Archive for February, 2012

In Green Brand Battle U.S. Court Bars Chinese SUN-EARTH Eco-mark

February 28th, 2012


SunEarth (owned and operated by the Solaray Corporation since 1992) has been marketing and selling solar thermal collectors and related components under the SUNEARTH brand since 1978.

In 2009, SunEarth filed an application with the U.S. Patent and Trademark Office (USPTO) seeking federal trademark protection for the SUNEARTH word mark. 

The USPTO suspended action on the application in view of an earlier filed application owned by Ningbo Solar Electric Power (Ningbo) for the SUN-EARTH (and Design) mark:

Through a predecessor company, Ningbo had been using its SUN-EARTH design mark in China since 1978 and began using the mark in the U.S. in 2004.

A U.S. trademark application filed in 2006 for the SUN-EARTH design mark went abandoned for failure to file a Statement of Use.

In 2008, Ningbo filed a second application to register the SUN-EARTH design mark.  This was the application cited against SunEarth. 

The USPTO granted Ningbo’s second application and issued it as U.S. Trademark Registration No. 3,886,941 (‘941 Registration) on December 7, 2010.  Ningbo changed its name to Sun-Earth Solar Power (SESP) in 2010.

After filing a proceeding in the USPTO Trademark Trial and Appeal Board to cancel the ‘941 Registration and trying to negotiate a settlement with Ningbo, SunEarth sued for trademark infringement, cancellation of the registration, and other claims in the Northern District of California in October 2011.

The court recently granted a preliminary injunction against SESP, prohibiting it from using the SUN-EARTH name or mark in the United States.

According to the Order Granting Plaintiff’s Motion for a Preliminary Injunction, although SESP has a presumption of ownership of the SUN-EARTH mark due to its federal registration, SunEarth “[is] likely to be able to prove a protectable ownership interest in the trade name and mark that is senior to that of [SESP].” 

The Court based this on its determination that SunEarth was likely to have been using the SUNEARTH mark in the United States before SESP entered the U.S. market in 2007:

Plaintiffs are likely to be able to establish legally sufficient market penetration over their trade name and mark prior to 2007.

The court also noted that SunEarth had produced some evidence of actual consumer confusion:

In addition to several instances of confusion by trade show organizers, Plaintiffs have proffered more than ten examples of actual customer confusion . . .

This case is a good illustration of the “first to use” system of trademark priority in the United States. 

A federal trademark registration creates a presumption of trademark ownership.  However, that presumption can be rebutted by showing a similar trademark was used by someone else in interstate commerce within the United States before the registered trademark.

This case also highlights the difficulties foreign based clean tech companies may face in protecting their green brands when they decide to enter the U.S. market.  We’re likely to see more of these types of cases, particularly from Chinese companies.

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.

Green Patents, Post-Grant Review, Contingent Fees, and the AIA at Notre Dame Symposium

February 26th, 2012

I will be speaking at the Emerging Issues in Intellectual Property Symposium at Notre Dame Law School on Friday, March 2, 2012, along with Chicago-Kent College of Law Professor David Schwartz and Kirkland & Ellis partner Barry Irwin

Professor Schwartz will present his work on contingent fee patent litigation, and Mr. Irwin will talk about post-grant review at the U.S. Patent and Trademark Office.

I will present on the green patent fast track programs offered in intellectual property offices around the world.  My talk will discuss the details of these initiatives, which provide for accelerated examination of patent applications directed to green technologies.

I will also present a critical analysis of the programs and discuss my proposal for a harmonized international green patent fast track system (more on that later, but my article on the subject can be found here).

The speakers will also participate in a panel discussion on the America Invents Act.

The info on the symposium can be found in the pic of the flyer above.  I hope to see you there.

GE Patent Rides Through Mitsubishi Attacks

February 24th, 2012

A previous post discussed one of GE’s more recent wind patent infringement suits against Mitsubishi. 

Filed in the Northern District of Texas in Dallas, the complaint (gecomplaint.pdf) alleges that Mitsubishi’s 2.4 megawatt wind turbine infringes U.S. Patent Nos. 6,879,055 (‘055 Patent) and 7,629,705 (‘705 Patent).  The ‘055 Patent is directed to a two-part base frame for arranging a drive train on the tower of a wind turbine.

