Archive for the ‘Biofuels & Biomaterials’ category

Court Re-Construes GreenShift Ethanol Processing Patents and Defers SJ Motions

February 15th, 2013

Previous posts (e.g., here and here) 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 litigation currently consists of 11 actions consolidated in the Southern District of Indiana in which GreenShift has accused the defendants of infringing U.S. Patent Nos. 7,601,858 (‘858 Patent), 8,008,516  (‘516 Patent) and 8,283,484 (‘484 Patent), entitled “Method of processing ethanol byproducts and related subsystems” and U.S. Patent No. 8,008,517 (‘517 Patent), entitled “Method of recovering oil from thin stillage.”  The latter three patents were recently added to the case.

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.  The patented methods include 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.

Following a mixed claim construction ruling, a number of defendants filed motions for summary judgment of non-infringment of the ‘858, ‘516 and/or ‘517 Patents, and GS filed a motion for summary judgment of infringement of the ‘858 and ‘516 Patents.

In a recent decision the court revisited its interpretations of a few claim terms and, based on the new constructions, denied the SJ motions all around without prejudice.  The key term the court focused on was “substantially free of oil” / “substantially oil free.”

The defendants argued that all of the patent claims require the concentrate or syrup after the oil recovery step to be substantially free of oil.  The court disagreed and held that none of the claims of the ‘858 Patent have this requirement and only claim 7 of the ‘516 Patent and claim 8 of the ‘484 Patent  require that the post-oil recovery step syrup stream be substantially oil free.

Another issue in interpreting the “substantially oil free” term was whether it should be defined as a comparison between the oil concentration in the incoming thin stillage stream and the outgoing remaining-concentrate stream.  The defendants also contended that the term should mean the post-oil recovery thin stillage stream contains 5% or less of the oil in the incoming stream.

The court agreed with the comparison but declined to impose a quantitative requirement for the percentage of oil.  Accordingly, the term “substantially oil free” was interpreted according to the ordinary meaning of largely and mostly oil free but is measured by a comparison of the oil concentration in the incoming thin stillage and the oil concentration in the resulting syrup:

[T]he Court concludes that the “substantially oil free” limitation in claim 7 of the ‘516 Patent and claim 8 of the ‘484 Patent means the syrup exiting the centrifuge is substantially oil free compared to the incoming thin stillage, where substantially has its ordinary meaning of largely or mostly.

The court went on to  dismiss all of the pending summary judgment motions without prejudice and with leave to re-file.  In view of the new claim construction and the recent addition of three patents to the litigation, the court decided the parties would need more time to develop their arguments on infringement:

[T]he Court recognizes that the decisions in this Order will have an impact on the parties’ positions with respect to infringement.  In addition, as discussed in the introduction, since the date the parties filed their summary judgment motions the Court has allowed CleanTech to amend its complaints against each Defendant such that nearly all patents in the ‘858 patent family are asserted against each of them.  For both of these reasons, the currently-briefed summary judgment motions likely do not address all the arguments the parties wish to raise with respect to CleanTech’s allegations of infringement and, to resolve the infringement issues fairly, the Court will require the parties to address the allegedly infringing processes under the new claim construction.


Court Issues Split Decision in Cargill’s Renewable Fuel Credits Greenwash Case

January 21st, 2013

The Renewable Fuel Standard (“RFS”) Program is an EPA program promulgated under the Clean Air Act which mandates that certain “obligated parties” must sell gasoline containing a certain percentage of renewable fuel.  To ensure that sufficient volumes of renewable fuel are produced in and imported into the U.S., companies in the gasoline business are required to meet annual Renewable Volume Obligations. 

One way these parties meet their obligations is by acquiring enough Renewable Identification Numbers, or RINs, to demonstrate compliance.  A RIN is a numeric code generated by a renewable fuel producer or importer that represents a gallon of renewable fuel.

Cargill, a large conglomerate known primarily in the food and agricultural industries, produces and sells biofuels and participates in energy markets.  In September of 2012, Cargill sued International Exchange Services (IES), a commodities trader, for allegedly transferring invalid RINs and failing to remedy the problem.  

According to the Cargill complaint, the disputed RINs were purportedly originally issued by a producer called Double Diamond Biofuels (Double Diamond), but the RINs were not valid and not actually generated by Double Diamond. 

In a recent decision, the court dismissed two Cargill causes of action, including the claim under the Clean Air Act.  However, Cargill may go forward with its breach of contract claim.

Because it does not involve individual green consumers and consumer products such as water bottles, cleaning supplies, or hybrid vehicles, this would not typically be thought of as a greenwashing case.  But if Cargill’s allegations are true, the fraudulent activity does represent a grave instance of greenwashing. 

The generation of invalid RINs undermines the policy of the RFS Program – to ensure a certain level of renewable fuel in U.S. gasoline – by damaging the market for valid RINs and ultimately reducing the actual volume of biofuels in circulation. 

