Green Patent Blog is on vacation.
In a number of prior posts (e.g., here, here and here), I discussed the series of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech (GS), against a host of ethanol producers across the midwestern United States.
The lawsuits involve GS’s patented ethanol production processes, described and claimed in a host of patents, principally the ‘858 Patent Family consisting of U.S. Patent Nos. 7,601,858, 8,008,516 and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”
The patents relate 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.
GS has been on an aggressive patent enforcement campaign over the last several years, and multiple actions were consolidated in the Southern District of Indiana, where the ‘858 Patent Family was construed and re-construed.
In a sweeping 233-page decision issued in October and made public last month, the court ruled on all of the pending motions for summary judgment brought by the original parties to the suit.
On plaintiff’s side, the motions brought by GS were for summary judgment of infringement of at least some claims of each patent in the ‘858 Patent Family by each of fourteen different defendants.
On the other side, the defendants of course moved for summary judgment of non-infringement of the ‘858 Patent Family. The defendants also filed motions for summary judgment of invalidity of the ‘858 Patent Family (with GS cross-moving for summary judgment that the patents are valid).
Finally, GS alleged a subset of six defendants infringe U.S. Patent 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts” (‘037 Patent). The ‘037 Patent was also the subject of competing motions by both sides for summary judgment of infringement and non-infringement and/or invalidity.
The court made several rulings on infringement, all for defendants. Here are a couple of highlights:
The court found the defendants entitled to summary judgment of non-infringement of a number of claims of the ‘858 Patent Family because the claims require drying the concentrate, which the court construed to mean drying the reduced oil syrup leaving the oil recovery process without mixing it with anything else first. The defendants’s processes mix the reduced oil thin stillage concentrate before drying the mixture.
A number of defendants’ motions for summary judgment of non-infringement of several claims of the ‘516 Patent and ‘484 Patent were granted because the claims require that the reduced-oil syrup be “substantially free of oil” and defendants do not remove most of the oil from the incoming stream.
But the big news is the court held three of the four patents (‘858, ‘516 and ‘517) in the ‘858 Patent Family invalid because GS made a commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.
Under the patent law provisions in effect at that time, a sale of the invention or offer to sell the invention more than one year before filing a patent application directed to the invention invalidates a patent issuing on that application, so long as the invention was reduced to practice at the time of the offer.
The offer was in the form of a July 31, 2003 letter to a prospective customer which the court found was “the culmination of a commercial offer for sale”:
[T]he major elements of a contract for the sale of a system that could perform the the patented method are contained in the letter: all items necessary to recover oil and the price.
All four patents of the ‘858 Patent Family were also held invalid as obvious over a prior Prevost patent in view of the common practice of the ethanol industry at the time:
Prevost discloses centrifugation of concentrated thin stillage to recover oil. The only elements of the ‘858 patent family missing from Prevost’s explicit teachings are specific pH, moisture content and temperature range requirements that are indisputably encompassed by the standard operating conditions of a dry mill ethanol plant and the heating element recited in some of the claims.
If that weren’t enough, the court held the later-filed ‘037 Patent invalid as obvious in view of the ‘858 Patent and other prior art references.
At the end of the day, all of GS’s motions for summary judgment of infringement were denied, nearly all of its motions for summary judgment of validity of its patents were denied, none of the defendants was found to infringe GS’s patents, and the ‘858 Patent Family was found to be invalid on multiple grounds.
The Clean Energy Patent Growth Index (CEPGI) recently released its Second Quarter 2014 Results. Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents issued in the United States.
The big news is that the 940 green patents granted in the second quarter of 2014 is the highest total for any quarter since CEPGI began tracking green patent trends in 2002. This is a jump of 250 from the first quarter and 200 more than Q2 last year.
The largest number of green patents was in solar technology, with 306 solar patents, up 55 from the first quarter. This is an all-time high for solar patent grants and is part of a recent and sustained dominance, according to the report:
Solar patents were at a new high and again led the other technology sectors in the second quarter for the fifth quarter in a row…
Fuel cell patents were in second place at 232, a jump of 70 patents over the first quarter. Wind patents were up 43 to 166, to take third place, while hybrid/electric vehicle patents were in fourth place with 142. Next was biofuel/biomass patents, which reached a new high of 71, tidal patents (16), and geothermal patents (5).
The top green patentee for the second quarter of 2014 was Toyota, which had 33 patents granted, divided between fuel cells and hybrid/electric vehicles. Toyota took the crown from the leader of the prior quarter, General Motors, which was in second place with 30 granted green patents, most of which were fuel cell patents.
Vestas and Samsung tied for third place, each with 26 patents. All 26 Vestas patents were, unsurprisingly, in wind technology, and Samsung had 14 fuel cell patents, 11 solar patents, and one biofuel/biomass patent. Honda, Hyundai, and Ford took the next three spots, followed by GE, Mitsubishi, and Panasonic.
CEPGI also breaks out its data by jurisdiction, looking at the countries and individual U.S. states of green patentees. Japan was the Q2 leader with 183 green patents granted. California took second place with 98 patents, followed by Germany with 92, and Korea with 90. Michigan (56), Taiwan (38), New York (31), Denmark (30), France (24), and Texas (24) rounded out the top ten.