The ‘705 Patent relates to methods of facilitating zero voltage ride through so the turbine can remain online during voltage dips down to zero volts.

The patented systems and methods include a phase-locked loop (PLL) regulator to receive voltage measurement signals from a plurality of voltage transducers.  The PLL regulator includes a PLL that receives the sinusoidal voltage measurement signals.

If a voltage amplitude is outside a pre-determined range, an algorithm within the PLL generates a control signal and the PLL regulator changes to a different mode or state of operation.  A plurality of states of operation are possible, with varying parameters such as gain constants.

According to the ‘705 Patent:

the plurality of states of operation facilitate zero voltage ride through (ZVRT) as well as other grid faults while also facilitating normal operation.   

GE recently survived a motion for summary judgment in which Mitsubishi argued (1) that it does not infringe the ‘705 Patent and (2) that the patent is invalid based on a prior sale of the patented technology, lack of enablement of claim 1 of the patent, and that claim 1 is anticipated by a prior art patent application.

The court denied the motion and rejected all of Mitsubishi’s arguments (GE_Order).

Key to the infringement ruling was the court’s prior construction of claim 1 of the ‘705 Patent, which requires that the wind turbine be configured to remain connected during and after grid-voltage fluctuations for “an undetermined period of time.”  This term was construed to mean “an indeterminable or unknowable period of time.”

Mitsubishi noted that its wind turbine rides through grid disturbances lasting less than a predetermined period of time and disconnects when the disturbance lasts longer than that predetermined time period.  Therefore, it argued, the turbine does not literally infringe claim 1 of the ‘705 Patent because it does not remain connected during and after fluctuations lasting for “an undetermined period of time.”

However, in construing claim 1, the court also held that the “undetermined period of time” refers to the voltage fluctuation taking place on the grid itself, not the connection between the grid and the wind turbine.  Thus, the time period a wind turbine remains connected to the grid is not dispositive of infringement of the ‘705 Patent:

As such, the Court has already determined that the claim term “undetermined period of time” does not necessarily foreclose wind turbines that impose limits on the period of time the machine remains connected while the voltage is outside of the predefined range.  Therefore, the Court cannot decide as a matter of law that Mitsubishi’s turbines do not infringe the patent literally or under the doctrine of equivalents.

On invalidity, Mitsubishi first argued that GE offered to sell the technology of the ‘705 Patent more than a year before filing the patent application.  For a patent to be invalid based on a prior sale, the product has to be the subject of a commercial offer for sale, and the invention must have been ready for patenting. 

The parties did not dispute that two sales contracts before the critical one-year date were for the later-patented turbines.  However, GE showed that pre-critical date descriptions of the invention did not include certain important features of the invention, such as gain and limit values, and later modifications added converter shutdown to the zero voltage ride through methodology. 

Accordingly, the court held that Mitsubishi could not show that the technology of claim 1 of the ‘705 Patent was ready for patenting and denied the motion for invalidity based on prior sale. 

Mitsubishi also came up short on its enablement argument and couldn’t demonstrate that a prior art patent application anticipated the type of connectivity recited by claim 1 of the ‘705 Patent.

So this case will move forward, perhaps to trial.  This is just one of several suits in a large legal battle between these wind turbine rivals.  The disputes also include patent infringement allegations and antitrust claims by Mitsubishi.

Green Patent Acquisitions: Private Equity Firm Snaps Up Beacon Power’s Flywheels

February 22nd, 2012

Beacon Power is a Massachusetts company that makes flywheel-based energy storage systems. 

Rockland Capital, a private equity firm, recently purchased Beacon Power, including a Stephentown, New York, flywheel plant project.  The purpose of the project is to allow excess energy from the grid to be stored at the plant, and then re-emitted at a later time when energy demand increases.

According to Cleantech PatentEdge™, Beacon Power Corporation is listed as the owner of record on 69 U.S., European, and international (PCT) patents and published applications.

