the whole process from filing to grant took less than thirteen months.

According to the USPTO’s latest Green Petition Report Summary (green_report_summary20111020), dated October 20, 2011, a total of 4437 petitions for acceptance into the program have been filed, 2529 of those petitions have been granted, and now 606 patents have been granted through the program.

The Green Technology Pilot Program is set to end when either 3000 petitions are granted or on December 31, 2011, whichever comes first.

Speed Bumps Emerge on KIPO Green Tech Fast Track

October 23rd, 2011


In a previous post I wrote about the Korean Intellectual Property Office’s (KIPO) expedited examination program for green technology patent applications. 

According to KIPO, the “super speed” program is supposed to provide examination results in just one month.

I recently tried to take advantage of the KIPO program and move a green patent application along in a super speedy manner.

But when I requested that our Korean patent firm use the green tech fast track, I received a rather surprising response.  Here’s an excerpt:

[P]lease be advised that, in order to participate in an expedite[d] examination procedure based on the Green Technology in Korea, the applicant should receive certification or funding under the Korean Basic law of low-carbon green growth.  Therefore we cannot receive an approval for the expedited examination for the present application from the KIPO based on the Green Technology.

Some further research revealed that KIPO has unduly restricted access to the green tech fast track by attaching the “certification or funding” requirement to the most significant categories of green technology.

The Hanyang firm’s report on the Korean fast track program lays out the requirements and provides a useful summary.

The KIPO green tech program has seven major technology categories that are automatically eligible for the fast track.  These automatic categories include patent applications relating to:

(1) noise and vibration prevention facilities or methods and sound proofing or dust proofing

(2) water quality contamination prevention facilities or methods

(3) air pollution prevention facilities or methods

(4) waste disposal facilities or methods

(5) facilities or methods of livestock excretions management, purification and disposal

(6) recycling facilities or methods

(7) sewage disposal facilities or methods

One problem is that some of the automatically eligible categories are rather obscure.  A bigger problem is what has been left out and therefore is not automatically eligible. 

An eighth category of technologies lists several subcategories which are eligible only if the invention has “received financial support or certification from the government.”  These subcategories include the lion’s share of important green technologies:

(8)(a) new renewable energy technology

(8)(b) carbon reduction energy technology

(8)(c) high powered water handling technology

(8)(d) LED application technology

(8)(e) green transportation system related technology

(8)(f) green city related technology

(8)(g) technology that economizes and efficiently uses energy and resources to minimize greenhouse gas and contaminated substances

(8)(h) any technology belonging to one of (a) to (g) that fuses with another technology

These enumerated green technology subcategories of category eight are fleshed out with some examples, to make crystal clear exactly what KIPO is shutting out of its green tech program, e.g., solar, wind energy, geothermal energy, tidal energy, wave energy, bioenergy, batteries, carbon capture and storage, LED lighting, hybrid cars, plug-in hybrid cars.

So wind energy and hybrid vehicles are subordinated to livestock excretions disposal and vibration prevention methods.  Huh?

Needless to say, this is a major disappointment.  The KIPO fast track program won’t be of much service to the clean tech industry unless it’s overhauled so the large and important eighth category of green technologies is made automatically eligible.

Westinghouse ITC Complaint Against Zep Shines Light on Past Litigation

October 21st, 2011


Previous posts (here and here) discussed the patent litigation pending in federal court between solar installation competitors Akeena Solar (now Westinghouse Solar) and Zep Solar (Zep) involving two Westinghouse patents, U.S. Patents Nos. 7,406,800 (‘800 Patent) and 7,987,641 (‘641 Patent).

Westinghouse recently opened a new front in this patent battle when it filed a complaint (Westinghouse-Zep_Complaint) against Zep and Canadian Solar (Canadian) with the U.S. International Trade Commission (ITC).

The complaint accuses Zep and Canadian of infringing the ‘800 Patent and the ‘641 Patent and licensing the patents to certain unnamed Chinese manufacturers.

Both the patents at issue cover what Westinghouse refers to as the “Andalay System,” a solar power system which includes solar panels with integrated racking, wiring and grounding (DC solar panels), and integrated microinverters (AC solar panels) for residential and commercial customers.

The accused Zep system employs the company’s “Zep Groove,” which makes the panel itself part of the racking hardware via a specially grooved frame.   This innovation eliminates rails and uses the module frame as the structural and mounting element.

Westinghouse asserts that Zep has infringed Claims 6 and 10 of the ‘800 patent and Claim 1 of the ‘641 patent. Claims 6 and 10 of the ‘800 patent cover a splice, which connects two solar modules, and a wiring connection that prevents improper wiring. Claim 1 of the ‘641 patent covers another splice connector.