According to a spokesman for a biodiesel trade group quoted in this StarTribune article, the RIN scam has hurt the biofuels industry by making obligated parties more wary of purchasing the credits from biodiesel producers. 

The fraud and resulting damage are recognizable when we view the putative RIN purchasers such as Cargill as green consumers, albeit commercial consumers instead of individuals, falling victim to false representations about the validity of renewable energy-based financial products.

In addition to the Cargill civil case, the StarTribune piece says the U.S. government has prosecuted two companies that were allegedly generating fraudulent RINs, and the owner of one was convicted.

Federal Circuit Denies Butamax’s Bid to Revive Preliminary Injunction

December 4th, 2012

Previous posts (e.g., here, here and here) discussed the continually expanding green patent war between advanced biofuels startup Gevo and a BP-DuPont joint venture called Butamax Advanced Biofuels (Butamax).

There are at least 17 patents at issue in the various actions brought by both parties.  The patents relate to methods of production of biobutanol and enzymes used in the production processes.

In the first appellate court ruling of the litigation, Butamax lost its bid to obtain a preliminary injunction against Gevo.

Butamax had requested that a Delaware district court enjoin Gevo from selling biobutanol which allegedly infringed U.S. Patent No. 7,993,889, entitled “Fermentive production of four carbon alcohols” (‘889 Patent).  The ‘889 Patent is directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

The Delaware district court denied Butamax’s motion because Gevo’s strong non-infringement position made it unlikely that Butamax would prevail on infringement, and there was doubt as to the validity of the ‘889 Patent as some claims had been preliminarily rejected by the U.S. Patent and Trademark Office in reexamination proceedings.

Butamax appealed, and the Federal Circuit affirmed the district court’s denial of the preliminary injunction.  On appeal Butamax had to show the district court’s decision was an abuse of discretion and that the validity question raised by Gevo “lacks substantial merit.” 

The Federal Circuit found Butamax failed on both counts, though the decision focused primarily on the validity issue:

Based on the record and this standard of review, this court affirms the denial of the preliminary injunction.  Gevo, Inc. raised a substantial question of validity concerning the asserted patent, a question which Butamax has failed to show “lacks substantial merit.”

However, the appeals court did call into question a claim construction ruling of the district court which was favorable to Gevo.  More particularly, the district court had construed an enzyme recited in a ‘889 Patent claim relatively narrowly as being defined with respect to only one of two possible cofactors, i.e., as only NADPH dependent.

The Federal Circuit indicated it disagreed with this claim construction and advised the district court to reconsider at the claim construction hearing:

this court’s affirmance should not be read to endorse the trial court’s very questionable construction of the claim term “acetohydroxy acid isomeroreductase” – that is “as an enzyme that is solely NADPH dependent.”  The trial court should reconsider its construction when it holds a Markman hearing.

So the case will move forward, and Gevo may continue to sell its bio-based isobutanol while the litigation is pending.



Enzyme Distributor Admits Infringement As Novozymes Wins Injunction

October 3rd, 2012


In a previous post, I discussed Novozymes’ patent infringement complaint against CTE Global in which the Danish biopharmaceutical company accused the Illinois enzyme distributor of infringing U.S. Patent Nos. 6,255,084 (‘084 Patent) and 7,060,468 (‘468 Patent).

The ‘084 and ‘468 Patents are entitled “Thermostable glucoamylase” and are directed to an isolated glucoamylase enzyme which has higher thermal stability than prior glucoamylases.  The patents also claim starch conversion processes using the enzyme.  Glucoamylases are used to convert hydrolyzed corn starch to glucose, particularly in production of ethanol.

The parties recently settled the case and the court entered a Consent Judgment and Permanent Injunction ending the lawsuit.

Per the Settlement Agreement and as reflected in the court’s order, CTE acknowledged distributing and selling the accused products and infringing the patents-in-suit:

4.     CTE acknowledges that it has distributed and sold in the United States glucoamylase products designated GLUCOAMYL L 706+ and GLUCOAMYL LG20 (hereinafter referred to as the “Glucoamylase Products”), and that at least some of the Glucoamylase Products distributed and sold in the United States by CTE contained a glucoamylase enzyme having the amino acid sequence attached to this Consent Judgment as Exhibit A (hereinafter referred to as the “Accused Products”).

*     *     *

7.     CTE acknowledges that it has infringed the Patents-In-Suit by importing the Accused Products into the United States and by using, offering to sell and selling the Accused Products within the United States.

The court order imposes a permanent injunction prohibiting CTE from making, using, selling, offering to sell and importing into the U.S. the Accused Products.

Novozymes has had previous success in major green patent litigation, winning an $18 million infringement verdict against rival Danisco.

DuPont: Green Chemistry and Sustainability Efforts in Action

August 21st, 2012

According to the EPA, “green chemistry” is defined as:
“…The design of chemical products and processes that reduce or eliminate the use or generation of hazardous substances. Green chemistry applies across the life cycle of a chemical product, including its design, manufacture, and use.”

