Archive for March, 2014

Who Owns All the Smart Grid Patents? New Study Reveals Answer

March 25th, 2014

Ever wonder who owns all the smart grid patents?  With all of the acquisitions in smart grid (see, e.g., here and here), it seems a lot of folks have been considering the question.

A recent study by patent analytics firm Relecura on smart grid patent holders seeks to answer this question.  It turns out the top five are ABB, GE, Panasonic, Siemens, and Toshiba:

The study breaks out the results by six sub-technology categories (communications, software, smart meters, sensors, substation automation, and distribution automation) and lists the top large entities and SMEs in each subcategory:

The full report, which can be found here, styles itself a “preliminary survey of the Smart Grid assignee landscape and first-cut identification of patent asset holders in Smart Grid technology.”

According to Relecura, the purpose of the study is to identify potential licensees and acquisitions targets for each of the sub-technologies.  The study uses 2008 as a reference year, and defines its Potential Licensees and Potential Acquisitions Targets relative to that year.

More particularly, Potential Licensees are entities whose patent applications were filed in 2008 or later while Potential Acquisitions Targets are typically small or medium sized entities with granted patents from applications filed in 2008 or earlier.  In other words, small companies and SMEs with relatively mature patent portfolios are deemed more ripe for acquisition and those with younger patent portfolios are thought to be more amenable to licensing IP.

With so much activity in smart grid M&A, this report could be useful to a lot of people.

Butamax Wins on Appeal as Federal Circuit Reverses Enzyme Claim Construction

March 18th, 2014

There’s been another big twist in the biobutanol battle between BP-DuPont joint venture Butamax and Gevo, its arch rival in advanced biofuels.

A previous post discussed the district court’s ruling granting Gevo’s motion for summary judgment of non-infringement under the doctrine of equivalents of two Butamax patents – U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent).  The district also denied both parties’ motions on literal infringement and reached split decisions on validity of the patents.

Butamax appealed, and the Court of Appeals for the Federal Circuit recently vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

The ’889 and ’188 Patents are both entitled “Fermentive production of four carbon alcohols” and directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

The patented processes use an enzyme called KARI, which needs a cofactor that donates electrons to enable it to catalyze a reaction.  Based on statements in the patents, the district court had interpreted the claims to require a KARI defined with respect to the NADPH cofactor only.

The crux of the Federal’s Circuit’s decision was its holding that the district court erred in its claim construction, specifically concluding that the lower court got it wrong when it interpreted the claim term “acetohydroxy acid isomeroreductase”, i.e., KARI, to mean an enzyme that is solely NADPH dependent.

The Federal Circuit found that the plain meaning of the term KARI does not in itself impose any limitation on the cofactor or the source of electrons needed for the reaction.

In addition, the appeals court found that nothing in the patents limited the definition of KARI to being only NADPH dependent:

The patent’s definition at least excludes as-yet-undiscovered KARI enzymes that could catalyze conversion of AL to DHIV without using NADPH at all.  Moreover, the description of specific types of KARI as NADPH-dependent does not clearly express an intent to redefine all KARI “using NADPH” as KARI that must be NADPH-dependent.

Ultimately, the Federal Circuit made its own determination on claim construction, defining “acetohydroxy acid isomeroreductase” by its enzyme classification number and catalytic activity:

[T]he term “acetohydroxy acid reductisomerase” is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.”

Therefore, the appeals court vacated the denial of Butamax’s motion for summary judgment of infringement because the lower court now has to consider the question of whether Gevo’s enzymes infringe the patents-in-suit under the broader claim construction.

Interestingly, this case previously went up to the Federal Circuit on appeal of a preliminary injunction decision, and the appeals court at the time warned the district court to reconsider its claim construction of the disputed term.

As to validity of the Butamax patents, the Federal Circuit reviewed the record and found sufficient evidence – in the form of expert testimony and scientific publications – to create a genuine issue of fact that the ‘889 Patent meets the written description requirement because those of skill in the art know how to deactivate the genes that express the claimed pathway.

So the case will go back down to the district court for another round on infringement and validity.