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.



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.


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.

Westinghouse Solar’s ITC complaint seeks an investigation into both Zep and Canadian, a permanent exclusion order barring certain of their products from being imported into the United States, and a cease and desist order prohibiting the importation, sale, offer for sale, advertising, or the soliciting of the accused products.

Zep CEO, Mike Miskovshy, stated the claims by Westinghouse are groundless and misleading. Miskovsky also noted that Zep Solar has its own patents for solar installation techniques which predate the Westinghouse patents.

Defending itself in the prior federal court suit, Zep filed a request to the United States Patent and Trademark Office (USPTO) for reexamination of the ‘800 Patent. The USPTO granted the request for reexamination on April 9, 2010 and the court stayed the case five days later, pending the outcome of the USPTO’s reexamination.

As a result of the reexamination, the USPTO canceled 9 of the 12 claims (claims 1-4, 7-9, 11 and 12) of the ‘800 patent. Zep has filed for reexamination of the remaining three claims. The second reexamination is still pending.

Westinghouse moved to lift the stay but the court denied the motion pending results of the second ‘800 patent reexamination.

Zep also filed a request for reexamination of the ‘641 patent. On September 23, 2011, the USPTO issued an initial action cancelling all three claims of the ‘641 patent. No further action has been taken regarding the ‘641 patent claim rejection.

Nevertheless, Westinghouse’s ITC complaint accuses Zep of infringing dependent claims 6 and 10 of the ‘800 patent. Independent claim 1, from which claims 6 and 10 depend, has been canceled and the USPTO is currently reexamining both claims 6 and 10 of the ’800 patent.

The complaint also accuses Zep of infringing claim 1 of the ‘641 patent, which has been canceled.

Westinghouse’s filing with the ITC could be seen as an attempt to seek alternative relief while the federal court case is stalled. 

The ITC provides patentees with the potential to stop the importation of the accused devices into the United States under Section 337 of the Tariff Act of 1930. In particular, Westinghouse may be hoping to take advantage of the ITC remedy of an exclusion order, which stops infringing goods at the U.S. border. 

The ITC complaint also suggests the move to the ITC was prompted by Zep’s licensing of the accused technology to foreign manufacturers.

However, it seems unlikely that the ITC would issue a ruling until the USPTO rules on the reexamination of the remaining three claims of the ‘800 patent.

This move by Westinghouse and the internationalization of this patent dispute to include Chinese licensees comes at a time of rising trade tensions between the United States and China as the U.S. Congress is considering taxing Chinese imports, and in light of a recent industrial espionage lawsuit filed against Sinovel, a Chinese wind energy manufacturer.

Treasury Secretary Geithner recently made some public comments accusing China of “systematic stealing intellectual property of American companies.”

The ITC should decide whether to initiate a formal investigation within the next 30 days.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

Court Issues Mixed Claim Construction Ruling in Ethanol Processing Patent Case

October 20th, 2011

A previous post reported on the consolidation of a number of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech, against a host of ethanol producers across the midwestern United States.

GreenShift has accused the defendants of infringing U.S. Patent No. 7,601,858 (‘858 Patent), entitled “Method of processing ethanol byproducts and related subsystems.”

The ‘858 Patent is directed to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which 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.

GreenShift’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.

In September 2010 the Judicial Panel on Multidistrict Litigation granted GreenShift’s motion to consolidate the 11 actions in the Southern District of Indiana.

Recently, the court issued a “Markman” decision (GS-Markman-Order), a claim construction order that provides the court’s interpretations of key disputed terms of the patent claims.

There were several terms of the ‘858 Patent claims at issue, the most important of which were  “concentrated byproduct”, “concentrate”, “thin stillage concentrate” and “concentrated thin stillage” (collectively construed by the court as “the Concentrate Terms”), as well as “mechanically processing”.

In one instance, the court adopted the defendants’ narrower proposed construction.  In the other, it went with GreenShift’s broader proposed definition.

The question in interpreting the Concentrate Terms was essentially what the byproduct or concentrated substance is.  GreenShift argued that it is any product consisting of water, oil and solids, while the defendants contended it should be limited to a syrup.

The court agreed with the defendants and construed the Concentrate Terms to mean “syrup containing water, oil, and solids resulting from the concentrating or evaporating process.” 

According to the court, this interpretation “naturally aligns” the claim language with the description in the ‘858 Patent, which uses the terms “concentrate” and “syrup” interchangeably to identify the composition described by the Concentrate Terms.