DuPont owns countless patent and patent applications that would fall under the “green chemistry” definition, but unbeknownst to some, green chemistry has been an integral part of DuPont’s business strategy since the company began.

DuPont began in 1802 on the Brandywine River in Delaware. What started out as a gunpowder company with only 40 employees grew to be one of the nation’s largest companies. As an initial producer of explosives, the company was concerned with safe business practices and product stewardship starting on day one.

“It’s built into the company’s DNA,” Dr. Henry Bryndza, Director of Bio-Chemical Sciences and Engineering at DuPont noted. DuPont expanded rapidly within its first century of commercialization and continued its commitment to employee and consumer health and safety; the company established the first industrial toxicology lab in North America, dedicated to product stewardship.

In the early 1990’s, convinced that environmental stewardship went hand-in-hand with good business practices, DuPont created a set of environmental goals to be reached by 2010. By 2006, under the guidance of CEO Chad Holliday, the company had met or exceeded all of the goals, and set new goals for 2015.

Holliday realized that it was imperative to find a more sustainable way for the company and its customers to grow. He helped shape the role of research and development to one that focused on alternatives that were sustainable. DuPont abides by eleven criteria for every research project it takes on, ranging from climate change, energy use, and water consumption, to use of depleting resources.

“Green chemistry and its principles are involved in everything we do, whether it’s the next generation of drought resistant seeds, non-global warming refrigerants, or renewable polymers,” explained Bryndza.

So let’s take a closer look at a green product that’s currently in the works at DuPont: Solamet® metallization pastes. DuPont Solamet® photovoltaic metallization pastes are used in manufacturing solar cells and are designed to raise their efficiency.

The pastes are protected by a variety of patents, including composition patents that cover silver compositions that are used on the front side of solar cells and aluminium compositions used on the back side surface, for example US Patent No. 8,158,504, entitled Conductive Compositions and Processes for use in the Manufacture of Semiconductor Devices–Organic Medium Components.

“DuPont is a leading innovator of photovoltaic (PV) metallizations, sold under the Solamet(r) brand, which have been instrumental in nearly doubling the efficiency of solar cells over the past dozen years,” said Peter Brenner, global photovoltaics marketing manager, DuPont Microcircuit Materials.

“DuPont has been granted nearly 200 patents related to photovoltaic applications globally since the start of 2008, and we have over thirteen hundred patent applications pending in this area globally. We spend hundreds of millions of dollars each year focused on advancing the efficiency, lifetime and cost competitiveness of solar energy to reduce global dependence on fossil fuels, and as we continue to develop new technology, we need to ensure it is protected.”

DuPont Microcircuit Materials recently filed two lawsuits against PV paste supplier Heraeus and one against its customer SolarWorld, for infringing on DuPont patents for Solamet® photovoltaic metallization pastes.

“We do not ignore theft and infringement and we will aggressively pursue other points in the supply chain where IP theft and infringement exists, including the production and sale of downstream products which incorporate ‘infringing’ materials by cell and module makers, as well as PV system developers, installers and owners,” stated Brenner.

Patent infringement in the clean tech industry is a hot issue, especially since research and development occur so rapidly. However, DuPont is sure to produce many interesting products in the upcoming decades, all while staying true to sustainable business practices.

* 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 will be studying Environmental Policy at the University of Cambridge this fall.

Clean Tech in Court: Green Patent Complaint Update

August 10th, 2012

A number of green patent complaints have been filed in the last several weeks in the areas of biofuels, LEDs, gasoline recycling, and smart grid.



Butamax Advanced Biofuels v. Gevo, Inc.; Gevo, Inc. v. Butamax Advanced Biofuels

In the space of just one week, this mega-litigation grew 43% (by number of lawsuits filed) and 28.5% (by number of patents asserted), with Gevo filing another infringement complaint on July 30th, this time in the Eastern District of Texas, and Butamax adding a declaratory judgment (DJ) suit and a new infringement complaint in Delaware on July 31st and August 6th, respectively.

Gevo’s Complaint asserts U.S. Patent No. 8,232,089, entitled “Cytosolic isobutanol pathway localization for the production of isobutanol” and directed to a recombinant yeast microorganism for producing isobutanol in which the isobutanol producing metabolic pathway includes at least one isobutanol pathway enzyme – dihydroxy acid dehydratase – active in the cytosol of the microorganism (‘089 Patent). 

Butamax filed a DJ Complaint the following day asserting it has not infringed the ‘089 Patent and the patent is invalid. 

Butamax’s new infringement complaint alleges that Gevo infringes U.S. Patent No. 8,222,017, entitled “Ketol-acid reductoisomerase using NADH” (‘017 Patent).  The ‘017 Patent is directed to recombinant mutant ketol-acid reductoisomerase (KARI) enzymes for use in the biological synthesis of isobutanol.