U.S. Patent No. 6,614,132 (‘132 Patent), entitled “Multiple flywheel energy storage system,” describes an energy storage system comprising a plurality of flywheel systems, while U.S. Patent No. 8,008,804 (‘804 Patent) is entitled “Methods, systems and apparatus for regulating frequency of generated power using flywheel energy storage systems with varying load and/or power generation” and describes how frequency can be regulated using flywheels.

In the invention of the ‘132 Patent, each flywheel energy storage system unit (100) generates kinetic energy by spinning at a constant rate and drives a motor/generator (104).  According to Beacon’s web site, the company’s Smart Energy 25 flywheel can rotate at speeds of up to 16,000 rpm.

A bi-directional inverter (108), which can convert AC to DC power and vice-versa, is connected to the motor/generator (104). These components are then linked to a control processor (112) that can control the power output of the system.

A connector circuit combines each of the systems.  In a Beacon Smart Energy Matrix, 10 flywheels are connected.

The ‘804 Patent relates to methods for regulating the AC frequency of the electrical power to be supplied by the flywheels to the grid.

By tracking long-term variations in the power being utilized by the grid, it can then be determined when it would be best to have the flywheels in either power-generating or power-absorbing mode.  Thus, if the grid is in need of more energy, the flywheels can shift into power-generating mode.

Rosemary Ostfeld is a contributor to Green Patent Blog.  Rosemary recently completed both her undergraduate and graduate education at Wesleyan University in Middletown, Connecticut.  She double majored in Biology, and Earth & Environmental Sciences as an undergraduate, and received her Master’s in Earth & Environmental Sciences.

Chinese Courts Hand Down Split Decisions as AMSC-Sinovel IP Disputes Get Moving

February 20th, 2012


In a previous post, I discussed the IP litigation in China between American Superconductor (AMSC) and Chinese wind energy system maker Sinovel.

The dispute centers on allegations that Sinovel misappropriated AMSC’s software code for controlling wind turbines and power converters.  

Last year, a former AMSC employee pled guilty to charges of passing portions of AMSC’s wind turbine control software source code to Sinovel.  The control software was developed by AMSC for use with Sinovel’s 1.5MW wind turbines.

AMSC accuses Sinovel of unauthorized use of the turbine control software source code and the binary code, or upper layer, of its software for the PM3000 power converters in the 1.5 MW turbines.

AMSC also believes the former employee illegally used the source code to develop a software modification so Sinovel could circumvent the encryption and remove technical protection measures on certain power converters used with the turbines.

The litigation has involved four separate actions by AMSC in various forums in China.

Recently, there were rulings in two of those actions.  In the first, the Hainan Province No. 1 Intermediate People’s Court dismissed AMSC’s copyright infringement suit filed there in September.

The decision was on jurisdictional grounds after Sinovel filed a motion to dismiss in December.  According to AMSC President and CEO Daniel McGahn, the action was AMSC’s smallest case, in which the company had requested about $200,000 in damages as well as a cease and desist order.  McGahn said AMSC would appeal the ruling (see the Recharge piece here).

The second ruling went AMSC’s way.  The Beijing No. 1 Intermediate People’s Court denied Sinovel’s motion to strike AMSC’s copyright action and have the case transferred to the Beijing Arbitration Commission.  This action involves a $6 million damages claim by AMSC (see the Windpower Monthly article here).

A third action, involving trade secrets claims, is pending in the Beijing Higher People’s Court.  AMSC is seeking over $450 million in damages in that case.

Finally, AMSC continues to pursue its contractual disputes with Sinovel in the Beijing Arbitration Commission.

According to experts interviewed for this Greentech Media piece, a critical weakness in AMSC’s case is that the company’s contract with Sinovel did not specify the amount of damages it would be entitled to in the event of a breach.

Perhaps AMSC’s four-pronged litigation approach is a way to hedge its bets in an uncertain Chinese IP enforcement environment.  For technology companies around the world that want to do business in China, this is an important dispute to watch.

Butamax Bellicose in Burgeoning Biobutanol Battle

February 17th, 2012

A previous post included a discussion of the latest salvo in the growing green patent war between Colorado biofuels startup Gevo and Butamax, a BP-DuPont joint venture. 