The court construed the term “mechanically processing” to mean “to subject to a mechanical device (or devices) to effect a particular result.”  Despite defendants’ contention that the term means “processing with a centrifuge,” the court agreed with GreenShift that the plain meaning of the term requires a broader construction.

As discussed before in this space, the claim construction phase of patent litigation is extemely important, often leading to settlement or dismissal on summary judgment.

With what appears to be a mixed ruling leaving no clear winner, it will be interesting to see what happens next in this major biofuels litigation.

Come Visit Our Booth at SPI in Dallas

October 17th, 2011


I will be at Solar Power International in Dallas on Tuesday and Wednesday of this week with my firm, Luce Forward, at Booth No. 2345 in Hall C.

I invite all of my solar friends and colleagues to stop by and say hello.

We’ll be wearing our signature blue polo shirts, and, more importantly, we’ll be providing complimentary bags of our signature freshly made mini-doughnuts.

I would be happy to share my insights on best practices in clean tech patent prosecution and strategy, and I’m always working on the latest solar tech / solar intellectual property stories for publication in this space so I’m interested in hearing your news and exciting things you’re working on.

I hope to see you, and I wish you all an enjoyable and successful conference.

New Intematix LED Patent Has its Customers Covered

October 14th, 2011

Intematix, a Fremont, California, company, has developed LED lighting technology that involves separating the LED chips from their complementary phosphors.  This approach differs from that of conventional LEDs in which the phosphor is incorporated in the LED chip package and close to or in contact with a light emitting surface of the LED. 

Phosphors are the chemical powders that coat LED chips, fluorescent light bulbs, and other devices.

Intematix phosphors convert blue light emitted from the LED chips to the white light that shines from LED bulbs. 

One of the company’s recently granted patents is U.S. Patent No. 7,972,030 (‘030 Patent), entitled “Light emitting diode (LED) based lighting systems” and directed to an LED lighting system in which the phosphor is incorporated in or on a surface of a shade that surrounds the LED.  The ‘030 Patent issued in July.

The ‘030 Patent describes and claims a lighting fixture (18) having a shade (4) and an LED (5) mounted within the fixture.  A layer of phosphor (16) is provided on an inner surface of the shade (4).

Different arrangements of reflectors (21a, 21b) can be used to reflect emitted radiation from the LED (5) toward the shade (4). 

Blue light emitted from the LED (5) in combination with yellow light generated by the phosphor (16) provides emitted radiation (22) which appears white to the eye.

According to the ‘030 Patent, an advantage of the invention is enhanced efficiency:

A particular advantage of the present invention is in the use of a phosphor which enhances the efficiency in terms of brightness for a given LED input power level as compared to known lighting systems which filter (selectively block) selected colors of transmitted light.

I spoke with Julian Carey, Director of Marketing at Intematix, who told me the ‘030 Patent protects the company’s customers, who buy phosphors and phosphor components from Intematix and use them in various LED lighting applications.

For example, the embodiment shown in Figure 3 above is a pendant light fixture hanging from a cable (19).

Figure 4 illustrates a wall, or sconce, lighting fixture (23) embodiment.

But the “real highlight,” according to Carey, is the embodiment shown in Figure 5.  This is a round lighting fixture or bulkhead light (25) having a circular housing (26). 

According to Carey, this embodiment is “a very common type of lighting system” and is a highlight of the patent because it is “applicable to very widely implemented lighting systems.”

With the ‘030 Patent providing protection for its customers, Carey told me it is an important patent that “extends our IP in a very useful and strategic way.”

In this era of hyperactive LED patent litigation (see, e.g, previous posts here and here) LED components and materials makers filing for patents that would extend protection to their customers is probably good strategy.

SmartSynch’s Wireless Smart Meter Patents Pay Off with Consumers Roll Out

October 12th, 2011

SmartSynch is a Jackson, Mississippi, provider of smart grid solutions and one of the few such companies which leverage existing cellular networks. 

SmartSynch owns at least 14 patents and pending patent applications, including at least two patent families relating to wireless data transmission and management technology.

The first dates back to an original filing date of 2001 and includes U.S. Patents Nos. 6,946,972 and 7,250,874, entitled “Systems and methods for wirelessly transmitting data from a utility meter” (collectively “Wireless Transmission Patents”)

The second patent family includes U.S. Patents No. 7,289,887 (‘887 Patent), 7,349,766 and 7,451,019, originally filed in 2003 and entitled “Systems and methods for remote power management using IEEE 802 based wireless communication links” (collectively “IEEE 802 Patents”).