With these latest salvos, I now count ten suits filed and nine asserted patents in this biobutanol battle.



Relume Corporation Trust v. Leotek Electronics USA Corp.

Relume Corporation Trust v. GE Lighting Solutions LLC

Relume filed two patent infringement complaints on July 12, 2012, one against Leotek in the Eastern District of Michigan and the other against GE Lighting Solutions in Delaware.  Both complaints assert Reissue 42,161, entitled “Power supply for light emitting diode array” (‘161 Reissue), which is a reissue of U.S. Patent No. 5,661,645.

The ‘161 Reissue is directed to a power supply apparatus and system for providing power to LEDs, particularly LED array traffic signals.  The accused products are GE’s GTxLED signal modules and Leotek’s IL3 Series LED traffic signal modules.


Schubert v. Cree, Inc.

Schubert v. Koninklijke Philips Electronics N.V.

Schubert v. Osram AG

In these three suits, each filed July 18, 2012 in Delaware federal court, Professor E. Fred Schubert of Rensselaer Polytechnic Institute (RPI) accuses Cree, Philips, and Osram of infringing U.S. Patent No. 6,294,475 (‘475 Patent).

The ‘475 Patent is entitled “Crystallographic wet chemical etching of III-nitride material” and directed to method of processing a III-Nitride epitaxial layer system on a substrate, for example by etching to a selected depth or cleaving, and crystallographical etching the epitaxial layer system in order to obtain crystallographic plane surfaces.  These processes can be used to manufacture GaN-based LEDs.

According to the complaints (Schubert-Cree Complaint, Schubert-Osram Complaint, Schubert-Philips Complaint), Professor Schubert is the Founding Director of the Smart Lighting Engineering Research Center at RPI and has made many significant contributions to the field of compound semiconductors.  

These cases have shades of the Gertrude Neumark Rothschild LED litigation saga (see,e.g., a previous post here), another professor and LED innovator who sued many LED makers and electronics companies for patent infringement. 


Bortex Industry Company Ltd. v. Fiber Optic Designs, Inc.

In this declaratory judgment complaint, filed July 25, 2012 in the Eastern District of Pennsylvania, Bortex requests a DJ that Fiber Optic Designs’ U.S. Patent Nos. 7,220,022 (‘022 Patent) and 7,934,852 (‘852 Patent) are invalid, unenforceable, and not infringed.

The ‘022 and ‘852 Patents are related patents entitled “Jacketed LED assemblies and light strings containing same” and directed to LED strings having a transmissive cover and an integrally molded thermoplastic jacket at the opening of the cover to provide a seal at the opening against moisture and airborne contaminants.


Gasoline Recycling

Yellow Dog Technologies, LLC v. Fuel Recyclers, LLC

Yellow Dog filed this complaint on August 1, 2012 in federal court in Arizona accusing Fuel Recyclers of infringing U.S. Patent No. 8,165,781 (‘781 Patent). 

The ‘781 Patent is entitled “Fuel recovery” and directed to fuel pump controllers and software for operation of a fuel pump of a combustion engine so it pumps a predefined amount of fuel in the fuel line directly to a drain conduit.


Smart Grid

Electric Power Group, LLC v. Alstom, S.A.

Filed July 25, 2012 in the Central District of California, this complaint by Electric Power Group (EPG), a Pasadena, California, developer and distributor of electric grid monitoring solutions, accuses the French conglomerate Alstom and its U.S. division Alstom Grid of infringing U.S. Patent No. 8,060,259 (‘259 Patent).

The ‘259 Patent is entitled “Wide-area, real-time monitoring and visualization system” and directed to a wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid.

Cofactor Key Factor as Gevo Dodges Injunction

June 26th, 2012

Biobutanol maker Gevo dodged a bullet with a big win last week in its expanding patent war with Butamax Advanced Biofuels (Butamax) (see previous posts herehere, here, here, here, and the post on Butamax’s opening shot).

While Butamax did have exactly one week of satisfaction after the District Court for the District of Delaware issued a Temporary Restraining Order prohibiting any new sales of Gevo’s bio-based isobutanol, the bigger victory went to Gevo when the court denied Butamax’s motion for a preliminary injunction.

Butamax had requested the court enjoin Gevo from infringing U.S. Patent No. 7,993,889, entitled “Fermentive production of four carbon alcohols” (‘889 Patent).  The ‘889 Patent is directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

To determine whether Butamax was likely to succeed on the merits (and thus deserving of preliminary injunctive relief) the court zeroed in on the heart of the infringement question, which turns on the interpretation of a key claim term.

More particularly, the parties disputed the meaning of the term “acetohydroxy acid isomeroreductase enzyme,” also known as a “KARI.”  KARI is the enzyme used in one of the steps of claim 1 of the ‘889 Patent.