The rivals both make biobutanol, an advanced biofuel which has some significant advantages over ethanol, including an energy content closer to that of gasoline and the capacity to create higher blend concentrations with gasoline.

In the most recent complaint (Gevo-Butamax_Complaint), filed in the federal court in Delaware on January 24, 2012, Gevo accuses Butamax of infringing U.S. Patent No. 8,101,808 (‘808 Patent) by performing certain isobutanol production processes.

The ‘808 Patent, granted on January 24, 2012, is entitled “Recovery of higher alcohols from dilute aqueous solutions” and directed to methods of recovering C3-C6 alcohols from a fermentation broth.

The latest complaint has prompted Butamax to fight back in the court of public opinion with a press release (see the story by Jim Lane (no relation) of Biofuels Digest here).  The release, entitled “Butamax Refutes Unfounded Allegations of Infringement,” quotes the company’s CEO, Paul Beckwith on non-infringement and invalidity of the ‘808 Patent:

Let us state emphatically, Butamax does not infringe the generic product separation technology claims in Gevo’s recent patent, which is already subject to a validity challenge by a Brazilian inventor . . . . While it does not surprise us that questions are being raised as to the validity of Gevo’s latest patent and whether Gevo provided sufficient disclosure in their patent application, Butamax does not use this technology.

The press release characterizes Butamax’s technology as having “fundamentally different product recovery systems” and providing “a unique synergy between the company’s biocatalyst technology and product recovery system.”

Butamax fired the first shot in this dispute with a patent infringement suit filed in January 2011, in which it accused Gevo of infringing U.S. Patent No. 7,851,188, entitled “Fermentive production of four carbon alcohols” (‘188 Patent).  A second suit, filed in August 2011, alleged infringement of U.S. Patent No. 7,993,889 (‘889 Patent), a later issued patent of the same title related to the ‘188 Patent.

According to the press release, the’889 Patent covers Butamax’s technology and has “significant priority over all of Gevo’s patent filings.”

In addition, the press release touches on a few procedural points:  it says that Butamax has moved to dismiss “Gevo’s previous case” against it, will “pursue early resolution” of the latest suit, and with respect to its own infringement charges, indicates that Butamax is seeking a preliminary and permanent injunction against Gevo.

As mentioned in previous posts, this is the first instance I’ve seen of biofuels patent litigation involving one of the oil majors, which clearly have begun to use patent litigation to protect their new turf.

Danish Greenwash: Metal Industry Group Defeats Plastic Packager in False Advertising Case

February 15th, 2012

An interesting piece on reports on a recent decision involving greenwashing (and apparently reverse greenwashing) claims in Denmark.

The ruling by the Danish Maritime Court is the culmination of a dispute that began in 2008 after Empac, a European metal packaging industry group, sued RPC Superfos, accusing the Danish plastic packaging company of making false or misleading environmental claims in marketing literature.

In particular, Empac alleged that certain statements about the environmental benefits of plastic versus the negative environmental impact of metal packaging were inaccurate and unsubstantiated. 

According to the article, the Danish court agreed with Empac and found the statements to be inaccurate and unsupported, including invalid statements relating to carbon dioxide emissions.  Althought the court did not order Superfos to pay any damages, the company is prohibited from making certain claims and using certain images detrimental to metal packaging producers.

The court decision stressed the importance of the accuracy of environmental claims in advertising:

To prevent unfair competition strict requirements for accuracy of such environmental claims must apply.  These have to be clear, true, specific and not misleading and have to be substantiated by an impartial expert.

The article quotes Jim Hansen, secretary general for the Danish Aluminum Association, which represented Empac in the case, as calling it important to “have on record that Superfos acted in contravention of the advertising guidelines.”

Hansen also mentioned that advertisers should be careful about life cycle analysis claims, especially those relating to an industry outside the realm of the advertising firm:

Life cycle analyses usually center on someone’s own material.  But if you do make statements about another industry’s material you should be careful.

Which brings us to reverse greenwashing.  In a previous post I discussed this increasingly common phenomenon.

Greenwashing is advertising that misleads consumers about the environmental benefits of goods or services.  For example, making unsubstantiated claims about better energy efficiency or lower environmental impact.