The Wireless Transmission Patents are directed to methods of transmitting and receiving utility meter data in which an interface board (18) obtains electrical usage data from a meter board (12) and packages it for transmission to a remote host computer (28) via a pager board (24) and a pager system (26).

The interface board (18) also monitors power quality data including average phase voltages and angles from the meter board (12), and when there are power quality events such as power outages and high/low voltage events, notifies the remote host computer (28).

Raw load profile data is read from the serial meter port (16) via an interface serial port (20) and stored in an input buffer by a microprocessor (32).

The microprocessor (32) performs a process called differential compression whereby it calculates the difference between two meter reading values and compresses the data if necessary for transmission.  According to the Wireless Transmission Patents:

[C]ompression may be turned on and off as the stream of raw data words are read from the input buffer by examining the data value of the current word to determine whether the difference between it and the data value of the last data word read can be represented by a single byte.

In this way, streams of data which vary in size can be transmitted efficiently over a wireless network.

The IEEE 802 Patents are directed to methods for energy management wherein a host controller distributes energy data to an on-premise processor, which in turn uses 802.11 based wireless protocols to communicate with utility meters.

802.11 is a suite of wireless technical standards for local area networks (LAN).  The 802.11 protocols are based on using TCP/IP protocols and were developed to facilitate interworking of existing hardware and software for use with wireless LAN equipment.

The IEEE 802 Patents generally relate to integrating energy data into wireless communications and include some rather broad claims, including claim 1 of the ‘887 Patent:

1.  A method for energy management comprising:

receiving energy rating data at an on-premise processor transmitted by a distribution network from a host processor and storing the energy rating data in a memory, the rating data including a schedule pertaining to time and energy costs;

receiving at the on-premise processor a message from an end device requesting energy rating data, wherein the message is communicated using a wireless communication link, the wireless communication link relaying the message through at least one other end device;

retrieving the energy rating data from the memory and sending a response message including the energy rating data using the wireless communications link from the on-premise processor to the end device;

determining independently in the end device whether to generate an activation signal based at least in part on the energy rating data; and

the end device allowing or reducing power load consumption according to the determination.

According to a recent SmartSynch press release, its technology “securely deliver[s] smart grid data on all major cellular networks, enabling quicker, easier, more scalable and strategic smart meter deployments for utilities.”

And the utilities are paying attention:  SmartSynch recently announced that it was selected to provide the advanced metering system for Consumers Energy’s rollout of 1.8 million smart meters to the utility’s electricity customers in Michigan (see the Greentech Media article here).

The press release says Consumers is “the largest U.S. utility to choose a cellular-based communication system for the smart meter deployment phase of its grid modernization program.”

TP Tops Despatch as Court Rules Up is Not Down

October 9th, 2011

A previous post discussed a patent infringement lawsuit filed by Despatch Industries (Despatch) against TP Solar (TP) involving manufacturing equipment used for heat-treating silicon wafers for solar cells.

The asserted patent is 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 a recent decision (TP_SJ_Decision), U.S. District Court Judge Manuel L. Real granted TP’s Motion for Summary Judgment in the case, holding that TP neither literally infringed the ‘650 Patent nor infringed under the doctrine of equivalents.

The court construed claim 1 of the ‘650 Patent, the only independent claim, according to the plain meaning of the claim terms.

Thus, according to Judge Real, claim 1 required four elements: (1) a heat transfer zone having an upper portion and a lower portion; (2) a conveyor; (3) a jack that allows movement of the lower portion of the heat transfer zone; and (4) a condenser with a removable heat transfer element.

The court held that the TP furnace did not literally infringe the ‘650 Patent because it does not satisfy the third element of claim 1.

Specifically, the heat transfer element condenser of the TP device has a top-lift access feature whereas claim 1 requires bottom access by movement of the lower portion.

Further, the court held the TP device did not infringe under the doctrine of equivalents. Despatch argued that the relative movement by a fixed lower portion and a movable top is essentially the same as a fixed upper portion with a movable bottom.

Judge Real disagreed. According to the court, Despatch’s equivalents theory would eliminate the movement of the lower portion required by claim 1 and would impermissibly expand the scope of the claim.

According to TP’s press release (TP-Release), the company’s furnaces are popular in Asia, and this win means the company’s Asian customers will not experience any delivery disruptions.

If nothing else, this decision reaffirms the importance of claim construction to the disposition of patent cases and stands for the unremarkable proposition, noted by both TP and Judge Real, that “up is not down.”

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.