Green Patent Fast Track Opens in Taiwan

March 11th, 2014

It’s been a while since a national intellectual property office has seen fit to open a fast lane for green technology patent applications.  So the recent announcement out of Taiwan is welcome news.

The Taiwan Intellectual Property Office (TIPO) now includes green technology as a new category of application or invention eligible for expedited examination under TIPO’s existing Accelerated Examination Program (AEP).

TIPO is defining green technologies broadly (as I have argued is important for boosting participation in these programs); the application is eligible if the invention is:

  • related to energy saving, new energy or automobiles powered by new energy;
  • related to energy saving and carbon reduction

One drawback of TIPO’s fast track program is its publication requirement; to qualify for the AEP a patent application must have published before the applicant makes the AEP request.

Because Taiwan is not a PCT contracting state (i.e., it does not participate in the international patent application system), non-Taiwanese applicants must file their applications in TIPO within one year of their original home country filing date.  And because patent applications typically publish 18 months after their original filing date, that means non-Taiwanese applicants must wait an extra six months or so after filing their application in Taiwan to request expedited examination there.

The TIPO fee for accelerated examination of a green technology patent application is NT$4000 (about $134 USD), and the applicant need only submit a written request explaining that the invention in the subject patent application relates to green technology.

The time saved under the AEP is substantial.  According to this article, it takes about 29 months to receive a first office action during ordinary examination in TIPO; under the AEP TIPO issues a first office action in about nine months.

In Memoriam: IP, Innovation, and Environmental Scholar Sarah Tran

March 9th, 2014

I am very sad to report that Sarah Tran, a professor at SMU’s Dedman School of Law, passed away on February 28th from complications from leukemia.  She was 34 years old.

Sarah was an important patent scholar, as detailed here in a recent Patently-O blog post and was a very dedicated teacher, even while battling her illness.

Significantly for readers of this blog, Sarah was among the first (and few) patent scholars to analyze and critique the U.S. Patent and Trademark Office’s Green Technology Pilot Program, calling for the program to be made either long-term or permanent (see her article, Expediting Innovation, here and my post on an early draft here).

In addition, with Peter Menell, Sarah co-edited a compilation on the interplay of intellectual property, innovation and environmental protection entitled Intellectual Property, Innovation, and the Environment, which comes out later this month in the United States.

On a personal note, I had the pleasure of meeting Sarah and her family when I was in Dallas for a conference a couple of years ago.  As I branched out to academic writing and publishing, Sarah was very encouraging and provided valuable advice.

I was glad to have had the opportunity to help her a little bit by recording a guest lecture for one of her classes when she was in the hospital last year.

This is a huge loss for everyone who knew her both personally and professionally; she will be deeply missed (see more on her life here).

Sarah’s family has asked that you consider making a contribution to the fund created to support her two young children, the Tran Children Development Fund.

Chinese Eco-mark Lawsuit Ends Well for Tesla

March 4th, 2014

A previous post reported on Tesla’s Chinese trademark problem.  Apparently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China, blocking  the American automaker from using the mark there.

Mr. Zhan was also operating a web site using the Tesla China domain (www.teslamotors.com.cn), and operating a Tesla-branded account on the Chinese microblog site Sina Weibo.

As part of a recent press release announcing its plan for growth in China the company said it resolved the trademark issue.  More particularly, Tesla obtained a court decision granting it the right to use the TESLA mark in China (see the story here on Green Car Reports and covered by Clean Technica here).

Veronica Wu, Tesla’s vice president for China operations, said the company had won this right without the need to pay Mr. Zhan (who had apparently hinted that he would sell the trademark for millions of dollars).  According to Wu, “we went to court and won.”

Though technically Zhan may have been the first user of the TESLA mark in China, the court decision seems right because his apparent high asking price for the mark signals bad faith on his part and that his use may not have been bona fide.

This decision bodes well for American and other non-Chinese companies who may need to protect and enforce their intellectual property rights against local competitors in China.

The highest profile clean tech IP dispute in China is the trade secrets and copyright case between American Superconductor and Chinese turbine manufacturer Sinovel, which made it all the way to, and is (as far as I know) still pending in, the Chinese Supreme Court.