Reverse greenwashing, on the other hand, consists of false or deceptive claims about the negative environmental impact of competitors’ products, such as the detrimental effects of metal containers on the environment.

Reverse greenwashing typically arises in the context of comparative advertising of environmentally friendly aspects of products or services, essentially comparative green advertising.  

I’m sure we’ll see much more of it as the market of green products and service becomes increasingly crowded and firms need to differentiate themselves from their competitors to sell their wares.

Clean Tech in Court: Green Patent Complaint Update

February 13th, 2012

There have been a few green patent complaints filed in the last few weeks in the fields of HVAC systems, thermostats and temperature control systems, and tankless water heaters.


HVACs, Thermostats, and Temperature Control

Nidec Motor Corporation v. SNTech, Inc.

Filed on January 12, 2012 in the U.S. District Court for the Eastern District of Missouri, Eastern Division, Nidec Motor Corporation’s (Nidec) complaint (Nidec_Complaint) alleges that SNTech infringed three of its patents relating to blower motors for HVAC systems.

The asserted patents are U.S. Patent No. 5,818,194 entitled “Direct Replacement Variable Speed Blower Motor” and U.S. Patent No.’s 7,990,092 (‘092 Patent) and 8,049,459  (‘459 Patent) both entitled “Blower Motor for HVAC Systems”.

All three of the above patents describe high efficiency, variable speed, drop-in replacement motors for use in residential heating, ventilation, and air conditioning (HVAC) systems. 

The motors have sensing circuits which deliver corresponding signals to a motor controller that controls the speed of a variable speed motor.  The ‘092 and ‘459 Patents describe the sensing circuits that provide signals to the motor controller.

Honeywell International, Inc. v. Nest Labs, Inc. et al.

On February 6, 2012, Honeywell filed suit against Nest Labs (Nest) and Best Buy in the U.S. District Court for the District of Minnesota.  The Complaint (Honeywell-Nest_Complaint) alleges that Nest is infringing seven of Honeywell’s patents relating to thermostat control technology.

While this complaint relates to patents asserted against Nest, the ramifications of the suit could have a broad reach due to the subject matter of the patents asserted.  Below is a list of the asserted patents by patent number and a brief description of each (as the descriptions were given in the complaint):

7,634,504 entitled “Natural Language Installer Setup for Controller”, describes inventions directed at simplifying methods that use natural language to program a thermostat.

7,142,948 entitled “Controller Interface With Dynamic Schedule Display”, describes methods for operating a thermostat including calculating the time anticipated to reach a particular set temperature.

6,975,958 entitled “Profile Based Method for Deriving a Temperature Setpoint Using a ‘Delta’ Based On Cross-Indexing a Received Price-Point Level Signal”, describes a method for reducing energy costs by controlling a thermostat from information stored in a remote location.

7,584,899 entitled “HVAC Controller”, describes an HVAC controller that has a rotatable part which can control one or more parameters of the HVAC system.

7,159,789 entitled “Thermostat with Mechanical User Interface” (‘789 Patent), describes an apparatus for locating a non-rotating part of a thermostat inside of a rotating part, while allowing the rotating part to set and/or control different parameters of the thermostat.

7,159,790 entitled “Thermostat with Offset Drive”, is related to the ’78 Patent and describes the same inventions.

7,476,988 entitled “Power Stealing Control Devices”, describes a power stealing device, whereby a thermostat can divert, or skim, a small amount of electrical charge from a home’s electrical system.

This case has already gotten some attention.  You can access articles here and here which discuss the issue; the first article has commentary from the Green Patent Blog’s own Eric Lane.


Tankless Water Heaters 

EcoSmart US, LLC v. American Heat Manufacturer, LLC

Recently, EcoSmart filed a complaint in the U.S. District Court for the Southern District of Florida against American Heat Manufacturer (AMH).  That complaint is not published.  However, it appears from AMH’s Counterclaims, which are publicly available, that EcoSmart is alleging infringement of U.S. Patent No. 7,945,146 entitled “Tankless Water Heater with Power Modulation” (‘146 Patent).

The ‘146 Patent describes control systems for tankless electric hot water heaters.  The control system monitors the temperature of water entering a hot water heater, the flow rate of the water through a pipe prior to heating, the set point for a temperature of heated water, and one or more heating elements.