A KARI needs a cofactor that donates electrons to enable it to catalyze a reaction, and the issue was whether a KARI is defined with respect to NADPH or NADH cofactors.

Critical to resolution of this issue, the ‘889 Patent expressly defines acetohydroxy acid isomereductase as:

an enzyme that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate using NADPH (reduced nicotinamide adenine dinucleotide phosphate) as an electron donor

The court noted that the ‘889 Patent specifically states that other enzymes use “NADH and/or NADPH as an electron donor.” 

Guided by the statements in Butamax’s ‘889 Patent, the court construed acetohydroxy acid isomeroreductase as being defined with respect to NADPH only:

Accordingly, the court interprets the term acetohydroxy acid isomeroreductase in the manner in which plaintiff defined it, namely, as an enzyme that is solely NADPH-dependent (as opposed to NADH-dependent or NADH and NADPH-dependent).

Because Gevo uses an NADH-dependent enzyme, the court found it unlikely that Butamax would prevail on infringement of the ‘889 Patent:

[B]y defining the KARI as exclusively NADPH-dependent, plaintiff has placed defendant’s use of an NADH-dependent, or primarily NADH-dependent enzyme, outside the scope of claim 1.

As to validity of the ‘889 Patent, the court observed that claims 1 and 14 have been rejected as anticipated by the U.S. Patent and Trademark Office upon reexamination.

The patent examiner based his rejection on the inherent capability of enzymes in yeast cells to carry out the anabolic pathway claimed in the ‘889 Patent:

[Y]east converting pyruvate to isobutanol inherently possesses the enzymes capable of carrying out isobutanol synthetic pathway reactions found in claim 1.

Due to the questionable validity of the ‘889 Patent and Gevo’s strong non-infringement position, the court denied Butamax’s motion for a preliminary injunction.

A couple of days after the preliminary injunction decision, the court issued an opinion on Butamax’s motion on the pleadings in which it denied Butamax’s motion for a judgment that it does not infringe Gevo’s U.S. Patent Nos. 8,017,375 and 8,017,376.

The court found the infringement claims “particularly ill suited for disposition on a motion of judgment” because of the complexity of the technology but did indicate it might be willing to entertain focused discovery to expedite resolution of the claim.

So Butamax has stumbled out of the gate, but will no doubt continue the race.

Clean Tech in Court: Green Patent Complaint Update

June 9th, 2012

There have been several green patent complaints filed in the past several weeks in the fields of biofuels, LEDs, solar power, and industrial water purification.



Butamax Advanced Biofuels, LLC v. Gevo, Inc.

On May 15, 2012, Butamax filed suit against Gevo in the United States District Court for the District of Delaware alleging Gevo is infringing one of its patents related to the production of isobutanol using recombinant microorganisms. 

This suit is the latest in the expanding litigation between Gevo and Butamax (see, e.g., previous posts here, here, here, here, and the post on Butamax’s opening shot).

The asserted patent is U.S. Patent No. 8,178,328, entitled “Fermentive Production of Four Carbon Alcohols” (‘328 Patent).  The ‘328 Patent is the latest in a family of patents – including U.S. Patent Nos. 7,993,889 and 7,851,188  – that Butamax has been asserting against Gevo.

According to the Butamax complaint, the ‘328 Patent discloses and claims certain recombinant microbial host cells comprising an engineered isobutanol biosynthetic pathway.

Butamax alleges that Gevo uses recombinant microbial host cells capable of producing isobutanol that embody the invention in the ‘328 Patent, and that Gevo’s U.S. Patent No. 8,097,440 includes examples of such infringing host cells.

Gevo is seeking a judgment that Gevo infringes the ‘328 Patent, preliminary and permanent injunctions, and monetary damages.


Neste Oil Oyj v. Dynamic Fuels, LLC et al.

Neste Oil Oyj filed suit in the United States District Court for the District of Delaware on May 29, 2012 against Dynamic Fuels, Syntroleum Corporation and Tyson Foods, alleging Defendants’ synthetic renewable diesel fuels infringe U.S. Patent No. 8,187,344 (‘344 Patent).

The ‘344 Patent is entitled “Fuel Composition for a Diesel Engine” and directed to diesel fuels made from animal, plant, or fish fatty acids.

Dynamic Fuels is a joint venture of Syntroleum and Tyson Foods that operates refineries capable of producing allegedly infringing synthetic renewable diesel fuels using the necessary biological feedstock.

According to the Neste complaint, the Dynamic Fuels plant has produced substantial volumes of the accused product over the past couple of years.

Neste  is seeking a judgement of infringement of the ‘344 Patent, a permanent injunction, and monetary damages.



Fairchild Semiconductor Corporation et al. v. Power Integrations, Inc.