On January, 23, 2012, American fired back by filing a counterclaim (American_Heat_Counterclaims) against EcoSmart and Carlos Cabrera, a former employee of EcoSmart.  The counterclaim seeks Declaratory Judgment of non-infringement of the ‘146 Patent, Declaratory Judgment of invalidity of the ‘146 Patent, and tortious interference with a business relationship.

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.

Green Patent Database Begets Blog

February 10th, 2012

Lately I’ve had the privilege of taking CleanTech PatentEdge for some test runs.  CleanTech PatentEdge is a powerful clean tech patent database and research solution developed and offered by Berkeley patent analytics firm IP Checkups.

For me it has facilitated search and identification of relevant patents and published patent applications for a number of my blog posts and a few research projects.

Recently the folks at IP Checkups have started a blog of their own.  The CleanTech PatentEdge Blog presents stories and trends based on green patent information from the database and highlights ways the database can be used.

More broadly, the blog shows how important patent strategy is in the clean tech industry and beyond.  According to Lily Li, Patent strategist and Director of Marketing & Business Development at IP Checkups:

The goal of the CleanTech PatentEdge blog is to highlight the importance of patent strategy for non-patent experts. Most corporate executives ignore patent strategy, even though it plays a critical role in any business – whether it is to stay on top of the competition, make more informed R&D and investment decisions, or win the war for the best employees.

Some of the recent posts that caught my eye were this LED market forecast (over 100 US and WIPO patent apps directed to LEDs published on a single day, January 26, 2012 – it boggles the mind!), this piece on water technology trends and players, and a post on using an employee’s status as a named inventor on patents as an indicator of value for hiring decisions.

It’s great to have more green patent perspective in the blogosphere. especially when it’s supported by such interesting data.  I look forward to many more stimulating posts.




Making Waves in Renewable Energy: The AWS Wave Swing III

February 8th, 2012


Alstom and SSE Renewables have signed a new joint venture agreement to co-develop the world’s largest wave farm in the Costa Head Wave Project, off the coast of Orkney, Scotland. The farm will deliver up to 200 Megawatts of renewable energy utilizing AWS Ocean Energy Ltd’s (AWS) Archimedes Wave Swing III technology (AWS-III).

AWS is based in Inverness, Scotland, and the company’s stated purpose is to develop and deliver the technology of choice for utility scale generation of offshore wave power.

AWS-III is described in U.S. Patent Application Publication No. 2011/0185721, entitled “Energy Conversion Device” (‘721 Application) and directed to an array of interconnected compressible cells which convert wave energy into pneumatic energy by moving air between the cells.  Turbines within the device convert the moving air into electricity.

Figure 1 of the ‘721 Application illustrates the wave energy device.  The device has twelve interconnected cells (20) arranged in a ring.  The cells are connected to a ring-like air duct (not shown) and have a diaphragm (30) on their outer edge. 
The diaphragm moves relative to the cell when wave action (40, 50) presses against the movable diaphragm surface.  The movement of the diaphragm causes air within the cells to be pumped into and out of the air duct and between the cells.  The moving air then spins a turbine, which produces electricity.

Each multi-cell array can produce up to 2.5 megawatts of electricity.  Once in place, the devices are moored to the sea floor in depths ranging from 60 – 150 meters.  Each device will be connected to the local utility grid from an offshore substation via a high voltage link.

According to a joint press release, a 1:9 scale model of the AWS-III was deployed in Loch Ness, Scotland in 2010.  Full scale component testing will commence in 2012 and a full scale prototype is planned for deployment in 2014.

In the press release, Simon Grey, Chief Executive at AWS stated:

The selection of the AWS-III system for this exciting and ground-breaking project is a significant endorsement of our technology and team.  We firmly believe that the AWS-III will become the established choice for utility scale offshore wave power generation.  We look forward to working with Alstom and SSE to deliver Costa Head.

AWS and Alstom predict there is a potential worldwide market for renewable wave energy in the 200 to 300 gigawatt range. If successful, this 200 megawatt wave farm will be a large step in making that prediction a reality.

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.