Filed May 1, 2012 in the United States District Court for the District of Delaware, Fairchild Semiconductor Corporation and System General Corporation’s (collectively “Fairchild”) complaint alleges that Power Integrations infringes four patents owned by Fairchild:

U.S. Patent No. 7,525,259, entitled “Primary Side Regulated Power Supply System With Constant Current Output” (‘259 Patent);

U.S. Patent No. 7,286,123, entitled “LED Driver Circuit Having Temperature Consideration” (‘123 Patent);

U.S. Patent No. 7,616,461, entitled “Control Method and Circuit with Indirect Input Voltage Detection by Switching Current Slope Detection” (‘461 Patent); and

U.S. Patent No. 7,259,972, entitled “Primary-Side-Control Power Converter Having a Switching Controller Using Frequency Hopping and Voltage and Current Control Loops” (‘972 Patent).

Fairchild alleges that Power Integrations’ LinkSwitch-PH controllers infringe the ‘259, ‘123, and ‘461 Patents.

According to Fairchild’s complaint, Power Integrations’ LinkSwitch-II and Linkswitch-CV devices were previously found to infringe claims 6, 7, 18, and 19 of the ‘972 Patent.  

However, Fairchild alleges that the same day, Power Integrations issued a press release encouraging customers to continue using the infringing products by stating that its customers are unaffected by the verdict. As such, Fairchild claims that Power Integrations is now inducing infringement of claims 6, 7, 18, and 19 of the ‘972 Patent.

Fairchild is seeking a judgment of infringement, an injunction, and monetary damages.


Ruud Lighting, Inc. v. Cooper Lighting, LLC

On May 23, 2012, Ruud Lighting filed suit against Cooper Lighting in the United States District Court for the Eastern District of Wisconsin seeking a permanent injunction and monetary damages for infringement of U.S. Patent No. 7,952,262 (‘262 Patent).

Entitled “Modular LED Unit Incorporating Interconnected Heat Sinks Configured to Mount and Hold Adjacent LED Modules,” the ‘262 Patent is directed to a modular LED unit including one or more LED modules, each bearing an array of LEDs and secured to a heat sink.

Ruud manufactures and sells numerous LED products embodying the invention of the ‘262 Patent for area and street lighting applications and certain floodlight lighting products.

According to the Ruud complaint, Cooper sells a product known as its “Generation Series LED Post Top Luminaire,” which infringes the ‘262 Patent.



Rena GMBH v. M.E. Baker Company

Rena GMBH filed suit against M.E. Baker Company on May 3, 2012 in  the United States District Court for the Central District of California.  Rena is alleging infringement of U.S. Patent No. 7,943,526, entitled “Process for the Wet-Chemical Treatment of One Side Silicon Wafers” (‘526 Patent).

The ‘526 Patent is directecd to a process for wet-chemical treatment of one side of a silicon wafer using a liquid bath.  The patented invention improves upon prior processes for protecting or masking the surfaces that are not to be chemically treated.

According to the Rena Complaint, M.E. Baker Company’s treatment process infringes the ‘526 Patent. 

Rena GMBH is seeking a permanent injunction and monetary damages


Water Purification

Calgon Carbon Corporation et al. v. Remote Light Water, Inc.

Calgon Carbon Corporation and Hyde Marine, Inc. (collectively “Calgon”) filed suit against Remote Light Water (RLW), seeking a declaratory judgment of non-infringement and invalidity of RLW’s U.S. Patents Nos. 6,447,721 (‘721 Patent) and 6,403,030 (‘030 Patent).

Filed May 8, 2012 in the United States District Court for the Western District of Pennsylvania, Calgon’s Complaint alleges that counsel for RLW sent a letter offering Calgon a license under the ‘721 and ‘030 Patents for Calgon’s Sentinal UV drinking water disinfectant product.

The ‘721 Patent describes a UV disinfection system comprising at least one light source with controllable UV light output that has at least one UV dose zone for providing effective sterilization of microorganisms within the water.  The ‘030 Patent describes a similar process effective for treating waste-containing fluid.

According to the Complaint, Calgon has reasonable apprehension that RLW will sue for infringement because RLW is “in the business of enforcing its patent portfolio through litigation.” 

*Jeff Woodley is a contributor to Green Patent Blog.  Jeff is a summer associate at McKenna Long & Aldridge and is currently in his final year at the University of California, Los Angeles School of Law.  He received his undergraduate degree in Economics also from the University of California, Los Angeles.

Clean Tech in Court: Green Patent Complaint Update

May 4th, 2012

There have been several green patent complaints filed in the past several weeks in the fields of biofuels, LEDs, lithium ion batteries, and industrial water purification.



Gevo, Inc. v. Butamax Advanced Biofuels, LLC and E.I. DuPont De Nemours and Co.

On April 10, 2012, Gevo filed suit against Butamax and DuPont in the United States District Court for the District of Delaware alleging Butamax and DuPont are infringing one of its patents related to the production of isobutanol.  This suit is the latest salvo in litigation between Gevo and Butamax.  (see previous posts here, here, here, and most recently here.)

The asserted patent is U.S. Patent No. 8,153,415, entitled “Reduced By-Product Accumulation for Improved Production of Isobutanol” (the ‘415 Patent).  The ‘415 Patent issued on April 10, 2012, the same day Gevo filed this latest suit against Butamax. 

According to the complaint (Gevo-Butamax_Complaint-4-10-12), the ‘415 Patent describes “recombinant isobutanol-producing microorganisms containing a disruption in the expression or activity of an endogenous 3-keto acid reductase activity and methods for producing isobutanol using such organisms.”

Gevo’s complaint alleges Butamax makes infringing microorganisms to produce isobutanol through deletion or inactivation of the YMR226c gene.  Gevo claims Butamax describes its infringing process in PCT Publication No. WO/2011/159853, entitled “Recombinant Host Cells Comprising Phosphoketolases”, and PCT Publication No. WO/2011/159998 entitled “Production of Alcohol Esters and In Situ Product Removal During Alcohol Fermentation”.

Gevo is seeking preliminary and permanent injunctions and damages.



Whelen Engineering Company, Inc. v. CPS Emergency LED Lighting & Equipment

Filed March 29, 2012 in the United States District Court for the District of Connecticut, Whelen’s complaint (Whelen Complaint) alleges CPS infringed U.S. Patent Nos. 6,641,284, entitled “LED Light Assembly”, and D500,384, entitled “Reflector for Light Assembly”.

Whelen also alleges CPS has infringed several of its trademarks.  The marks at issue are Whelen’s LINEAR-LED, FREEDOM and VERTEX marks.  Whelen claims CPS has either used identical marks or confusingly similar marks.

Whelen is seeking treble and punitive damages and injunctive relief.  They are also seeking CPS’s alleged infringing products be destroyed.

Lektron, Inc. v. iLight Technologies, Inc.

Lektron, Inc. v. Philips Solid-State Lighting Solutions, Inc.

Lektron, Inc. v. The Sloan Company, Inc. dba SloanLED, Inc.

On April 6, 2012, Lektron filed three separate suits in the United States District Court for the Northern District of Oklahoma alleging that iLight, Philips and SloanLED have each infringed U.S. Patent No. 6,361,186 entitled “Simulated Neon Light Using LED’s” (‘186 Patent).  (Each complaint can be viewed here: (Lektron-iLight Complaint) (Lektron-Philips Complaint) (Lektron-Sloan Complaint)).

The ‘186 Patent describes a product designed to replace traditional neon lights with a more durable product that consumed less energy by replacing fragile glass tubes with energy efficient LED lights.  The Lektron product is sold under the LEON trademark.

Lektron is alleging direct infringement and is seeking injunctive relief and damages from each defendant.

Everlight Electronics Co. Ltd., and Emcore Corporation v. Nichia Corporation, and Nichia America Corporation

On April 19, 2012, Everlight filed suit against Nichia (Everlight-Nichia Complaint) in the United States District Court, Eastern District of Michigan, Southern Division, seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two of Nichia’s patents, and alleging Nichia is infringing one of its patents.

Everlight is seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two patents owned by Nichia:  U.S. Patent Nos. 5,998,925 entitled “Light Emitting Device Having a Nitride Compound Semiconductor and Phosphor Containing Garnet Fluorescent Material” (‘925 Patent), and 7,531,960 entitled “Light Emitting Device with Blue Light LED and Phosphor Components” (‘960 Patent).

Nichia recently filed suit against an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ‘970 Patent (Japanese Patent No. 4350094).  Nichia also filed suit against Everlight in Germany asserting the European counterpart to the ‘925 Patent (European Patent No. EP 0 936 682). 

According to the Everlight complaint, Nichia has threatened litigation over several other patents in Japan, and Everlight prevailed in a patent infringement action initiated by Nichia in Taiwan.  This suit, filed by Everlight, is in response to the suits Nichia has filed and the threats Nichia has made to Everlight’s potential clients.

In addition to seeking declaratory judgment for non-infringement and invalidity, Everlight is seeking declaratory judgment that the ‘960 and ‘925 patents are unenforceable due to fraud and inequitable conduct during prosecution by Nichia.

Everlight is also asserting that Nichia infringes U.S. Patent No. 6,653,215 entitled “Contact to N-GaN with Au Termination” (‘215 Patent).  Everlight is seeking damages, attorney fees and costs.


Lithium Ion Batteries

Energizer Holdings, Inc., Eveready Battery Company, Inc., v. Wahl Clipper Corp., and Wahl Clipper Ningbo Ltd.

Filed April 11, 2012 in the United States District Court for the Northern District of Illinois, Eastern Division, Energizer’s complaint (Energizer_Complaint) alleges that Wahl infringes several of its patents.  The patents in dispute are U.S. Patent Nos.:

5,290,414 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”;

7,923,138 entitled “Housing for a Sealed Electrochemical Battery Cell”;

7,968,230 entitled “High Discharge Capacity Lithium Battery”;

8,007,940 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”; and

RE41,866 entitled “Nonaqueous Electrochemical Cell with Improved Energy Density”.

Energizer claims Wahl makes, offers for sale, imports and is selling products containing the asserted patents in its Lithium Pen Trimmer.  They are seeking preliminary and permanent injunctions, treble damages and attorney fees.


Water Purification

Aquatech International Corp., and Debasish Mukhopadhyay v. N.A. Water Systems, LLC, and Veolia Water Solutions & Technologies Support

On April 4, 2012, Aquatech filed suit in the United States District Court for the Western District of Pennsylvania against Water Systems and Veolia Water seeking a declaratory judgment that U.S. Patent No. 7,815,804, entitled “Method for Treating Wastewater or Produced Water” (‘804 Patent), owned by N.A. Water and Veolia ( a subsidiary of N.A. Water), is invalid and unenforceable and that its products do not infringe the ‘804 Patent. (Aquatech Complaint)

Aquatech is a licensee of U.S. Patent Nos. 5,925,255 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” and 6,537,456 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” (though these patents are not asserted in this complaint). 

Aquatech’s patents related to its HERO water purification process.  The HERO process uses the patents in a high efficiency reverse osmosis water purification process which is used in many industries including power generation, petrochemical, and microelectronics.  The HERO technologies have been licensed to companies such as General Electric and Intel.

Aquatech claims N.A. and Veolia have coerced and intimidated potential customers into using Veolia’s OPUS water purification process (described in the ‘804 Patent) under threat of patent litigation – claiming the HERO process infringes upon the OPUS process.  Aquatech claims Veolia knew, or should have known, that the HERO process does not infringe the OPUS process and that such claims of infringement were false.

Aquatech is seeking a declaration that the HERO process does not infringe the OPUS process, that each claim of the ‘804 patent is invalid, and that the ‘804 Patent is unenforcable due to inequitable conduct.

Brazil is the First BRIC to Fall From the Anti-Green Patent Wall

April 26th, 2012

 Last week we reported the launch of the Brazilian National Institute of Industrial Property’s (INPI) pilot program to accelerate green patent applications.

But there’s a lot more to this story than meets the eye.  Though INPI joins several other national intellectual property offices around the world in offering a green patent fast track, this is not simply another instance of such a program.

This is because, with respect to green patents, Brazil is not like any of the other countries that offer accelerated examination programs.

With the launch of this pilot program, Brazil becomes the first of any emerging market or developing country to signal anything remotely resembling a positive view of patents directed to green technologies and their role in combating climate change. 

Along with China and India, Brazil has been at the forefront of the G77 nations pushing to weaken or eliminate intellectual property rights in green technologies in the UN climate change treaty discussions over the last several years (see, e.g., my previous post here).

These countries have been arguing that IP rights act as a barrier to transfer and deployment of green technologies and have proposed a host of policy prescriptions to remove that perceived barrier. 

Those include compulsory licensing for such technologies, guaranteed access to green technologies on royalty-free terms, excluding green technologies from patent protection, and revoking existing patents on green technologies.

Consider these sentiments expressed by Haroldo de Oliviera Machado Filho, a senior climate change advisor to the Brazilian government, in 2009 in the run-up to the UN Copenhagen meeting (see articles here and here):

Leaders should consider the possibility of allowing “compulsory licensing” for green technologies.

Intellectual property systems are seen as “a significant barrier” in transferring technology from rich to poor nations.

“With [global warming mitigation] technologies there should be an understanding that patents must not be an obstacle for developing countries.”

But the launch of INPI’s green patent fast track last week obviously sends a different message and apparently signals a reversal in Brazil’s policy toward green patents. 

Consider this from Douglas Santos Alves, a researcher at INPI who participated in developing the pilot program:

“We will accelerate because we want clean technology to get to society soon…We cannot wait six years for an environmental solution to be applied in the market.”

Clearly, Brazil has reached an inflection point in its attitude toward green patents. 

So what happened in the last three years to cause this 180 degree turn? 

I don’t have a definitive answer, but there are some clues.

Brazil is a global leader in at least one green technology area:  biofuels.  The country has been making ethanol from sugar cane for years and has developed a sustainable market around it.

Thus, Brazil has some important domestic biofuels champions such as Cosan, a major ethanol producer.

This success has also attracted the attention and business of many American companies, from oil giants such as Shell to biofuels startups like Amyris and Solazyme.

All of these players need patent protection in Brazil and may have been turned off by the unduly long (5+ years) average application processing time in INPI.

This reversal by Brazil may represent a significant moment in green patent history.

I suspect it’s just a matter of time before other BRICs and developing countries that have been united against green patents break from the past and join Brazil in respecting and promoting them. 

China, in particular, with its strong solar industry, seems a likely candidate for the next BRIC to fall.